Supreme People's Court interprets rules on trademark reviews

The Supreme People's Court has issued interpretations of the new Rules for Trademark Review and Adjudication, which came into force on October 15 (see New rules on trademark reviews implemented). The Supreme Court interprets certain of the rules to mean the following:

• Although failure to record a trademark licence does not make the licence void, it may not be enforced against a 'bona fide third party' (as defined in the rules).
  
  
• An exclusive, registered licensee may commence trademark infringement proceedings without having to consult the trademark owner. However, if, under the terms of the licence, the owner retains the right to use the mark within the licensed territory or grants such right to another party, the registered licensee may not commence infringement proceedings unless the owner is a co-plaintiff.
  
  
• Legal proceedings for trademark infringement may be commenced where the infringement takes place, where the infringing goods are stored or detained by the enforcement agency, or where the infringer resides. The choice is up to the trademark owner.
  
  
• The limitation period for instituting legal proceedings for trademark infringement is two years starting from the date the owner (or licensee) knew or ought to have known of the infringement.
  
  
• The Trademark Law, which was last amended in October 2001 (see Long-awaited Trademark Law Implementing Regulations come into force), sets out the acts that constitute trademark infringement, including a catch-all provision: "other circumstances which damage the exclusive rights of the registered owner." The Supreme Court interprets this to mean:
  
  
  • using a brand that incorporates another party's registered trademark for the same or similar goods/services, thus causing confusion among consumers;
    
    
  • using a mark that is the same as, similar to or a translation of a famous trademark on dissimilar goods/services, thus misleading the public and causing damage to the owner of the famous mark;
    
    
  • using a domain name which is the same as or similar to another party's registered trademark for a commercial website, thus causing confusion among consumers.
    
    
• The damages awarded to a successful plaintiff may include attorneys' fees as well as costs (eg, the cost of investigating an infringement and collecting evidence).

Yvonne Chua, Wilkinson & Grist, Hong Kong