Supreme People's Court, Opinions on Several Issues Concerning Fully Leveraging Intellectual Property Trial Functions to Promote the Great Development and Great Flowering of Socialist Culture and to Promote Autonomous and Coordinated Economic Development

With respect to a product derived by using a patented method that is not a new product, if the patentee can show that the alleged infringer manufactured an identical product but, despite reasonable efforts, the patentee finds it impossible to prove that the alleged infringer did indeed use the patented method however,,based on the actual circumstances of the case and taking into account the known facts and everyday life experience, it is possible to determine that the probability of the identical product having been manufactured by the patented method is high, the patentee may, pursuant to relevant provisions of judicial interpretations on evidence in civil procedures, be exempted from being required to provide further evidence, and the alleged infringer shall be required to provide evidence showing that its manufacturing method is different from the patented method (Article 15).

If a party is well aware that its patent falls within prior art or an existing design, yet maliciously issues infringement warnings to, or abuses its right of suing against, legitimate exploiters and their transaction counterparties, thereby constituting infringement, the injured party's claim for damages may be upheld, depending on the circumstances. Where it is necessary to carry out a relatively complex comparison of technologies before a determination of the probability of infringement can be reached, it will be inappropriate to render a ruling for a pre-trial injunction to halt the infringement (Article 16).

In respect of trademarks, under normal circumstances, where the component elements of the relevant trademarks on the whole constitute similarity, they may be determined to be similar trademarks. If the component elements of the relevant trademarks are on the whole not similar but the notoriety of the trademark in respect of which rights are asserted far exceeds that of the alleged infringing trademark, a comparison of the major parts may be made to determine whether they are similar. If the relevant trademarks both have a relatively high degree of notoriety, or the simultaneous existence of the relevant trademarks arose under special conditions, the determination of similarity shall be made by additionally comprehensively considering factors such as the actual use of the two trademarks, the history of their use, the relevant public's awareness thereof and the subjective state of the users, by being careful to respect the market situation that has objectively arisen and by guarding against simplistically equating similarity of the trademarks' component elements to similarity of the trademarks, so as to realise tolerant development between the business operators (Article 19).

If the trademark in respect of which rights are asserted has actually been used and has a certain degree of notoriety, full consideration of the connection between the goods shall be given when determining whether the goods are similar. Goods between which the relevant public, based on its normal knowledge of the goods and general conception of trading, would deem there exists a specific connection may, depending on the circumstances, be included within the scope of goods that are similar (Article 20).

With respect to a well-known trademark widely known by the general public, fact of its being well known through being commonly known by the public shall be taken into account to reduce the trademark holder's burden of proving that the trademark is well known. In recognising a trademark as being well known, there is no requirement that it has the same degree of notoriety as others. However, the scope and intensity of the protection accorded a well-known trademark shall be consistent with its distinctiveness and degree of notoriety. The more distinctive a well-known trademark is and the greater its degree of notoriety, the wider shall be the scope of cross-class protection accorded to it and the more intense shall be the protection accorded to it (Article 21).

If the registered trademark of a registered trademark holder is a reproduction, imitation or translation of a well-known trademark of another that is not registered in China, is the trademark of a party that it has acted as agent for or represented and the registration of which it has pirated, or is the trademark that another has already used and that has a certain influence but the registration of which the registrant has pirated by using illegitimate means, and the party that made prior use thereof and that has been accused of infringement mounts its defence on the foregoing grounds, such defence shall be upheld (Article 22).

With respect to competition, where an act falls within the domain of acts that are expressly prohibited in the special provisions of the Anti-unfair Competition Law, similar acts of unfair competition may be constrained only pursuant to the special provisions and, in principle, the provisions of principles shall cease to apply for the purpose of expanding the scope of application. With respect to an act in respect of which there are no special provisions in the Anti-unfair Competition Law prohibiting the same, if such act causes harm to the lawful rights and interests of another business operator, genuinely breaches the principle of good faith and generally-accepted business ethics and is unfair in nature, and failure to put a halt to the same would be insufficient to safeguard the fair competition order, it may be constrained by applying the the provisions laying out principles (Article 24).

If the rights holder provides evidence substantiating the advantages of the secrecy or gives a full reasonable explanation of the difference between the information that it claims as a trade secret and information in the public domain, a finding that secrecy has been established may be rendered. If the trade secrets rights holder provides evidence showing that the information of the party being sued is identical or substantively identical to its trade secrets and the party being sued satisfies the conditions for having had access to or having illegally obtained the trade secrets, and, based on the actual circumstances of the case or the known facts and everyday life experience, it is possible to determine that the probability that the party being sued used illegitimate means to obtain the same is relatively high, it may be assumed that the fact of the party being sued having used illegitimate means to obtain the trade secrets is established, unless the party being sued can prove that it obtained the information through lawful means (Article 25).

Provided that there has neither been a breach of a non-compete obligation nor infringement of trade secrets, where a worker uses the knowledge, expertise and skills that he or she learnt with his or her former employer to serve another employer that competes with his or her former employer, the the provisions laying out principles of the Unfair Competition Law shall not be simplistically used to determine that unfair competition has been constituted. On the other hand, breach of a non-compete obligation does not equate to infringement of trade secrets nor does the term of a non-compete restriction equate to a term of confidentiality. Where a plaintiff institutes an infringement suit on the grounds of the infringement of trade secrets, the same shall not be subject to any existing non-compete provisions (Article 26).

With respect to a monopolistic agreement that has the obvious effect of seriously eliminating or restricting competition, the injured party may be exempted from being further required to adduce evidence showing that the agreement has the effect of eliminating or restricting competition. With respect to the abuse of dominant market position by a public utility or other business operator that has qualifications to operate exclusively, the burden of proof on the injured party may be suitably reduced based on the specific circumstances of the case (Article 27).