Trademarks Laws and Related Rules

For the laws, you can find more information from the Trademark Law of the People’s Republic of China, the Law of the People’s Republic of China for Countering Unfair Competition, Administrative Punishment Law of the People’s Republic of China, Administrative Procedure Law of the People’s Republic of China..

For the administrative regulations, you can find more information from Implementing Regulations of the Trademark Law of the People’s Republic of China , Administrative Regulations on Special Marks, Regulations on the Protection of Olympic Symbols, Regulations on Customs Protection of Intellectual Property of the People’s Republic of China.

For the administrative rules, you can find more information from Provisions for Recognition and Protection of Well-known Trademarks, Measures for the Implementation of Madrid International Registration of Trademarks, Trademark Review and Adjudication Rules, Provisional Rules on the Procedures of Administrative Punishment of Administrative, Departments for Industry and Commerce, Measures for the Implementation of Intellectual Property Protection by the Customs.

For the judicial interpretation, you can find more information from Approval Reply of the Supreme People’s Court on whether the victim of products infringement cases can bring a civil action against the trademark owner, Interpretation of the Supreme People’s Court on issues concerning jurisdiction and the scope of the application of law to the trial of trademark cases, Interpretation of the Supreme People’s Court on some issues concerning the application of law in the trial of civil dispute cases over trademark, Interpretation of the Supreme People’s Court on issues concerning the application of law to the pre-trial suspension of infringement against the exclusive right of registered trademark and evidence preservation, Provisions of the Supreme People’s Court on some issues concerning the trial of civil disputes cases over conflicts between registered trademark, name of enterprise and priority right, Provisions of the Supreme People’s Procuratorate and Ministry of Public Security on the prosecution standard of economic crimes.

You can find more information in their official website (Simplified Chinese).

In Hong Kong, the Trade Marks Ordinance (Cap. 559) and Trade Marks Rules (Cap. 559A) (Website (English)) is effective from 4 April 2003 onwards.

The Trade Marks Ordinance will simplify both application’s and examination’s procedures in a large extent. More kinds of trademarks are allowed for registration. For example, you can register the sound marks which meet the standard for registration and have distinctive characters.

The Industrial Property Code of Macao (General provisions: Article 1-53, Industrial Property Registration: Article 54-59, Trademarks: Article 197-232, Legal recourse: Article 275-283, Monitoring and penalties: Article 284-314) (Website (English / Portuguese)) is from 6 June 2000 onwards, which has approved by Decree-Law no. 97/99/M on 13 December 1999.

You may apply for any sign as trademark. If your sign is able to be seen and to mark off the products of a natural person, legal person, or other organization from those of others, including any word, design, letter of the alphabet, numeral, three-dimensional symbol and color combination, or any combination of the above.

The trademark which you are going to apply for should have distinctive characteristics for identification, and should not have any conflict with the legitimate rights of the applied trademark (Articles 8-9, Trademark Law of the People’s Republic of China).

Trademark, with the definition of being a sign that marks off the goods and services of one trader from those of others, may include words (as well as personal names), indications, designs, letters, characters, numerals, figurative elements, colors, sounds, smells, the shape of goods or their packaging and any combination of the said signs. It is a must for the sign to have the function of being represented in graphic form so that the sign is capable to be registered as a trademark. More can be referred to “Deficiencies Checking” of the Trade Marks Registry Work Manual (website: http://www.ipd.gov.hk/eng/intellectual_property/trademarks/registry/Deficiencies_checking.pdf ).

Trademark, with the meaning of being a sign that marks off the goods and services of one trader from those of others, may include words, letters, numerals, sounds, the shape of goods or their packaging, designs or patterns, or colors and any combination of the mentioned signs under Industrial Property Code. It cannot be a trademark, like the common names or straightforward descriptions of goods or services unless it can help general consumers distinguish the sources of goods or services.

The class and name of the goods the trademark uses should be marked on the form by the applicant for trademark registration according to the specified goods classification list (International Classification of Goods and Services). If the same trademark is going to be applied in different classes, the applicant will need to hand in an application for each trademark according to the specified goods classification list. If applicants want to use a registered trademark on other goods of the same class, he may need to fill in a separate application for registration (Articles 19-21, Trademark Law of the People’s Republic of China).

All the goods and services which are going to be registered for trademark need to be listed out clearly, and their numbers of the classes should be specified. The International Classification of Goods and Services under the Nice Agreement is used to classify the goods and services. (Website: http://www.wipo.int/classifications/nivilo/nice/index.htm )
More can be referred to “Classification” of the Trade Marks Registry Work Manual (webpage: http://www.ipd.gov.hk/eng/Classification_Version8_.pdf ).

The proposed classes can be classified by the applicant for the trademark registration according to all the goods and services which are going to be registered for the trademark and can be categorized based on the International Classification of Good and Services (Nice Classification) (“Intellectual Property – Laws & Regulations” from www.economia.gov.mo ). Applicants should state the number of classes and the names of the products or services in the application form.

An applicant for trademark may file an application for the registration in two ways. First, applicants may hire a qualified trademark agency to handle the case. Second, applicants may submit the application straightly to the Trademark Registration Hall of the Trademark Office of the State Administration for Industry and Commerce (Trademark Office). Yet, recently, application for trademark registration by post is not accepted by the trademark office.

If the applicant wants to gain higher chance for the successful trademark registration, the applicant should make a trademark search before filing an application for registration, by following the guide from the Trademark Office’s website. If more professional analysis of the search result is needed by the applicants, the applicants can hire a trademark agency to carry out the research. Handling trademark application and related matters, providing trademark legal consultation, acting as trademark application counsel are the services provided by the trademark agency. Besides, trademark agency providing trademark agency services is not under any administrative region restrictions.

For an ordinary trademark for items below 10 goods or services, the registration fee is RMB 1000 per mark. For any addition goods/service greater than 10, the additional fee is RMB 100 per mark. For certification mark and collective mark, the registration fee is RMB 3000 per mark.

To apply for trademark registration, you need to prepare the below documents. Applicants need to hand in the Application Form for Trademark Registration, and hand in a copy of company business license (if the applicant is a company). For natural person in the Mainland, a copy of business license for individual and commercial household, and a copy of identity card need to be submitted. For natural person in Hong Kong or Macao, no business license for individual and commercial household is needed. For claiming specific colors, six copies of the trademark sample are needed (five copies in color and one copy in black and white). For three-dimensional marks, two copies of samples for every five views (the top, front, rear, left and right side views) are needed. The size of the trademark sample should be between 5 x 5 cm and 10 x 10 cm. A power of attorney for joint applicants needs to be submitted by the representative if applicants appoint the trademark agency. For claiming priority rights, documents for priority right are needed.

The Trade Marks Registry can be asked by applicant to offer Search and Preliminary Advice services before the application for registering the trademark. A records’ search and a trademarks’ list that are equal to or resemble to the proposed trademark regarding the identical or similar goods and services will be offered by the Trade Marks Registry. Preliminary advice will be given by the Trade Marks Registry, notifying the applicant if their proposed trademark is good enough to marks off the goods and services from those of other traders.

If the applicant wants to use the search and preliminary advice services of the Trade Marks Registry, Trade Mark Form T1 and $200 per service need to be submitted. More can be referred to IPD’s website. If the applicant wants to apply formally for registering trademark, Trade Mark Form T2 should be handed in. Besides Trade Mark Form T2, Trade Mark Form T2A also needs to be handed in if the applicants apply for a certification, collective or defensive trade mark, sound or smell trade mark, a 3-dimensional shape or a color as element of a trade mark, or want to add a disclaimer, limitation or condition. More can be referred to the explanatory notes on Trade Mark Forms T2 and T2A under “How to apply to register a trade mark in the Hong Kong SAR?”.

An address for service in Hong Kong should be offered by all applicants. If the applicant wants to hand in his or her trade mark applications through e-filling system, he or she has to register with IPD as e-filers in advance. It is necessary for e-filers to hold an e-Cert which is issued by a recognized certification authority in Hong Kong. If applicants want to know more information on e-filing services, they may visit IPD webpage.

For registering a trade mark for a certain class of goods or services, the application fee is HK$1,300. For each additional class of goods or services, the application fee is HK$650. Find more about fee table from the IPD website.

If the application meets all requirements for registration and does not have any fault, the Trade Marks Registry will issue the application’s details. If no third party raises any objection to the applications during the 3 months opposition period started from the date of publication, the earliest for the entire registration process to be completed is 6 months. The entire registration process starts from the date of receipt of the application by the Trade Marks Registry for registration.

Free online IP search services will be offered by IPD. Through this service, records of registered trademarks and trademarks applications can be checked.

The Economics Services (e-Services – Information Enquiry) and the public computer terminals located at the Reception Center of the Economic Services are provided for the applicants to search the same or similar trademarks with regard to the same or similar goods or services, before the application for registering trademark. The trademarks’ elements (e.g. designs, letters etc) can even be searched therein. These services are free to the applicants.

In addition, the Economic Services can offer a search report to the applicants if they fill in the “Application of Other Actions” form and pay the payment MOP 200*. That search report gives you the trademark’s list that involves the trademarks which are same as or similar to the proposed trademark. Applicants can download “the Intellectual Property – Download Application Forms” from the Economic Services’ website.

If the applicant applies for registering trademark formally, “Application for Registration of Trademark” form should be submitted. If necessary, the following documents are required, such as Power of attorney, documents proving the priority right claim, translated copies (in both Chinese or Portuguese) of certificates or other documents that are not written in any official languages of the Macao SAR, and other supporting documents.

For “Application for Registration of Trademark” form, applicant should fill in the form in either Chinese or Portuguese. The applicants who do not have valid Macao SAR Resident’s Identity Cards, or are not bodies corporate registered in Macao SAR, they could hire a lawyer registered with the Macao Lawyers Association, individual who is residing in the Macao SAR or a body corporate registered in the Macao SAR as their agent. If so, the form should be signed by the agent. One application form is used for one trademark registration only, and should be within the same class of the International Classification of goods and services. The applicants who file their applications by individuals or by agents should possess a Macao SAR Resident’s Identity Card for certification and identification. The Economic Services will examine the authenticity of signature. The applications who file their applications by bodies corporate or by agents as bodies corporate need to ask their legal representatives, who have the authority, to sign the form, and should obtain official certification of authenticity through a Notary Office of the Macao SAR.

The applicants should submit“Application for Registration of Trademark” Forms together with the supporting documents to the Industrial Property Application Counter of Reception Center of the Economic Services. Then, applicants should submit and pay the application fee of MOP 1,000 along with the payment slip within 8 working days after an application number had been assigned and the receipt of the payment slip. Applicants may know more from the Economic Services’ website from “Intellectual Property – Download Application Forms”, about the “Application for Registration of Trademark” form and fee.

If the applicants prepare the application and its supporting documents well, the Official Gazette of the Macao SAR will issue a notice of the application (“Intellectual Property – Official Gazette”). Result of the registering trademark will be given by the Economic Services within 6 months after the notice of application is published if there is no objection made within 2 month opposition period starting from the date of publication, and no requirements for registration unmeet.

The Economic Services can be used for seeking the basic information of filed trademarks. No fee is needed.

The standard charge varies with the government’s policies. Applicants may visit the official websites for the details of latest standard.

Trademark Examination

Trademark examination includes formal examination and substantial examination.

Formal Examination

If an applicant or an agent files an application for registering trademark, formal examination will be carried out by the Trademark Office on the documents under the Trademark Law and the Implementing Regulations of the Trademark Law. With all the necessary documents completed for application, trademark application will be approved by the Trademark Office, and the Notice of Acceptance will be returned. Yet, without all the necessary documents completed for application, trademark application will be rejected by the Trademark Office, and reasons of rejection will be stated out clearly to the applicant. If there is a need for amendment in the documents, the required amendment will be stated out clearly by the Trademark office to the applicant. A reply should be done by applicant to the Trademark Office, within 30 days starting from the receipt of the amendment notice. If not doing so, applicants may not successfully apply for the trademark, as trademark application will be believed as abandonment.

Substantial Examination

After trademark applications are accepted, a substantial examination will be made by the trademark office under the Trademark Law and Implementing Regulations of the Trademark Law. That substantial examination is used to check if the trademark has violated the prohibitive regulations of Articles 10-11 of the Trademark Law and Article 28 regarding the resemblance to the previous registered trademarks or the preliminarily approved trademark applications for the identical or alike goods. For the applications fitting in with the related regulations completely or those with a particular product fitting in with the related regulations, it will be permitted preliminarily and published. For applications transgressing the related regulations completely or those with a particular product transgressing the related regulations, the Trademark Office will reject the application completely or partly and will notify the applicant the reason of rejection in writing. An opposition to those preliminarily approved trademark applications can be raised by any third party within 3 months from the publication’s date. Without receiving any opposition from any third party within the 3 months publication period, the applicants will pass the application and will move on to the stage of registration and publication.

There are four stages for the examination of an application for registration. The first stage is to check deficiency. The second one is to see whether the application meets the requirements of the Trade Marks Ordinance and Trade Marks Rules of Hong Kong. The third stage is to accept the application and publish application details, and see if any person may oppose the application. The last step is to register and issue the registration’s certificate if no opposition arises or the opposition is failed.

The First Stage: Deficiencies Checking

Without sufficient or appropriate application details, a “deficiency notice” will be issued by the Trade Marks Registry. 2 months from the notice’s date will be given to the applicant to correct the deficiencies. If all the details are in sequence, the application will move on to the second stage.

The Second Stage: Examination of Applications – Search and Examination

An application will be scrutinized by the Trade Marks Registry, and will be checked if it meets the requirement of registration under the Trade Marks Ordinance and Trade Marks Rules. It is a must for the registrable trade to have a distinctive nature for recognizing the goods and services of the applicants. In addition, the trademarks records will be searched by the Trade Marks Registry in order to check whether the same or similar trademark has been registered, or been applied for by the others regarding the same or similar goods or services. For the trademark not meeting the requirements for registration, applicant will receive a notice stating out the Registry’s opinion under Rule 13(1) of the Trade Marks Rules, and the reasons of rejection. 6 months will be given to the applicant for solving the mistakes, and 3 months will be given for extension. The Registry will suggest ways for the amendment in order to pass the application.

Written submissions or requests will be filed by the applicant for amending the application within the particular time limit. In case the applicant still cannot solve the deficiency, a further notice will be issued by the Registry stating out their opinion towards the application to the applicant. 3 months from the date of the further notice will be given to the applicants to suit the registration requirements or demand a hearing. Applicants can request for an extension in certain circumstances under Rule 13(6) of the Trade Marks Rules. When a hearing is requested, all the proof of supporting or objecting to the registration of trademark will be under concern at the hearing. After considering all the factors, the hearing officer will make the final decision

The Third Stage: Publication of Application Details and Opposition to Registration

If the trademarks’ registration is accepted, Hong Kong Intellectual Property Journal will state out the details of application, on the website (http://www.ipd.gov.hk/eng/ip_journal.htm). An opposition notice will be activated to be filed by any third party within the 3 months of the publication period.

The Fourth Stage: Registration

Without any successful opposition, applicant can find his application moving to the fourth stage (registration stage). Registration certificate will be issued by the Trade Marks Registry. Hong Kong Intellectual Property Journal will state out the related notice of registration, and register the trademark as the date of filing application.

There are five stages for the examination of an application for registering trademarks. The first step is formal examination. The second one is publishing notice of application and seeing if any person may oppose the application. The third stage is substantial examination and preparation of examination report. The following stage is registering and publishing notice of registration. The last stage is issuing the certificate of registration upon the expiry of the appeal period.

The First Stage: Formal Examination

After application for trademark registration is obtained by the Economic Services, formal examination will be the stage to be proceeded within one month, to see if the application form and supporting documents meet the legal requirements and to categorize the products or services.

If the applications unmeet any of the requirements, or they are not in sequence, the Economic Services will inform the applicant, and will give 2 months to the applicants to correct the mistakes in the application. If no notification is made to the applicants, a maximum of 3 months period is given to the applicants to file the application and make it in sequence.

The Second Stage: Publication of Notice of Application, Any Person May Oppose the Application

The official Gazette of the Macao SAR will state out the notice of application on the website  when the application is in sequence. An opposition to the registration will be filed by any third party within 2 months after the publication of the notice in the Official Gazette of the Macao SAR. The Economic Services will send another copy of the opposition to the applicant. The response to the complaint will be given by the applicant and will be filed within 1 month from the notification.

The Third Stage: Substantial Examination, Preparation of Examination Report

After the period for presenting oppositions, the application will come to the examination stage. The Economic Services will examine the applications and appreciate the allegations of different persons so as to ensure if they suit the registration requirements under the Industrial Property Code. Besides, the trademark records conducted by the Economic Services can be used to search if there is any same or similar trademark which has been registered or been applied for by others regarding the same or similar products or services. Examination report will be prepared by the Economic Services.

The Fourth Stage: Registration and Publication of Notice of Registration

By satisfying the requirements of registration under the Industrial Property Code, an application will come to the registration stage if there is no successful opposition within the particular time limit. Notice of registration will be stated out by the Economic Services in the Official Gazette of the Macao SAR from the website. For the application not meeting the registration requirements under the Industrial Property Code, notice of refusal of registration will be stated out by the Economic Services in the Official Gazette of the Macao SAR on the website.

The Fifth Stage: Upon Expiry of the Appeal Period, Issue of Certificate of Registration

An appeal to the Court of First Instance against the decision can be made by the applicant within 1 month from the date of publishing notice of registration in the Official Gazette of the Macao SAR. For getting the certificate of registration, the original receipt of the application fees should be submitted by the applicants at the Industrial Property Application Counter of Reception Center of the Economic Services upon the end of the appeal period, or 5 working days after the date of the court decision in the event of an appeal.

Objection/Opposition Proceedings for Trademark Registration

Under Article 30 of the Trademark Law, an opposition against the preliminarily approved trademark can be made by any person within 3 months from the date of publishing trademark. If there is no objection within the deadline, the registration of trademark will be allowed.

For an opposition against the preliminarily approved and published trademark, an application form will be required for submission for trademark opposition in duplicate to the Trademark Office. The issue number of the Trademark Gazette which opposed trademark is published and the preliminary approval’s number should be pointed out on the application form for trademark opposition. Particular requests and realistic proofs with related evidence attached should be contained in the application form for trademark opposition.

A copy of the application form for trademark opposition will be sent to the applicant from the Trademark Office. Applicants need to reply to the objection within 30 days from the date of receipt of the copy. Even if the applicant does not respond to the opposition, the arbitration from the Trademark Office will not be influenced.

Extension of the deadline for submitting evidence can be requested by the applicants after filing the opposition or replying to the opposition. Yet, the request should be mentioned in the first filing of the opposition or response. 3 months from the date of the first filing will be the maximum length of time of filing the supplementary evidence. The application will be treated as abandonment if the applicant does not submit any supplementary evidence within the grace period.

The Trademark Office will scrutinize the case within a given time period after getting the reply of the opposed party. The Trademark Office will generally carry out the examination in writing. The arguments of both the antagonist and against party will be considered by the Trademark Office before ruling a decision.

If anyone cannot meet the Trademark Office’s ruling, the party can request for a review before the Trademark Review and Adjudication Board within 15 days upon receiving the opposition decision. The arguments of both the antagonist and against one will be considered by the Board referring to the relevant provisions of Trademark Review and Adjudication Rules before ruling a decision. The regarding one that does not meet the decision of the Board can appeal before The First Intermediate People’s Court of Beijing.

If any party wants to go against the application for registration of a trademark, anyone should hand in a notice of opposition (Trade Mark Form T6) within 3 months starting from the date of publishing the details of the application. A statement of the opposition’s reasons should be stated in the notice of opposition. For the one who wants to reject the application, he or she may need to seek professional opinion from the lawyer or trademark agent for the related reasons of objection. A counter statement (Trade Mark Form T7) should be submitted by the applicant before the deadline. The opportunity of handing in evidence of opposition and application will be given to the opponent and the applicant respectively before the deadline. After collecting all proofs from both sides, the Trade Marks Registry will arrange a hearing for both sides and make the final decision after the hearing. The opposition who wins the hearing will be able to receive an amount of money from the applicants in general case.

The deadline for both sides to make an appeal to the Court of First Instance against the decision is the 28-day period after the Registry of Trade Marks made the decision. More about opposing to the application for trademark registration can be referred to the website of Trade Marks Registry Work Manual (“Opposition to registration”). You may refer to the website of Trade Marks Registry Work Manual (“Hearings”) for more information about the hearing.

If anyone wants to oppose to the trademark which the Economic Services studied preliminary, it is a must for them to make an objection to their application within 2 months after publishing the notice of application in the Official Gazette of the Macao SAR. They also need to fill in the“Application of Other Actions” form and hand in the opposition fee (MOP 800)(the fees will be adjusted from time to time). The Economic Services will send another copy of opposition to the applicant. A response should be made by the applicant, and filled in the “Application of Other Actions” form during 1-month notification period. More about the application form and fees can be referred to the website of the Economic Services.

After the application finishes the opposition process, the evidence offered by both parties will be examined by the Economic Services for decision making. The application of trademark will be rejected when there is successful opposition. If there is no successful opposition, application of trademark will be accepted when all requirements of application under the Industrial Property Code are met. More about the opposition of trademark application can be referred to the website of Article 211 of the Industrial Property Code.

Differences between Trade Mark Registration and Company Registrations

Different supervisory offices

Trademark Office ratifies the trademark application, and Local Administrations for Industry and Commerce ratifies the company application (registration of trade name). Trade names and trademarks have dissimilarities in the function and nature.

• First, the main job of trademark is utilized for distinguishing the products. Trademark, being the representative of the products’ reputation, is made largely related to the linked products. The right of trademark is one type of intellectual property rights. For the trade name, its main job is to distinguish enterprises. Trade name, being the representative of the enterprises’ reputation, is made largely related to the linked manufacturer or operator of products. The right of trade name is one type of name’s rights, largely concerning a person or personal identity.
• Second, applicants register and use the trademark under the requirements of the Trademark Law. With a registered trademark, we can enjoy its exclusive right to be used in the Mainland during the particular legal validity time. For trade name, applicants register the trade name under the Company Law or Corporate Registration Administration Regulations. With a registered trade name, we can enjoy its exclusive valid rights within the area where the Local Administrations for Industry and Commerce rules. The validity of trade name ends as the time that the company liquidates.
• Third, Trademark Law is used to protect the trademark right, and similar rules on the right of a company’s name which is stated in the General Principles of the Civil Law of the People’s Republic of China are used to protect the trade name in the Mainland.
• Forth, the trader should register his trademark in the place where traders sell the goods with related registered trademark and the related trade name’s symbol. Yet, trade name is not required to be re-registered. For the company registering their trade names as trademarks or using their registered trademarks as trade names of companies, the trademark and the trade name will be the name or a part of the name. These ways are allowed by the Trademark Law, Company Law, and Corporate Registration Administration Regulations.

Different laws and systems are set up in Hong Kong regulating the registration of company names, business names, and trademarks. Registering the company names is what the Companies Registry is in charge of. Registering business names is what the Inland Revenue Department is in charge of. Registering trademarks is what the Trade Marks Registry is in charge of. Registering the name of business or company does not represent to have the right of trademark or the right to utilize the name as a trademark for the purpose of promotion or dealing of goods or services in Hong Kong. For getting protection as a registered trademark in Hong Kong, the owner of the trademark can apply for trademark registration from the Trade Marks Registry.

Different laws and systems are set up in Macao SAR regulating the registration of trademarks and commercial names (i.e. company registration). Different government departments will supervise the registration. Registering trademark and commercial names are what the Economic Services are in charge of. More about“Conservatória dos Registos Comercial e de Bens Móveis” can be referred to the website. Registering commercial name does not represent to have the right of trademark or the right to utilize the name as a trademark for the purpose of promotion or dealing of goods or services. For getting protection as a registered trademark in Macau SAR, the owner of the trademark can apply for trademark registration from the Economic Services.

Means of Relief for Infringement of Trademarks

Acts of Infringement of Registered Trademarks:

In accordance with the rules of Article 52 of the Trademark Law of the People’s Republic of China, there are several acts of infringement or registered trademarks on their exclusive rights.

• First, if you use a trademark that is as same as or similar to a registered trademark on the product which is the same or similar with the registered one, it is an infringement act when there is no permission from the owner of registered trademark.
• Second, if you sell products that break the exclusive right to use a registered trademark, it is an infringement act.
• Third, when there is counterfeiting, or making, without authorization, representations of another party’s registered trademark, or selling such representations, it is an infringement act.
• Forth, if you change another party’s registered trademark without authorization and sell products with a changed trademark, it is an infringement act.
• Fifth, if there is anything leading to a prejudice to another party’s exclusive right to use its registered trademark, it is an infringement act.

Administrative and Civil Remedies

Referring to the Trademark Law, conflict will be caused by an infringement act to other person’s exclusive right on using a registered trademark. Negotiation will be used for settling the conflict between parties. If they do not wish to negotiate or fail to negotiate, lawsuit maybe brought by the concerned party or registered trademark‘s owner before the People’s Court or request the administrative department for industry and commerce for handling the matter.

At the time that the mentioned department makes the decision of the infringement, the mentioned department will ask the infringer to end the infringing act at once, and will take possession and obliterate the products concerned and the gear used for manufacturing the mentioned products and counterfeiting the representations of the registered trademark. Fine will be charged. If any of the parties does not satisfy with the said decision, lawsuit can be brought to the People’s Court, under the Administrative Procedure Law of the People’s Republic of China, during a 15-day period starting from the date receiving the notification. If no party brings a lawsuit before deadline, an enforcement of decision can be made by the People’s Court under the request by the administrative department for industry and commerce. With the demand from the party, conflict on the amount of compensation for the exclusive right’s infringement to the use of the trademark will be mediated by the administrative department for industry and commerce which settles conflicts. If the administrative department for industry and commerce fails to mediate the conflict, lawsuit may be brought to the People’s Court according to the Civil Procedure Law of the People’s Republic of China.

It is necessary for the administrative department for industry and commerce to have right on investigating the infringing act towards the exclusive rights to the use of registered trademark. If the said department suspects any crime, it should pass the case to judicial department for managing it under the law.

The profit the infringer earns from the infringement or the loss the infringed person suffers (contain any reasonable expenses for stopping the infringement) will be the same amount as compensation for infringing the exclusive right to the use of a trademark. Yet, in some cases, it is difficult to calculate the profit the infringer earns from the infringement or the loss the infringed person suffers. Compensation below RMB 500,000 will be ordered by the People’s Court, based on the details of the infringement act.

Provided that there is evidence from the registered trademark‘s owner or any party concerned proving that another party has done, or is about to do the infringement act towards the exclusive right to the use of registered trademark, unless the infringement act stops immediately, there will be irretrievable damage to the legitimate rights and interests, then the infringed one may ask the People’s Court to forbid the related act and preserve the property before filing a lawsuit.

For forbidding the infringement act, the registered trademark’s owner or the concerned party can ask People Court to preserve the evidence before filing a lawsuit if there are difficulties of obtaining evidence or preserving the evidence. Applicant maybe asked to offer a surety to the People‘s Court. Without offering surety, the application may be refused.

Criminal Remedies

Article 59 of the Trademark Law guides the criminal remedies for trademark infringement.

• First, if anyone uses a trademark that is as same as the one used on the same kind of goods without permission, he or she may commit crime. Apart from compensation, criminal sanctions will be charged on the infringer according to the law.
• Second, if any person counterfeits, sells or makes the representations of other’s registered trademark without permission, he or she may commit crime. Apart from compensation, criminal sanctions will be charged on the infringer according to the law.
• Third, if any person sells products with counterfeit registered trademarks on purpose, he or she may commit crime. Apart from compensation, criminal sanctions will be charged on the infringer according to the law.

Referring to the Criminal Law of the People’s Republic of China, a fixed term imprisonment sentence of not less than 3 years and not more than 7 years with an imposition of fine will be charged for those mentioned crimes. More can be referred to Articles 52-59 of the Trademark Law of the People’s Republic of China, Articles 213-215 of the Criminal Law of the People’s Republic of China.

For the infringement of registered trade mark, civil proceedings against infringement can be made by the registered trademark’s owner or the exclusive licensee. There are forms of relief that need to grant the plaintiff through setting up legal proceedings against the infringement. For example, damages, an injunction, orders for delivery up (the court requests the defendant to surrender the infringing goods, materials or articles), an account of the profits obtained from the infringement or other forms of relief.

Under Section 9 of the Trade Descriptions Ordinance (Cap. 362), if anyone uses a counterfeit trademark for the aim of deceiving, he or she will commit a criminal offence and need to be convicted to a fine and imprisonment.

Through administration and jurisdiction, trademark infringement’s remedy can be acquired in the Macao SAR.

There is a relative protection, which is the administrative protection in the field of intellectual property, for Macau. Preventing, striking, forbidding infringing activities in intellectual property are what the administrating and enforcing department does. For the situation of an infringement of the exclusive right of a registered trademark, an action for protecting the own right can be done by the right owner with the Macao Customs and other empowered entities.

What judicial measures of protection Macau SAR adopts in intellectual property area is one kind of relative protections. For the situation of an infringement of the exclusive right of a registered trademark, legal process at judicial authorities can be used by the right owner to solve the conflict. Thus, sanction is imposed on the infringer against the infringement, so as to prevent violating the right of owner. Hence, interest of trademark’s right owner can be guarded.