Legal interpretations and instructions on intellectual property cases that were published the other day attracted a lot of interest. The Supreme Court published the legal interpretations about trade secret cases and administrative cases of confirming rights granted by patent licenses respectively and the two supreme legal authorities published the Interpretation (III) of Several Issues Concerning the Application of Law on Dealing with Criminal Cases of Intellectual Property Infringement (“Interpretation”), which includes provisions relating to criminal cases involving intellectual property such as trademarks, copyright and trade secrets. This article is based on Article 1 of the Interpretation which includes specific provisions relating to the “trademark identical to a registered trademark” in Article 213 of the Criminal Law.

1. Provisions relating to the crime of falsifying a registered trademark in the Criminal Law

Article 213 of the criminal law is a provision relating to the crime of falsifying a registered trademark, stating that a person using a trademark identical to a registered trademark on the same type of commodities without obtaining a license granted by the registered trademark owner in serious circumstances will be sentenced to less than three years’ imprisonment or detention and/or fined; and in extremely serious circumstances such person will be sentenced to less than seven years’ imprisonment and fined. Therefore, “a trademark identical to a registered trademark” is an essential element of the crime of falsifying a registered trademark. 

2. Comparisons between provisions relating to “identical trademarks” in the new and old legal interpretations

In 2004 legal interpretations published by two supreme legal authorities included provisions relating to elements of the crime of falsifying a registered trademark such as “identical trademarks”, “use”, “serious circumstances” and “extremely serious circumstances”. In 2011 the Supreme People’s Court, the Supreme People’s Procuratorate and the Ministry of Public Security published the Instructions on Several Issues Concerning the Application of Law to Dealing with Intellectual Property Infringement Crimes, which explains how to decide commodities are of the same type or a trademark is identical to a registered trademark. Comparisons between provisions relating to “identical trademarks” in the above three legal documents are described below. 

3. Specific provisions relating to “a trademark identical to a registered trademark” in the new legal interpretation

This interpretation clarifies and diversifies the events in which “a trademark is identical to a registered trademark”. Two additional events with the above elements are “a trademark that would be the same as a registered trademark without the addition of a product name or model number to the registered trademark” and “a trademark identical to a registered three-dimensional trademark”. The events are more fully described below. 

Event (1): the new legal interpretation changes “slightly different” to “basically the same”, perhaps because “slightly different” is ambiguous in some cases. Event (2) is amended accordingly. 

Event (4): It frequently happens that a person uses a registered trademark with the addition of a general name or model number of a product without permission. This is Event (4), in which the trademark used should be deemed as identical to the registered trademark”. Please note that in the exposure draft of the new legal interpretation the clause relating to this event is after the clause relating to the event involving “registered three-dimensional trademarks”, but in the draft published this time changed the order of the two events, perhaps because Event (4) is related to two-dimensional trademarks.      

Event (5): The new legal interpretation cited the words “registered three-dimensional trademarks” for the first time and provided that a trademark “identical” to a “registered three-dimensional trademark” must be basically the same as the three-dimensional mark and two-dimensional elements of the “three-dimensional trademark”. 

Event (6) is a blanket clause which is basically the same as the related clause in the legal interpretation 2011 and deletes the word “looks”. Technically, this deletion implies the intention to protect the new type of audio trademarks. Based on the name of the crime, the absence of word could lower the incriminating threshold of the crime of falsifying a registered trademark. This is the background against which the interpretation was laid down, as stated by heads of the two supreme legal authorities in answer to questions of journalists.  

4. Differences between “identical trademarks” related provisions of the Trademark Infringement Criteria and the new legal interpretation

On 15th June this year the National Intellectual Property Office published the Trademark Infringement Criteria (“Criteria”), in which there are “identical trademarks” related provisions, including Article 13 stating that a trademark identical to a registered trademark means that a trademark in question is completely the same as the registered trademark or a trademark that is different from but is basically the same in visual or audio effect as and can hardly be distinguished by the public from the registered trademark. Article 14 of the Criteria gives a list of circumstances in which a trademark could be found as identical to a registered trademark. The Criteria deals with this issue in detail and clarifies each type of trademarks separately, not only including provisions about traditional trademarks in words, images or their combination and criteria for new trademarks such as three-dimensional, colour and audio trademarks. Provisions of the new legal interpretation only deal with criteria for three-dimensional trademarks. It needs further discussion to decide if trademarks are “identical” as defined in criminal law in similar cases involving other new trademarks by referring to the Criteria.  

5. Final words

The legal interpretation contains few provisions about criminal trademark cases and further clarifies a single set of criteria for identifying “identical trademarks” in the crime of falsifying a trademark and first broadens subject matters of trademark related crimes from traditional trademarks to new three-dimensional trademarks and hidden audio trademarks to create a good business environment for entities in the market by taking enforceable and deterrent legal actions against trademark related crimes.