New judicial interpretation on civil disputes issued

The Supreme People's Court of the People's Republic of China has issued its "Interpretation on Several Issues Concerning the Hearing of Civil Disputes over Registered Trademarks, Enterprise Names and Earlier Civil Rights". The interpretation came into force on March 1 2008.

The interpretation provides guidance on the resolution of civil disputes relating to registered trademarks, enterprise names and earlier civil rights. The interpretation was issued pursuant to the following statutes, among others:

• the Civil Procedure Law;
  
  
• the General Principles of Civil Law;
  
  
• the Trademark Law; and
  
  
• the Anti-unfair Competition Law.
  

The interpretation aims to reflect established judicial practices. It is divided into four articles:

• Registered trademarks - Article 1 of the interpretation states that the Supreme People's Court will hear cases filed under Article 108 of the Civil Procedure Law claiming that the defendant's use of a word (or words) or design in its registered trademark infringes the plaintiff's copyright, design patent right and/or right in its enterprise name.
  
  If the plaintiff files suit on the grounds that the defendant's registered trademark is similar or identical to the plaintiff's mark, the court should refer the case to the relevant administrative authority in accordance with Article 111(3) of the law.
  
  However, the court will assume jurisdiction if the plaintiff argues that:
  
  
  • the defendant's use of its registered trademark falls outside the categories of goods or services for which the mark is registered; or
    
    
  • the defendant has altered or reconfigured its registered trademark so that it is identical or similar to the plaintiff's trademark.
    
    
• Enterprise names - Article 2 of the interpretation provides that a plaintiff may file suit with the Supreme People's Court on the grounds that an enterprise name which is identical or similar to its own enterprise name is likely to cause confusion among the public in breach of Article 5(3) of the Anti-unfair Competition Law.
  
  
• Causes of action - under Article 3 of the interpretation, the Supreme People's Court must determine the cause of action and apply the relevant law in civil disputes involving registered trademarks, enterprise names or earlier civil rights in accordance with the Provisional Regulations on Civil Causes of Action based on:
  
  
  • the plaintiff's claim; and
    
    
  • the nature of the disputed legal relationship under civil law.
    
    
• Civil liability - under Article 4 of the interpretation, where the defendant's use of its enterprise name infringes the plaintiff's registered trademark or constitutes an act of unfair competition, the Supreme People's Court may impose civil liabilities on the defendant (eg, it may prevent the defendant from using its enterprise name or restrict such use).

Ai-Leen Lim and Ricky Leung, Bird & Bird, Hong Kong