Editor's note: popularizing the law and abiding by the law are the long-term basic work of governing the country according to law. In recent years, the public pay more and more attention to and participate in the publicity of intellectual property law. In order to implement the "Seventh Five Year Plan" of intellectual property law popularization and actively promote the legal publicity of intellectual property, our newspaper has carried out publicity and education on the rule of law around hot issues in patent, trademark, geographical indication and other fields, so as to enhance the whole society's awareness of respecting the law, abiding by the law, and providing basic guarantee for the construction of a strong country with intellectual property rights. In this paper, the person in charge of the intellectual property protection department of the State Intellectual Property Office has answered 21 questions of social concern on the relevant situation of "judgment standard of trademark infringement".

A few days ago, the State Intellectual Property Office announced the standard of trademark infringement judgment (hereinafter referred to as the standard). The person in charge of the intellectual property protection department of the State Intellectual Property Office answered 21 questions of social concern on the relevant situation.

Q: what is the necessity and significance of establishing the standard?

A: according to the requirements of the plan for deepening the reform of Party and state institutions and the provisions on the functional allocation, internal institutions and staffing of the State Intellectual Property Office, the newly established State Intellectual Property Office is responsible for providing professional guidance for trademark and patent law enforcement, and specifically undertakes the responsibilities of formulating and guiding the implementation of trademark rights, patent right confirmation and infringement judgment standards.

The judgment of trademark infringement is professional, legal and complex, and the provisions of Trademark Law on the protection of exclusive right of trademark are relatively principled. However, in practice, a large number of trademark infringement behaviors occur at the grass-roots level, and the front-line law enforcement personnel need more operational guidance. The formulation of "standards" is not only the needs of the grass-roots line, but also the concern of all sectors of society. With the development of Internet economy, the forms of trademark infringement are becoming more and more diversified and complicated. The formulation of the standard is also conducive to improving the system of trademark protection rules, solving new situations and new problems in law enforcement practice, providing specific operational guidance for law enforcement departments to administer according to law, further improving the level of trademark law enforcement protection, and creating a highly transparent and predictable intellectual property protection environment for market players.

Q: what is the basis for the formulation of the standard?

A: the formulation of the standard is not only to implement the requirements of institutional reform, but also to implement the opinions on strengthening intellectual property protection and its promotion plan.

In August 2018, the general office of the CPC Central Committee and the general office of the State Council issued the provisions on the functional allocation, internal institutions and staffing of the State Intellectual Property Office, stipulating that the State Intellectual Property Office is responsible for "formulating and guiding the implementation of standards for determining trademark rights, patent rights and infringement". In November 2019, the general office of the CPC Central Committee and the general office of the State Council issued the opinions on strengthening the protection of intellectual property rights, which clearly required "to formulate and improve the judgment standards for trademark and patent infringement in the process of administrative law enforcement". The general office of the CPC Central Committee and the general office of the State Council issued the promotion plan for the implementation of the opinions on strengthening the protection of intellectual property rights in 2020-2021, which further proposed to formulate and issue judgment standards for trademark infringement.

Q: how was the formulation process of the standard?

A: the Party group of the State Intellectual Property Office attaches great importance to this work, and has listed the formulation of the standard into the key work of the Party group of the Bureau in 2019 and 2020. The intellectual property protection department of the State Intellectual Property Office actively promotes the formulation of the standard from three aspects.

First, we should conduct in-depth research and adhere to the problem orientation. To hold symposiums and seminars in Jiangsu, Ningxia, Qinghai, Shanghai and other places to understand the needs of local trademark law enforcement.

Second, strengthen the theoretical foundation, strengthen the administrative, judicial and comparative studies between China and foreign countries, carefully study and absorb the relevant achievements formed in the practice of law enforcement, and entrust academic institutions and industry associations to carry out research on the jurisprudential analysis and empirical analysis of trademark infringement.

Third, we should solicit opinions from all parties and open the door to legislation. It has successively solicited opinions from relevant departments inside and outside the Bureau as well as the intellectual property management departments of all provinces (regions and cities) and Xinjiang production and Construction Corps. Through the website of the State Intellectual Property Office, the public solicited opinions from all walks of life, and received opinions from more than 40 units and relevant experts, including domestic and foreign chamber of commerce associations, enterprises, law firms and foreign government agencies. We sorted out and analyzed the relevant opinions one by one.

On the basis of the above work, we further revised and improved the standard (Draft for comments), and organized six symposiums for intellectual property service institutions, enterprises, e-commerce platforms, administrative law enforcement and protection personnel, experts and scholars, and representatives of relevant departments in the bureau to listen to opinions and suggestions. Through research and argumentation one by one, fully adopting reasonable opinions, deeply revising and perfecting, the "standard" is formed on this basis.

Q: what are the main contents of the standard?

A: the standard systematically sorts out and summarizes the beneficial experience and practice of trademark administrative protection over the years, and adds innovative provisions in combination with practice. There are 38 articles in the standard, which specify the use of trademarks, the same kind of goods, similar goods, the same trademarks, similar trademarks, easy to confuse, sales exemption, right conflict, suspension of application, and identification of obligees. It mainly includes:

One is about the use of trademarks. It is clear that the use of trademarks is usually the prerequisite for judging trademark infringement; it further refines the definition of trademark use, and lists the specific forms of trademark use; it also clarifies the judgment principle of trademark use.

The second is about the same commodity and similar commodity. The standard stipulates the principle of determining the same and similar goods, and clarifies the due role of the table for distinguishing similar goods and services (hereinafter referred to as the table of distinction) in trademark administrative law enforcement.

The third is about the same trademark and similar trademark. On the basis of traditional trademarks, the standard adds the same and similar judgment standards for new trademarks such as three-dimensional trademarks, color combination trademarks, and voice trademarks. At the same time, it further clarifies the due role of trademark examination and trial standards in trademark administrative law enforcement.

Fourth, it is about easy confusion. In the new trademark law implemented in 2014, it is the first time to put forward the provisions that are easy to be confused. Based on the study of administrative normative documents and judicial interpretation, the standard defines the two situations that are easy to be confused and the relevant factors to be considered in determining the easy confusion.

The fifth is about the trademark without the permission of the trademark registrant. In view of the controversial infringement cases caused by the category, term and quantity beyond the license of trademark use in law enforcement practice, the standard clearly stipulates that without the permission of trademark registrant, it includes the category, term and quantity of license not obtained and beyond the license.

The sixth is about the specific acts of trademark infringement. Combining with law enforcement practice, referring to relevant administrative reply and judicial interpretation, the standard has made provisions on the legal application of frequently occurring trademark infringement in practice, including changing the registered trademark by itself, using multiple registered trademarks in combination, attaching colors for the purpose of attachment, using infringing goods in the contract for labor and materials processing, and attaching gift infringement in sales activities The specific applicable provisions of trademark law are further clarified in the case of right goods and help infringement.

The seventh is about sales exemption. The standard has detailed provisions on the relevant elements of the seller's exemption from liability, which makes it clear that the seller does not know the situation and meets the relevant conditions of the supplier.

Eighth, dealing with the conflict between trademark and other intellectual property rights. The standard stipulates the principle of dealing with the conflict between trademark and the above-mentioned intellectual property rights, and defines the date of trademark application as the benchmark for comparison.

The ninth is about the defense of prior use of trademark. In order to standardize the use of unregistered trademarks previously used, the standard specifies the trademarks with certain influence and the original scope of use.

Ten is about the application of suspension. The standard specifies the circumstances in which suspension can be applied.

The eleventh is about carrying out trademark infringement twice or more in five years. The standard specifies that "trademark infringement shall be carried out twice or more within five years" as stipulated in the second paragraph of Article 60 of the trademark law, which clearly stipulates that the same party shall commit trademark infringement within five years after the administrative punishment or judgment of the same party is determined to have infringed upon the exclusive right to use another's registered trademark by the relevant trademark enforcement authorities and the people's court.

The twelfth is about the identification of the obligee. The standard stipulates that the trademark owner shall bear the legal responsibility for the identification opinions issued by him, and specifies that the law enforcement organ shall examine the legality of the subject of the identification opinion, the authenticity and relevance of the identification opinion, and the precondition for the adoption of the identification opinion as evidence.

Q: which departments do the trademark enforcement departments refer to?

A: according to the relevant laws and regulations, the new "three rules" of the State Council and the practice of trademark law enforcement, the trademark law enforcement departments specified in the standard mainly refer to the market supervision and management departments and the relevant departments with trademark administrative law enforcement power, including the intellectual property management departments with trademark enforcement rights, such as Shanghai Pudong New Area Intellectual Property Office and Changsha Intellectual Property Office.

Q: what are the innovative provisions for the use of trademarks?

A: the use of trademarks is highly concerned by both theoretical and practical circles. "Standard" makes it clear that the judgment of infringement of trademark exclusive right generally needs to determine whether the suspected infringement constitutes the use of trademark in the sense of trademark law. In view of the fact that Article 57 of the trademark law stipulates that forgery or unauthorized manufacture of trademark Marks does not involve the determination of trademark use, the standard adopts the expression of "general".

At the same time, the standard further refines the definition of the use of trademarks, increases the service places involved in service trademarks, and lists the specific forms of trademarks used in goods, services, advertisements and other commercial activities, especially for the characteristics of the Internet era, it adds new expressions such as websites, instant messaging tools, social network platforms, applications, and two-dimensional codes Form. Finally, the standard stipulates the principle of determining the use of a trademark, that is to say, the subjective intention of the user, the way of use, the way of publicity, the practice of the industry, and the cognition of consumers should be taken into consideration in judging whether the trademark is used.

Q: how to apply the "differentiation table" to determine the similarity of commodities?

A: the standard takes the distinction table as an important reference for trademark administrative law enforcement to determine the similarity of commodities, mainly to maintain the consistency and stability of trademark confirmation and law enforcement protection standards, and to strengthen the predictability and operability of trademark confirmation. For the commodities or services that have been identified as similar groups in the differentiation table, the law enforcement department shall refer to the similar relationship of the goods or services; for the commodities or services that are not included or newly appeared in the differentiation table, they shall make a comprehensive judgment according to the relevant principles specified in the standards. In practice, law enforcement agencies should report to the State Intellectual Property Office for decision on the necessity and rationality of breaking through the distinction table, so as to coordinate the linkage and consistent protection of law enforcement and right confirmation.

Q: in view of the similarity of trademarks, are the judgment standards consistent between law enforcement and right confirmation?

A: in the process of trademark law enforcement and right confirmation, the principles and standards for determining the similarity of trademarks are consistent. The trademark examination and adjudication standard is an important reference for law enforcement departments to determine whether trademarks are similar. In law enforcement practice, the use of trademarks is more complex, 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 infringers.

Q: what are the same trademarks?

A: the same trademark includes the following situations: the composition and arrangement order of words and trademarks are the same; there is basically no difference between the registered trademark and the registered trademark by changing the font, letter case and vertical arrangement of characters; there is no difference between the registered trademark and the registered trademark by changing the space between the words, letters and numbers of the registered trademark; changing the color of the registered trademark does not affect the embodiment of the note In the registered trademark, only the general name, figure and model of the goods are added to the registered trademark, and the content of the obvious characteristics is not affected. Graphic trademarks are basically the same in composition elements and forms of expression; word and graphic combination trademarks have the same text composition, graphic appearance, and arrangement and combination, while trademarks are basically the same in terms of calling and overall vision; the prominent three-dimensional signs and prominent plane elements in three-dimensional trademarks are the same or basically the same; the combined colors and arrangements in color combination trademarks are the same The way is the same, or almost no difference; the auditory perception of sound trademark is the same as the overall music image, or basically no difference.

By referring to the relevant judicial interpretation provisions of the Supreme People's court, the Supreme People's Procuratorate and the Ministry of public security, the standard will only add the general name, graphics and model of the goods to the registered trademark, which will not affect the situation that reflects the obvious characteristics of the registered trademark, and also clearly stipulates that it is the same trademark, so as to facilitate the later "convergence of the two laws" with the public security organ, procuratorate, and the Ministry of public security The courts and other departments maintain the same standards.

Q: what kind of situations are easy to confuse and how to determine?

A: in the Trademark Law implemented in 2014, it is the first time to put forward provisions that may lead to confusion. Based on the study and analysis of administrative normative documents and judicial interpretation, the standard stipulates that it is easy to be confused, including the following two situations: one is enough to make the relevant public think that the goods or services involved are produced or provided by the owner of the registered trademark; the other is enough to make the relevant public think that the goods or services involved are produced or provided by the owner of the registered trademark The supplier of the goods or services involved in the case has the relationship of investment, license, franchise or cooperation with the owner of the registered trademark.

Before that, in the judicial interpretation and practice, trademark examination and administrative law enforcement practice, the factors that are easy to confuse the relevant public have been taken into account when determining similar goods and similar trademarks, that is, similar confusion and similar confusion. In order to further clarify the relationship between similar goods, similar trademarks and easy to be confused, the standard takes the similar situation of goods and the similar situation of trademarks as the factors to be considered in determining the easy confusion, so as to solve the problem of repeated determination which is easy to be confused. The judgment of easy to be confused needs to consider a variety of factors, including the similarity of the trademark; the similar situation of the goods or services; the significance and popularity of the registered trademark; the characteristics of the goods or services and the way of trademark use; the degree of attention and cognition of the relevant public; and other relevant factors.

Q: what are the situations without the permission of the trademark registrant?

A: the standard clearly stipulates that without the permission of the trademark registrant, including the category, term and quantity of the license not obtained and exceeding the license. For those beyond the scope of the license contract, the relevant provisions of the contract law shall apply.

Q: what are the legal application of trademark infringement in the standard?

A: in view of the frequent and easily occurring trademark infringement in practice, the standard specifies the legal application of relevant acts. The standard mainly includes the legal application of the following trademark infringement acts:

First, changing a registered trademark or using multiple registered trademarks in combination is an act of trademark infringement stipulated in Article 57 (1) and (2) of the trademark law.

Second, the prominent use of the trade name in the name of an enterprise in the same kind of goods or services is an act of trademark infringement stipulated in items (1) and (2) of Article 57 of the trademark law.

Third, a registered trademark that does not specify a color may attach color freely. However, if the color is attached for the purpose of climbing, which is similar to that of another person's registered trademark in the same or similar goods or services, which is easy to cause confusion, it is a trademark infringement under Article 57 (2) of the trademark law.

Fourth, in the processing and contracting business activities of contracted labor and materials, the Contractor's use of goods infringing the exclusive right to use a trademark is an act of trademark infringement stipulated in Item (3) of Article 57 of the trademark law.

Fifth, when the operator sells the goods, he gives the goods infringing the exclusive right to use the registered trademark, which belongs to the trademark infringement act stipulated in Item (3) of Article 57 of the trademark law.

Sixth, market organizers, exhibition organizers, counter lessors, e-commerce platforms and other operators are lazy in performing their management duties and refuse to stop the trademark infringement acts committed by the operators, exhibitors, counter lessees and e-commerce operators in the market; or they are informed by the relevant trademark law enforcement departments or the trademark owners are still alive If, after notification of the effective administrative or judicial documents, necessary measures have not been taken to stop the trademark infringement, it shall be a trademark infringement as prescribed in Article 57 (6) of the trademark law.

7. The trademark infringement act is the trademark infringement act stipulated in Article 57 (7) of the trademark law if the e-commerce that registers the same or similar words as the registered trademark of others is registered as the domain name, and the related goods or services are traded through the domain name, which is likely to cause misunderstanding by the relevant public.

Q: what are the conditions for the seller to be exempted from liability?

A: to exempt the seller from liability, the following three elements should be met at the same time: first, the seller does not know that the goods sold infringe the exclusive right of trademark; second, the seller can prove that the goods are legally obtained; third, the seller can explain the supplier of the goods.

According to the standard, the situation that does not belong to the unknown sales is detailed, including: the purchasing channel does not conform to the commercial practice, and the price is obviously lower than the market price; the refusal to provide accounting documents such as accounts and sales records or falsification; the transfer and destruction of material evidence after the occurrence of the case, the provision of false certificates and false situations; and the similar illegal situation is committed again after being dealt with. The seller can explain that the commodity supplier refers to the party involved in the case actively providing the supplier's name, business address, contact information and other accurate information or clues. Where the provider cannot be found due to the false or unverifiable information provided by the party involved in the case, it shall not be deemed as an explanation of the provider.

Q: how to determine the unregistered trademarks with certain influence and which cases are not used within the original scope of use?

A: if there is a certain influence, we should consider such factors as the duration of the trademark's use, sales volume, business volume, advertising and other factors to make a comprehensive judgment. The user shall not be deemed to have continued to use the trademark within the scope of its original use under the following circumstances: to increase the specific goods or services used by the trademark; to change the graphics, characters, colors, structure, and writing methods of the trademark, except for the change for the purpose of distinguishing it from the registered trademark of others.

Q: how to deal with the conflict between trademark and other intellectual property rights?

Answer: intellectual property rights holders should exercise their rights in accordance with commercial practices, abide by the principle of good faith, and use them reasonably and in good faith within the scope of their rights without damaging other people's and social and public interests. In order to prevent the abuse of rights, the obligee maliciously damages the rights and interests of the trademark registrant and causes confusion among the relevant public about the real source of goods or services. In order to effectively deal with the conflict between trademark right, design patent right and copyright, the standard stipulates the principle of protecting the legal prior right, and uses the design and works as trademarks on the same or similar goods. If the application date of registered trademark is prior to the application date of design patent or the completion date of works with evidence, the relevant trademark enforcement departments can infringe on the trademark To investigate and deal with the right behavior.

Q: how to deal with the conflict between trademark and enterprise name and how to apply the law?

A: a trademark is a sign that distinguishes different sources of goods or services. The name of an enterprise is a sign that distinguishes different market entities. Among them, the enterprise brand name is the main symbol to distinguish different enterprises. The conflict between trademark and enterprise brand name is a difficult problem faced by law enforcement departments. The exclusive right of trademark and enterprise name are the rights confirmed by legal procedures, which are protected by trademark laws and regulations and enterprise name registration management laws and regulations respectively. The right to exclusive use of trademarks and the right of enterprise name shall be obtained in accordance with the principle of good faith and shall not take advantage of the reputation of others' trademarks or enterprise names for unfair competition. Article 58 of the current trademark law makes it clear that if a registered trademark of another person is used as a shop name in the name of an enterprise, which misleads the public and constitutes an act of unfair competition, it shall be dealt with in accordance with the anti unfair competition law.

In the practice of administrative law enforcement, there are two main uses of enterprise font size. One is to highlight the use of font size by changing the font and color of enterprise size; the other is that the enterprise font size is consistent with other text font, color and writing method in enterprise name. In view of the first case, it has constituted the use of trademark in the sense of trademark law. The standard clearly stipulates that investigation and punishment shall be carried out in accordance with the relevant provisions of the trademark law. In the second case, it belongs to unfair competition and shall be dealt with in accordance with the anti unfair competition law.

Q: which cases are subject to the suspension provisions of the trademark law?

A: the third paragraph of Article 62 of the trademark law stipulates that in the process of investigating and dealing with trademark infringement cases, if there is a dispute over the ownership of a trademark or the obligee brings a trademark infringement lawsuit to the people's court at the same time, the administrative department for Industry and Commerce may suspend the investigation and handling of the case. After the reasons for suspension have been eliminated, the case investigation and handling procedures shall be resumed or terminated. Article 81 of the regulations for the implementation of the trademark law stipulates that if a dispute over the ownership of a registered trademark involved in the case is being tried by the Trademark Office of the State Administration for Industry and commerce, the Trademark Review and Adjudication Board or the people's court, and the result of the case may affect the nature of the case, it belongs to Article 60 of the current trademark law of China