On June 15, 2020, the State Intellectual Property Office officially published the "Trademark Infringement Judgment Standards" (hereinafter referred to as the "Standards"), which has important practical significance for strengthening the guidance of trademark law enforcement, unifying law enforcement standards, and strengthening the protection of exclusive trademark rights.

The newly issued "Standard" has a total of 38 articles, detailing the use of trademarks, the same kind of goods, similar goods, the same trademark, similar trademarks, easy to confuse, sales exemption, conflict of rights, suspension of application, right holder identification and other contents, providing specific operational guidance for the relevant departments of trademark law enforcement to administrate according to law. Create a highly transparent and predictable intellectual property protection environment for market players.

1. The use of trademarks

The use of trademark occupies an important position in trademark law. Without the use of trademark, the trademark will not be formed, the trademark significance will not be obtained, and the infringement of trademark rights will not be discussed. According to the provisions of Article 3 of the Standard, the use of a trademark refers to the use of a trademark on commodities, commodity packaging, containers, service sites and transaction documents, or the use of a trademark in advertising, exhibitions and other commercial activities to identify the source of goods or services. To determine whether it is the use of a trademark, a comprehensive consideration should be given to the user's subjective intention, the way of use, the way of publicity, industry practices, consumer cognition and other factors.

(A) New service venues and service transaction documents in the form of trademark use

Compared with the provisions of Article 48 of the Trademark Law, Article 5 of the Standard makes clear provisions on the specific forms of expression of trademarks used in service places and service transaction documents, mainly including two situations: First, the trademark is used directly on the service site, including brochures, staff clothing, posters, menus, price lists, business cards, lottery tickets, office stationery, stationery and other related items used in the provision of services; Second, trademarks are used on documents related to services, such as invoices, bills, receipts, money orders, service agreements, maintenance certificates, etc.

2. It highlights the characteristics of the Internet era

In view of the characteristics of the Internet era, Article 6 of the Standard includes websites, instant messaging tools, social networking platforms, applications, two-dimensional codes and other new forms of expression as trademarks for advertising, exhibitions and other commercial activities. These forms of expression, like traditional forms, essentially play a role in promoting commodity information and highlighting the significance of trademarks, and all belong to the use of trademarks.

(3) Legal summary of the use of trademarks

The identification of trademark use is the logical premise of judging trademark infringement. From the legislative intention of China's Trademark Law, the use of trademarks must meet the following elements.

1. In the nature of use, it is a business act. The subject of trademark use should be a person in commercial law, which is essentially a continuous business act for the purpose of profit. Personal civil acts of consumers do not constitute the use of trademarks, such as a consumer after purchasing a piece of clothing, a famous brand trademark affixed to it, does not constitute trademark infringement.

(2) For the purpose of use, it should promote the transaction of goods or services. It is not used in the transaction of goods or services, and does not constitute the use of trademarks in the meaning of trademark law. For example, the repair shop marks the repair price of a famous brand watch on the price list, which is not an infringement of trademark rights.

3, in the use of time, for goods or services in the process of trading. In the whole process of the transaction of goods or services, as long as the use of the trademark transmits the information of the goods or services, it is the use of the trademark in the meaning of the trademark law, whether it is used in the specific place, or in the contract materials or bills.

Two, the trademark is the same and the commodity is the same

Article 57 (1) of the Trademark Law defines "the use of a trademark identical to its registered trademark on the same kind of goods without the permission of the trademark registrant" as a situation that constitutes trademark infringement, that is, an illegal use of a trademark with the same trademark and the same commodity. This kind of trademark use behavior infringes on the core value of trademark right, directly constitutes trademark infringement, and does not need to be confused. Article 13 of the Standard stipulates that the trademark identical with a registered trademark means that the trademark suspected of infringement is identical with the registered trademark of another person, and that although there are differences, the visual effect or the auditory perception of the sound trademark is basically no difference, and the relevant public is difficult to distinguish the trademark.

(1) Word marks

The composition and order of the text of the trademark are the same; Change the font, letter case, text horizontal and vertical arrangement of the registered trademark, there is basically no difference between the registered trademark; Changing the spacing between the words, letters, numbers, etc. of the registered trademark is basically no different from that of the registered trademark; Changing the color of the registered trademark does not affect the significant features of the registered trademark; Only the addition of the generic name of the commodity, graphics, models, etc. to the registered trademark lacks significant features, which does not affect the embodiment of the significant features of the registered trademark.

(2) Other types of trademarks

Graphic trademark has no difference in composition elements, expression forms and other visual aspects. The text composition, graphic appearance and arrangement of the trademark are the same, and the trademark is basically indistinguistic in call and overall vision; The significant three-dimensional mark and the significant plane elements in the three-dimensional trademark are the same, or basically no difference; The combination of colors and the way of arrangement in the trademark are the same, or basically no difference; The auditory perception of the sound trademark is the same as the overall musical image, or basically indistinguishable.

(3) identical goods or services

The same goods refer to the goods whose name is actually produced and sold by the suspected infringer and the name of the goods approved and used by the registered trademark of others, or the two names are different but the same or basically the same in terms of function, use, main raw materials, production departments, consumption objects, sales channels, etc., and are generally considered to be the same kind of goods by the relevant public. The same service refers to the service name actually provided by the suspected infringer and the service name approved for use by others, or the two service names are different but the purpose, content, method, provider, object, place and other aspects of the service are the same or basically the same, the relevant public is generally considered to be the same service.

3. Confusing situations

Article 57 (2) of the Trademark Law defines "without the permission of the trademark registrant, the use of a trademark similar to its registered trademark on the same kind of goods, or the use of a trademark identical or similar to its registered trademark on similar goods, which is likely to cause confusion" as a situation constituting trademark infringement. The "Standard" further clarifies the relationship between similar goods, similar trademarks, and easy to confuse, and takes the similar situation of goods and the similar situation of trademarks as factors to be considered in determining easy to confuse. The "Standard" clearly states that the trademark Law is easy to cause confusion, including: first, enough to make the relevant public think that the goods or services involved are produced or provided by the registered trademark right holder; Second, it is enough to make the relevant public think that the supplier of the goods or services involved in the case has an investment, licensing, joining or cooperation relationship with the registered trademark right holder. Article 21 of the Standard makes clear the judgment principles of whether it is easy to cause confusion, including: the similarity of trademarks; Similar circumstances for goods or services; The distinctiveness and popularity of the registered trademark; The characteristics of the goods or services and the way in which the trademark is used; The degree of attention and awareness of the relevant public.

(1) The goods are similar

The "Standard" takes the "Classification Table of Similar Goods and Services" (hereinafter referred to as the "Classification Table") as an important reference for trademark administrative law enforcement to determine the similarity of goods. For goods or services that have been clearly defined as similar groups in the Differentiation Table, law enforcement departments shall make reference when determining the similar relationship between goods or services; For the goods or services that are not included in the "Differentiation Table" or are new, a comprehensive judgment shall be made in accordance with the relevant principles stipulated in the "Standard". For the necessity and rationality of law enforcement agencies that need to break through the distinction table in practice, it should be reported to the State Intellectual Property Office for decision, so as to coordinate the linkage and consistent protection of law enforcement and right confirmation links.

(2) Similar trademarks

A trademark similar to a registered trademark refers to the similarity of the font, pronunciation and meaning of a word trademark, or the similarity of the composition, coloring and shape of a graphic trademark, or the similarity of the overall arrangement, combination and shape of a word-graphic combination trademark, or the similarity of the shape and shape of a three-dimensional trademark. Or the color or combination of the trademark is similar, or the auditory perception of the sound trademark or the overall musical image is similar. In the process of trademark enforcement and right confirmation, the principles and standards for judging the similarity of trademarks are the same, and the Standards for Trademark Examination and Trial is an important reference for law enforcement departments to judge whether trademarks are similar. In law enforcement practice, the use of trademarks is more complicated, and law enforcement departments pay more attention to the actual use of trademarks, that is, to compare the approved registered trademarks with the trademarks actually used by the suspected infringer.

At the same time, the "Standard" also makes it clear that when judging trademarks that are identical or similar to registered trademarks, the general attention and cognitive ability of the relevant public should be taken as the standard, and the methods of isolated observation, overall comparison and major part comparison should be used for identification.

4. Legal application of common trademark infringements

For trademark infringement that occurs frequently and easily in practice, the Standard clarifies the legal application of relevant acts, mainly including the following situations:

(1) Where a registered trademark is changed on its own or multiple registered trademarks are used in combination to be identical with the registered trademark of another person on the same kind of goods or services, it shall be a trademark infringement as provided for in paragraph 1 of Article 57 of the Trademark Law. Any person who changes a registered trademark on his own initiative or uses multiple registered trademarks in combination so as to be similar to another person's registered trademark on the same or similar goods or services, which may easily lead to confusion, shall be a trademark infringement act as provided for in paragraph 2 of Article 57 of the Trademark Law.

(2) For the same kind of goods or services, the use of the business name in the name of the enterprise is identical with the registered trademark of another person, which belongs to the trademark infringement act provided for in Article 57, paragraph 1 of the Trademark Law. For the same or similar goods or services, the prominent use of the business name, similar to another person's registered trademark, easy to cause confusion, belongs to the trademark infringement act provided for in Article 57, paragraph 2 of the Trademark Law.

(3) Where a registered trademark that does not specify a color is free to attach a color, but attaches a color for the purpose of attachment, and is similar to another person's registered trademark on the same or similar goods or services, and is likely to cause confusion, it shall be a trademark infringement as provided for in Article 57, paragraph 2, of the Trademark Law.

(4) In the processing of contracted work and materials, where the contractor uses a commodity that infringes on the exclusive right to use a registered trademark, it is a trademark infringement act as provided for in Article 57, paragraph 3 of the Trademark Law.

(5) Where a business operator, when selling a commodity, presents a commodity that infringes on the exclusive right to use a registered trademark, it is a trademark infringement act as provided for in Article 57, paragraph 3 of the Trademark Law.

(6) Market organizers, exhibition organizers, counter lessors, e-commerce platforms and other operators are negligent in performing their management duties, knowing or should have known that the operators in the market, exhibitors, counter renters, e-commerce operators in the platform have committed trademark infringement acts and do not stop them; Or although unaware, but after being notified by the relevant department of trademark law enforcement or notified by the trademark right holder holding an effective administrative or judicial document, it still fails to take necessary measures to stop the trademark infringement, which belongs to the trademark infringement act provided for in Article 57 (6) of the Trademark Law.

(7) registering the same or similar words as the registered trademarks of others as a domain name, and conducting e-commerce transactions of related goods or services through the domain name, which is easy to cause misrecognition by the relevant public, belongs to the trademark infringement act stipulated in Article 57 (7) of the Trademark Law.

5. Conditions for the seller's exemption from liability

To exempt the seller from liability, the following three requirements must be met at the same time: first, the seller does not know that the goods sold infringe the exclusive right to use the trademark; Second, the seller can prove that the goods are legally acquired; Third, the seller can explain the supplier of the goods. Article 27 of the Standard is detailed for the circumstances that are not unknown to sales, including: the purchase channel is not in line with commercial practices, and the price is significantly lower than the market price; Refusing to provide accounting documents such as accounts and sales records or resorting to fraud; Transfer or destroy material evidence after the incident, providing false evidence or false information; Repeat a similar offence after being dealt with. The fact that the seller can explain the supplier means that the parties involved in the case take the initiative to provide accurate information or clues such as the name, business address and contact information of the supplier. If a party involved in the case provides false or unverifiable information and cannot find the provider, it shall not be regarded as the provider.

At the same time, the third paragraph of Article 33 of the Standard clarifies the circumstances that are not considered to be continued use within the original scope of use, including: the specific goods or services that increase the use of the trademark; Change the graphics, text, color, structure, writing mode and other contents of the trademark, except for the purpose of distinguishing it from another person's registered trademark; Other circumstances beyond the original scope of use.