- Authors: CAO Laixi, national justice appraiser and president of Genuineways
- WANG Xiaotao, attorney at law
In the judicial practice of protecting registered trademark rights, the authors often encounter conflicting opinions in or between the judiciary authorities (the public security bureau, the procuratorate and the court) and the administrative law enforcement agencies (the administration for industry and commerce, and the quality and technical supervision bureau) as to “whether the registered trademark owner is qualified for verification in criminal case of counterfeiting registered trademark, etc trademark case”. Under this context, this paper studies the theme and related issues.
Our contention is:
The registered trademark owner is qualified for verification in the criminal case of counterfeiting registered trademark.
This qualification of verification is prescribed or authorized by the law, and the conclusion of verification does not fall into forensic cateries; it is unnecessary to entrust a qualified professional entity but the registered trademark owner to do verification as to "whether the mark used on the ods suspected of counterfeiting registered trademark is identical to the registered trademark," and "whether the ods suspected of counterfeiting registered trademark are the identical to those covered by the registered trademark".
The verification conclusion made by the registered trademark owner is special evidence difficult to be classified according to the existing evidence classification, on which the judicial practice and legal theory circles of intellectual property rights hold different opinions as to the "nature", but it is generally recognized that it is of legal validity and probative force.
Here, we will illustrate the above opinions, provide relevant legal basis and judicial practice cases, and discuss the related issues.
1. The "crime of counterfeiting registered trademark" in Article 213 of the Criminal Law indicates that the registered trademark owner has the qualification of verification.
Articles 213, 214 and 215 of the Criminal Law provide for the crime of counterfeiting registered trademark, the crime of selling ods bearing counterfeit registered trademark, and the crime of illegally making representations of registered trademark and selling such representations; to the judiciary, when handling cases involving the three charges and in the process of collecting evidence, the verification of the registered trademark owner is necessary. But to avoid tediousness, this opinion will be illustrated by mainly focusing on the crime of counterfeiting registered trademark.
Article 213 of the Criminal Law provides for the crime of counterfeiting registered trademark: Whoever, without permission from the owner of a registered trademark, uses a trademark which is identical with the registered trademark on the identical kind of commodities shall, if the circumstances are serious, be sentenced to fixed-term imprisonment of not more than three years or criminal detention and shall also, or shall only, be fined; if the circumstances are especially serious, he shall be sentenced to fixed-term imprisonment of not less than three years but not more than seven years and shall also be fined.
(1) The trademark registration certificate provided by the registered trademark owner is the evidence for the public security bureau, the procuratorate and the court to distinguish between crime and non-crime in handling criminal case of counterfeiting registered trademark.
In the handling of “criminal case of counterfeiting registered trademark”, the public security bureau, the procuratorate and the court must, to distinguish between crime and not crime, determine if the suspect's activities are consistent with the so-called four ingredients that constitute a crime. Among them, the object of this crime is exclusively limited to the valid registered trademark of other person. The reasons are as follows:
In the ingredients of "the crime of counterfeiting registered trademark," the object ingredient infringes the related trademarks management system of the state and the exclusive right of others to use registered trademarks.
The so-called trademark, including those for ods and those for service, refers to representations that are used by the enterprises, institutions and individual businessmen to indicate the distinctiveness of their ods or services, so that their ods or services can be distinguishable from those made, sold or provided by others, in the form of attaching words, design, sign or combinations thereof to the ods or packaging thereof; it is a means adopted by the ods producer or operator to indicate and maintain the quality reputation of their ods, and to prevent others from counterfeiting their ods and damaging their economic interests and rights.
Once registration is granted by the Trademark Office, the trademark then becomes a registered trademark, and the trademark registrant enjoys the exclusive right to use the trademark, which is protected by the law; any entity or individual cannot, without permission, counterfeit the mark.
For the trademarks without the approval of registration or although approved, beyond the valid period of registration or being cancelled, the law will not protect; in such case, the use of the mark by others does not constitute the so-called infringement or crime. Therefore the trademark must, to become an object of this crime, meet the following criteria:
a. trademark for ods but service: the counterfeiting of service marks does not constitute this crime;
b. registered trademark: the counterfeiting of unregistered trademark does not constitute infringement, to say nothing of a crime;
c. registered trademark in valid period: according to the Trademark Law of the PRC, the valid period for registered trademarks is 10 years; upon expiry of the valid period, one must apply for renewal of the registration to continuous use within six months after expiry of the valid period; where no application is filed for renewal of the registration within six months after expiry of the valid period, or where the trademark is cancelled because of breach of the law, it cannot constitute object of this crime.
The objective ingredient of this crime requires that the suspect must use, on the identical ods, the mark identical with the other’s registered trademark, that is to say, the ods on which the suspect used the trademark must fall into the identical ods as those covered by the registered trademark.
Therefore in handling criminal cases of “counterfeiting registered trademark”, the public security bureau, the procuratorate and the court must determine if the mark used by the suspect is identical with the “registered trademark” and if the ods fall into the identical ones and if such use infringed trademark of valid registration, etc questions, all of which must base on the trademark registration certificate provided by the trademark owner and the registered trademark, the covered ods and the relevant contents stated thereby.
(2) Whether the registered trademark owner licensed the perpetrator to use its registered trademark is the statutory prerequisite for the public security bureau, the procuratorate and the court, and other judicial organs to handle the crime of counterfeiting registered trademark and other criminal case, and the requirement for verification qualification of the registered trademark owner.
The objective ingredient of the crime requires that the suspect, without permission from the registered trademark owner, used a trademark identical with the registered trademark of other person.
In Article 26 of the Trademark Law, it is stipulated that: "Any trademark registrant may, by signing a trademark license contract, authorize other persons to use his registered trademark." Accordingly, upon permission from the registered trademark owner, it is of legal activities to use the registered trademark in respect of the identical ods and does not constitute the crime of counterfeiting registered trademark. The use of other person’s registered trademark by license must indicate on the name of the licensee and the origin of the ods on the ods that use the registered trademark.
In the practice, some licensees, while using the registered trademark of another, do not indicate on the products the name of the licensee and the origin of the ods. This violates the provisions of the Trademark Law and infringes the legal rights of consumers. But since the use of the registered trademark is permitted by the registered trademark owner, it do not constitute the crime of counterfeiting registered trademark.
Therefore, for the public security bureau, the procuratorate and the court, and other judicial organs to handle the crime of counterfeiting registered trademark and other criminal cases, it is the only statutory prerequisite that the registered trademark owner did not permit the suspect to use the registered trademark in respect of the identical ods. The verification conclusion on "whether the suspect is licensed to use the registered trademark in respect of the identical ods" issued by the registered trademark owner to the public security bureau, the procuratorate and the court is the evidence issued by the registered trademark owner based on the statutory verification qualification under Article 213 of the Criminal Law.
(3) In some circumstances, the verification conclusion provided by the registered trademark owner is irreplaceable evidence in the criminal case of counterfeiting registered trademark handled by the public security bureau, the procuratorate and the court, and other judicial organs.
The development of science and technology brings a variety of benefits to our lives, but at the same time, criminals are also taking advantage of the improved science and technology in their criminal activities, which enable them to counterfeit money, to say nothing of representations and packaging of registered trademark, no matter what anti-counterfeiting high-tech the registered trademark owner adopts. In this case, even a statutory verification institution of high authority cannot guarantee the correctness of its conclusions.
For example: it is supposed that the public security bureau received a report of some suspect selling (Note: not producing) ods bearing counterfeit registered trademark, which, involving a large amount of value, was suspected of committing the crime of selling ods bearing counterfeit trademark. Assuming that the counterfeit trademark on the ods sold by the suspect and the registered trademark of the genuine products are, through legal procedures and statutory verification, identified as identical one, can it be determined that the ods sold by the suspect fall into genuine ones but fake ones? Can the public security bureau dismiss the case accordingly? In the operation of the judicial practice, it is not this case but focusing on the verification conclusion or non-authorization statement provided by the registered trademark owner.
Because the technology used in the manufacture of ods bearing counterfeit trademark becomes more and more advanced, the registered trademark owner, in the long-term production and operation, often uses specialized anti-countering techniques or special methods to distinguish their own ods from those bearing counterfeit registered trademark, which fall into trade secrets of the registered trademark owner and can not freely disclosed to others, so this kind of verification method can not be grasped by the statutory or judicial verification department.
In the verification conclusion issued by the registered trademark owner or its authorized verification body, the trademark registration certificate etc related information must be provided; the genuine products and packaging, etc. can also be provided; those evidence themselves is an important part of evidence chain of the crime such as counterfeiting registered trademark handled by the public security bureau, the procuratorate and the court, and other judicial organs; their probative validity is irreplaceable in some circumstances.
In summary, in Article 213 of the Criminal Law: “Whoever, without permission from the owner of a registered trademark…” in the crime of counterfeiting registered trademark, the public security bureau, the procuratorate and the court need to obtain the verification conclusion on "whether the suspect is licensed to use the registered trademark in respect of the identical ods" or non-authorization statement provided by the registered trademark owner, which proves that the registered trademark owner is qualified for statutory verification.
2. Under quite a few judicial interpretations, ministerial rules and local regulations, the registered trademark owner not only has the qualification to distinguish the genuine ones from counterfeit trademark but also from counterfeit ods, and that the verification conclusion serves as important evidence in the criminal and administrative case of “intellectual property such as counterfeiting registered trademark” and “producing and selling fake and shoddy ods” handled by the judiciary.
Where the perpetrator’s act of producing and selling ods bearing counterfeit trademark, also possibly the act of producing and selling counterfeit ods, involves crimes, the judiciary will choose a charge of heavier penalty to convict and sentence against the criminal. Where the perpetrator’s offence and circumstances do not reach the standards of conviction and sentence, his act is often subject to the administrative punishment imposed by the industrial and commercial administrative department under the Trademark Law or by the quality and technical supervision bureau under the relevant provisions of the Product Quality Law. The verification conclusion from the registered trademark owner is generally necessary evidence to be collected by the industrial and commercial administrative authority in investigating administrative case of counterfeiting registered trademark. The quality and technical supervision bureau, although with internal statutory verification department, sometimes, still needs the verification conclusion from the registered trademark owner.
This above two law enforcement agencies are described here because they have the authority to answer the issue discussed in this paper. The reasons are: the industrial and commercial administrative authority is the statutory administrative enforcement agency in respect of the counterfeiting act of trademarks, and the Trademark Office is responsible for the management of the national trademark matters. The rules, interpretation, answers and the enforcement practice of the administration for industry and commerce and the Trademark Office are authoritative in respect of answering the question in this paper. It is important to emphasize that it is more complex for the industrial and commercial administrative authority to, in the law enforcement process, determine if it constitutes trademark infringement, than for the public security bureau to determine if the fake mark is “identical” with the registered trademark. Because in determining the trademark infringement, in addition to consideration of whether the marks are identical, one must also determine whether the marks are similar; it is more complex to determine similarity than identicalness. The quality and technical supervision bureau is not only the statutory authority for investigating and handling fake and shoddy ods, but also the statutory verification authority, and hence the reply to verification made by the bureau is authoritative. (Note: To avoid triviality, the administrative enforcement by the two administrative enforcement authorities is not described here.)
(1) Where the perpetrator’s act of producing and selling ods bearing counterfeit trademark, also possibly the act of producing and selling counterfeit ods, involves crimes, the judiciary will choose a charge of heavier penalty to convict and sentence against the criminal.
In the criminal law theory, the perpetrator actually only performed one act, which, when determined from different angles, violated the provisions of two criminal charges of different nature, and the charges can not accommodate each other; it fall into imaginative joinder of crimes; the perpetrator shall be convicted and punished in accordance with a heavier penalty. The legal basis is as follows:
In the notification on the Opinions on Issues concerning Application of Law in Handling Criminal Cases of Infringing Intellectual Property (Fa Fa <2011> No.3) jointly released by the Supreme People's Court, the Supreme People's Procuratorate and the Ministry of Public Security, it is stipulated in Article 16 - issue on handling the joinder of crimes of infringing intellectual property: “The perpetrator who committed a crime of infringing intellectual property and simultaneously constitutes a crime of producing and selling fake or shoddy ods shall be convicted and punished under the charge which gives a heavier punishment between the charge of infringing intellectual property and the charge of producing and selling fake or shoddy ods.”
In the Interpretation by the Supreme People's Court and the Supreme People's Procuratorate on Issues concerning Special Application of Law in Handling Criminal Cases of Producing and Selling Fake and Shoddy ods (The interpretation was passed by the 1168th session of the Judicial Committee of the Supreme People's Court on 5 April 2001 and by 84th session of the ninth Prosecutorial Council of the Supreme People's Procuratorate on March 30, 2001), it is stipulated in Article 10: “the perpetrator who committed a crime of producing and selling fake or shoddy ods and simultaneously constitutes the crime of infringing intellectual property or illegal business operation, etc, the offender shall be convicted and punished under the charge which gives a heavier punishment.”
In Article 140 of the Criminal Law, it is stipulated: “Any producer or seller who mixes impurities into or adulterates the products, or passes a fake product off as a genuine one, a defective product as a high-quality one, or a substandard product as a standard one, if the amount of earnings from sales is more than 50,000 yuan but less than 200,000 yuan, shall be sentenced to fixed-term imprisonment of not more than two years or criminal detention and shall also, or shall only, be fined not less than half but not more than two times the amount of earnings from sales; if the amount of earnings from sales is more than 200,000 yuan but less than 500,000 yuan, he shall be sentenced to fixed-term imprisonment of not less than two years but not more than seven years and shall also be fined not less than half but not more than two times the amount of earnings from sales; if the amount of earnings from sales is more than 500,000 yuan but less than 2,000,000 yuan, he shall be sentenced to fixed-term imprisonment of not less than seven years and shall also be fined not less than half but not more than two times the amount of earnings from sales; if the amount of earnings from sales is more than 2,000,000 yuan, he shall be sentenced to fixed- term imprisonment of 15 years or life imprisonment, and shall also be fined not less than half but not more than two times the amount of earnings from sales or be sentenced to confiscation of property.”
In the Interpretation by the Supreme People's Court and the Supreme People's Procuratorate on Issues concerning Special Application of Law in Handling Criminal Cases of Producing and Selling Fake and Shoddy ods (The interpretation was passed by the 1168th session of the Judicial Committee of the Supreme People's Court on 5 April 2001 and by 84th session of the ninth Prosecutorial Council of the Supreme People's Procuratorate on March 30, 2001), it is stipulated in Article 1 that the expression of “mixes impurities into or adulterates the products” in Article 140 of the Criminal Law refers to the mixing of impurities or different materials into the products, resulting in product quality not meeting the quality requirements prescribed by the state law, regulations or standards for quality products expressly indicated, which reduces or loses the properties and functions that they ought to possess; the expression of “passes a fake product off as a genuine one” in Article 140 of the Criminal Law refers to the passing of products that do not possess the properties and functions off as those that have the properties and functions; the expression of “passes a defective product off as a high-quality one” in Article 140 of the Criminal Law refers to the passing low-end products off as high-end products, or passing products assembled from inferior or used parts off as genuine or new ones; the expression of “a substandard product” in Article 140 of the Criminal Law refers to those products not in conformity with quality requirements stipulated in Article 26.2 of the Law of Product Quality of the PRC. Where it is difficult to determine the above acts stipulated in this article, the product quality test and inspection institutions, as stipulated by the law and the administrative regulation, shall be entrusted with the test and inspection.
Therefore, the perpetrator’s act of producing and selling ods bearing counterfeit trademark may also constitute the crime of producing and selling counterfeit and shoddy ods as stipulated in Article 140 of the Criminal Law, which involves the issue of joinder of crimes.
(2) It is stipulated in the judicial interpretations that the registered trademark owner has the verification qualification on genuine or fake “products” in criminal and administrative case of infringing intellectual property such as counterfeiting registered trademark and producing or selling fake and shoddy ods handled by the judiciary.
As mentioned in the above, the act of producing and selling ods bearing counterfeit trademark and the act of producing and selling fake and shoddy ods involve the issue of crimes of joinder. It is stipulated in Article of The Circular on Verification Issue in Trialing Criminal Cases of Producing and Selling Fake and Shoddy ods (Fa 2001 70) issued by the Supreme Court that in the prosecution of criminal cases of producing and selling fake and shoddy products, counterfeit trademarks, illegal business operation, etc that seriously damage the economic order of the socialist market, where it is difficult to determine whether the ods involved in “pass a fake product off as a genuine one”, “pass a defective product off as a high-quality one” and “pass a substandard product as a standard one”, the product quality test and inspection institutions, as stipulated by the law and the administrative regulation, shall be entrusted by the public prosecution authority with the test and inspection in accordance with the provisions of Article 1(5) of the Interpretation.
In the above judicial interpretation, the "counterfeit trademark" and "the producing and selling of fake and shoddy products" are paled together as crimes damaging the economic order of socialist market, and it is stipulated that when it is difficult to determine whether the products are genuine or fake ones, the product quality test and inspection institutions shall be entrusted with the test and inspection.
In Article 10(1) of Opinions on Issues in Implementation of the Law of Product Quality of the PRC (March 15, 2001, Zhi Ji Jian Ju Zheng Fa 2001 No. 43) issued by the State Bureau of Quality and Technical Supervision, it is stipulated that concerning the determination of evidence in handling the cases, the quality and technical supervision authority shall, in the process of administrative enforcement, determine the suspected counterfeit products, with the conclusion on verification used as important evidence in handling the cases. The enforcement department of the quality and technical supervision authority may, after examination, use, the conclusion on verification and other evidential materials provided by the manufacturer being counterfeited, as basis to determine whether the products are genuine or fake ones.
In the above judicial interpretation, even the State Bureau of Quality and Technical Supervision of high authority, which not only having its own department capable of verification but also extensive experience in selecting more authoritative verification agency or organization, still regards the verification conclusion issued by the manufacturer being counterfeited as important evidence to determine whether the actor is in violation of the law, when determining whether the ods are genuine or fake ones.
The above judicial interpretation shows that the registered trademark owner has the qualification to verify whether the ods are fake or genuine ones in the criminal and administrative case of intellectual property such as counterfeiting trademark, producing and selling fake and shoddy ods, etc handled by the judiciary.
(3) It is stipulated by the State Administration for Industry and Commerce and the Trademark Office that the registered trademark owner has the qualification to verify whether the “trademarks” or “ods” are fake or genuine ones in handling criminal and administrative case of counterfeiting registered trademark.
According to the Trademark Law, the local administration for industry and commerce is the enforcement authority to investigate and handle cases of counterfeiting registered trademark, the Trademark Office shall be responsible for registration and administration of trademark throughout the country and the Trademark Review and Adjudication Board, established under the administrative authority for industry and commerce under the State Council, shall be responsible for handling trademark dispute. This shows that the industrial and commercial administrative department and the Trademark Office have unparalleled experiences and historical traditions, respectively in investigating and handling counterfeiting registered trademark, and in determining “whether the trademarks are identical or similar " and "whether the ods are identical or similar".
In the reply to Zhejiang Administration for Industry and Commerce in Reply from the State Administration for Industry and Commerce on Verifying whether the ods using Registered Trademark are Fake or Genuine Ones" (Trademark Case 1997 No. 458), it is stated: Your Request for Instruction on Using the Verification of the Registered Trademark Owner as Ultimate Basis in Determining if ods Counterfeit the Registered Trademark of Other Person (Zhe ng Shang 1997 No. 47) on September 12 has been received. Upon study, it is now replied as follows: whether the ods using the trademark are fake or genuine ones shall be verified by the lawful user of the registered trademark or the statutory test and inspection institution. Where the conclusions of the two parties are not consistent, the one provided by the lawful user of the registered trademark shall prevail, when supported by valid evidence for truthfulness and legitimacy.
The above reply from the State Administration for Industry and Commerce shows that
to the administrative authority with the most experience in investigating and handling “ods” bearing counterfeit registered trademark, the conclusion of verification from the registered trademark owner is s not only valid but also prevail over those from the statutory test and inspection institution, in the verification of “ods” bearing registered trademark from fake ones to genuine ones.
In the Reply on Issues Related to Verification of ods bearing Counterfeit Registered Trademark and Representations" (Trademark Case 2005 No. 172) to Zhejiang Administration for Industry and Commerce, the statement is as follows: Your Request for Instruction on Validity of Verification of ods by the Registered Trademark Owner in Investigating and Handling Trademark Infringement Cases (Zhejiang ng Shang Biao 2005 No. 36) has been received. Upon study, it is replied as follows: In the process of investigating and handling trademark infringement cases, the industrial and commercial administrative departments may entrust the registered trademark owner to verify the ods suspected of bearing counterfeit registered trademark and the trademark representations, to issue a written verification conclusion and to bear the corresponding legal responsibility. Where the suspected party has no evidence contrary to the conclusion of verification, the industrial and commercial administrative departments will accept the conclusion as evidence.
The replies from the Trademark Office of the State Administration for Industry and Commerce show that to the Trademark Office of the highest authority on the work of verifying “whether the trademarks are fake, identical or similar” and “whether the ods are fake, identical or similar”, the conclusion of verification from the registered trademark owner shall be accepted as evidence determining the case, as long as without contrary evidence from the opposite party to overturn the conclusion, in the “verification of ods suspected of bearing counterfeit registered trademark and trademark representation".
(4) The provisions of the local laws and regulations that the registered trademark owner has the qualification to verify if the "trademark" and “ods” are genuine or fake ones.
Currently, the search for relevant local laws and regulations, which providing that the registered trademark owner has the qualification to verify if the "trademark" and the “ods” are genuine or fake ones, show the results as follows:
Article 15 of the Regulations of Investigating and Handling Illegal Production and Sales of Fake and Shoddy ods of Guangdong Province: “for those suspected of counterfeiting trademark or company name of other person, the company being infringed may conduct verification; the enterprise being infringed shall, within seven days upon receival of sample, submit the verification; the administrative law enforcement department shall issue the verification conclusion within seven days upon the receival of the verification."
Article 10 of Regulations of Investigating and Handling Illegal Production and Sales of Fake and Shoddy ods of Inner Monlia Autonomous Region: "in the cases of counterfeit trademarks, packaging, decoration or ods bearing fake name and address of manufacturer, the owner of the registered trademark or the manufacturer of the ods shall conduct the verification, issue the written verification opinion and bear the corresponding legal responsibility. For fake and shoddy ods, the statutory product quality test and inspection institution shall conduct verification and issue a certificate. For ods bearing counterfeit well-known foreign trademark, the entry-exit inspection and quarantine department or the agency of the manufacturer of the well-known trademark in China shall conduct the verification and issue a certificate.”
Article 26 of Regulations on Banning Production and Sale of Counterfeit and Shoddy ods of Wuhan: "... as to the test and inspection of suspected fake and shoddy ods, the statutory quality supervision and inspection entity or the quality and technology supervision department commission shall entrust the quality test and inspection agency to do the test; where it needs the entity being infringed to verify, the supervision and management department shall entrust the entity to verify...”
Article 13 of Regulations of Punishment on Producing and Selling Counterfeit and Shoddy ods of Jiangsu Province: “where the suspected counterfeit and shoddy ods need to be tested, the administrative law enforcement departments should sample evidence, and the statutory inspection entities shall, within the prescribed time limit, issue a written inspection report; in respect of suspected use of representations of another person’s trademark, it may also be verified by the infringee, who shall, within seven days from the date of receiving the samples for inspection, issue the verification report accurately. The administrative law enforcement department shall, within seven days from receival of the inspection report or the verification report, deal with the matter; where it does not fall into the circumstance of fake and shoddy ods, the samples shall be returned to the operator within three days."
In summary, the State Bureau of Quality and Technical Supervision in charge of the state quality supervision and management, the State Administrating for Industry and Commerce and the Trademark Office in charge of the trademark management and enforcement all grant the owner of the registered trademark the qualification to verify in respect of “genuine or fake ods” and “genuine or fake trademark”.
3. In the judicial practice, a large number of cases on counterfeit trademark, producing and selling of counterfeit ods and other crimes confirm that the verification conclusion from the registered trademark owner is important evidence for the court to determine the crime and offence conducted by the offender.
In the judicial practice, the people's court, in the cases involving counterfeit trademarks, producing and selling counterfeit and shoddy products and other crimes, accept the verification conclusions from the registered trademark owners as evidence to determine the criminal facts. To this end, we select the following relevant supporting judgments on the relevant cases by primary courts, intermediate courts and high courts.
(1) Criminal Judgment by Guangzhou Tianhe District People's Court (<2006> Tian Fa Zhi Xing Chu Zi No. 9) (see Annex 1 for the judgment)
In this criminal case of producing fake sports clothing under "ADIDAS", "PUMA", "NIKE" and other registered trademarks heard by the Tianhe District Primary People's Court, the verification conclusions issued by the registered trademark owners or agents and trademark registration certificates are accepted as evidence to determine the facts of the case.
(2) Criminal Judgment by Guangdong Province Foshan Intermediate People's Court (<2004> Fo Xing Zhong Zi No. 346) (see Annex 2 for judgment)
In the criminal case of producing fake silicone rubber products used in construction bearing the registered trademark “道康宁” of U.S. Dow Corning Corporation and the registered trademark “白云” of Guangzhou Baiyun Sealant Factory heard by Foshan Intermediate People's Court, the verification conclusions issued by the registered trademark owners or agents and trademark registration certificates are accepted as evidence to determine the facts of the case.
(3) Criminal Adjudication by Shaanxi Provincial Higher People's Court (<2010> Shaan Xing Zi No. 37) (see Annex 3 for judgment)
In the criminal case of producing fake liquor and beer under the registered trademarks of Shaanxi Xifeng Liquor Group Co., Ltd., Shaanxi Taibai Wine Co., Ltd., and Qingdao Beer Hans Group Co., Ltd. tried by Shaanxi Provincial Higher People's Court, the verification conclusions issued by the registered trademark owners or agents and trademark registration certificates are accepted as evidence to determine the facts of the case.
(4) Criminal Judgment by Guangdong Province Guangzhou City Intermediate People's Court (<2005> Hui Zhong Fa Xing Er Zhong Zi No. 263) (see Annex 4 for judgment)
In this criminal case of producing and selling fake toner cartridges bearing the registered trademarks "EPSON", "CANON", "HP", "BROTHER" and other brands heard by Guangdong Province Guangzhou City Intermediate People's Court, which constituted the crime of producing and selling fake and shoddy products, ultimately, the offenders were convicted and sentenced under the charge of "producing and selling fake and substandard products"; in the case, the evidence and verification reports issued by Canon (China) Limited and Epson (China) Co., Ltd. are accepted as evidence to determine the facts of the case.
4. The verification made by the registered trademark owner is directly stipulated or authorized by the law and falls into special evidence difficult to be classified according to the classification of the existing evidence.
The judicial practice and legal theory circles of intellectual property rights hold different opinions as to the "nature" of verification conclusions made by the registered trademark owners, but it is generally recognized that it is of legal validity and probative force. However, those who lack understanding on intellectual property have cognitive bias in this issue and even question the legitimate validity and probative force of the verification conclusions; these challenging points all fall into the logic game and word game of the intrinsic evidence but ignore the direct provisions of the law, and even blindly and arrogantly question the replies from the State Administration for Industry and Commerce, the Trademark Office, the State Bureau of Quality and Technical Supervision. Therefore, it is necessary to make introduction about the nature of the verification conclusions from the registered trademark owners as follows:
In the filed of legal theory, someone holds that the nature of the evidence largely determines the strength of its probative force. Theoretically there are three possible natures as to the conclusions made by the registered trademark owners: a: of verification conclusion, b. of documentary evidence, c. of testimonial evidence (in order to avoid trivial details, no further exploration is made as to the related jurisprudence.).
There are differences between the judiciary departments on this issue: in trademark infringement dispute of Shanghai Huayi (Group) Corporation v. Li Jianxin, Guangdong Provincial High Court held it as "testimonial evidence"; in the summary of the symposium of provincial industrial and commercial administrative enforcement and administrative litigation, Fujian Provincial High Court determined it as documentary evidence, based on the reason: "Where used in the administrative procedures and provided by the industrial and commercial administrative authorities to the people's court, the conclusions should be consistent with the requirements of Article 14 of the Provisions on Several Issues of Evidence in Administrative Litigations issued by the Supreme Court. The verification conclusions shall, where made by those without the corresponding qualification, not be accepted by the people's court. It shall be noted that: (1) In some cases that although without verification conclusion, the industrial and commercial administrative authority provided material evidence, documentary evidence, testimonial evidence and field notes, etc. sufficient to prove the facts of the party producing and selling counterfeit ods, the people's court shall determine the facts. (2) Where there is no special verification department or the special verification department cannot do the verification, the certificate issued by the manufacturer falls into, in the administrative proceedings, documentary evidence provided by the interested party rather than the verification conclusion."
We believe that the verification conclusions made by the registered trademark owners fall into special evidence directly stipulated or authorized by the law and difficult to be classified according to the classification of the existing evidence. Because when being classified into " evidence of verification conclusion in legal sense", it is not consistent with the legal provision that the verification shall be made by a neutral party disinterested with the case; where classified into documentary evidence, it is produced after the illegal activity and has objective and subjective judgments, not meeting the requirements of documentary evidence; if classified into the testimonial evidence, it is issued by an interested party in the administrative litigation and hence does not conform to requirements on the testimonial evidence.
Therefore, the verification conclusion made by the registered trademark owner is special evidence directly stipulated or authorized by the law and difficult to be classified according to the classification of the existing evidence.
However, regardless what kind evidence does the verification conclusion of the registered trademark owner fall into, the judicial practice and legal theory circles of intellectual property rights generally recognize its legal validity and probative force.
5. It is unnecessary to entrust any verification institution but the registered trademark owner to do forensic verification as to "whether the mark used on ods suspected of counterfeiting registered trademark is identical with the registered trademark," and "whether the ods suspected of counterfeiting registered trademark are identical with those covered by the registered trademark".
In the notification on the Opinions on Issues concerning Application of Law in Handling Criminal Cases of Infringing Intellectual Property (Fa Fa <2011> No.3) jointly released by the Supreme People's Court, the Supreme People's Procuratorate and the Ministry of Public Security, it is stipulated in Article 3 “Issues on obtaining evidence by sampling and inviting expert to give verification in handling criminal cases of infringing intellectual property” that in handling criminal cases of infringing intellectual property, the public security authority, the People's Procuratorate and the People's Court shall entrust a verification institute qualified by the state where verification is required.
Based on the above judicial interpretation, concerning the kind of intellectual property criminal cases in which there exist matters that "require" verification, and whether or not it requires forensic verification as to "if the trademarks used on suspected counterfeit ods and the registered trademark are identical”, etc forensic issues, there is no more specific interpretation.
It is stipulated in the Criminal Procedure Law that: "where it needs to solve some special issue in cases, it should be assigned to people with expertise to verify." The so-called special issue in the cases generally refers to the object and range of forensic verification. The definition of "special issues" refers to scientific and technical problems, which are beyond the well-known facts, the laws of nature and theorems, the facts presumed according to the daily rule of thumb and difficult to solve through the use of general investigation and detection methods. The issues to be verified are special facts rather than ordinary facts. Because as along as there is evidence of the fact, the general people can also use the correct logic to get the conclusion of ordinary facts，without the help of expert knowledge. In some of our local legislative practice, judicial interpretation and ministerial rules and regulations, there are some circumstances of expanding and narrowing the scope of forensic verification.
In the criminal cases of intellectual property rights, the issues on whether a patent is infringed, and whether the one used by the suspect falls into trade secrets, etc belong to "special issues" and require verification that shall be entrusted.
It is unnecessary to entrust any verification institution but the registered trademark owner to do forensic verification as to "whether the mark used on the ods suspected of counterfeiting registered trademark is identical with the registered trademark," and "whether the ods suspected of counterfeiting registered trademark are identical with those covered by the registered trademark". The reasons are put as following:
(1) Concerning "whether the mark used on the ods suspected of counterfeiting registered trademark is identical with the registered trademark," the general people can definitely, through observing the "words, device, mark and the combination thereof" used on the trademark representations, determine if the marks are identical, which falls into issues that can be judged based on daily experience but complex special issues.
According to the Interpretation by the Supreme People's Court on Issues concerning Special Application of Law in Hearing Civil Cases of Trademark Disputes (Passed by the 1146th session of the Judicial Committee of the Supreme People's Court on 12 October 2002, Fa Shi 2002 No.32), it is stipulated in Article 10 that: When the people's court determines if the trademarks are identical or similar according to the provisions of Article 52(1) of the Trademark Law, it shall follow the principle of "the standard of ordinary attention paid by the relevant public”. To determine whether a mark is "identical", the subject is the general public as consumers to determine, not those with "a special knowledge” to verify, which is determined by the special relationship between the trademark and consumers; it is unimaginable that when consumers buy ods, it needs "expertise" to verify the "trademark".
(2) Where the ods suspected of counterfeiting registered trademark and the ods covered by the registered trademark are identical in respect of the performance, intended purpose, raw materials, etc. aspects, the ods fall into identical ods. It is very simple to determine whether the ods are identical, which is also subject to the principle of "the standard of ordinary attention paid by the relevant public”.
(3) The verification on "whether the ods are counterfeit ones" can only be conducted by the registered trademark owner. Because with more advanced technology used by the criminals in counterfeiting, it is beyond the capacity of the average consumer to judge, and even beyond such authorities as the State Administration for Industry and Commerce and the State Quality and Technical Supervision Bureau. Because the State Quality and Technical Supervision Bureau can verify if the product "quality" is in line with national standards, but it can not verity whether the ods "counterfeit another person’s." Because the performance standards for all types of ods produced by the registered trademark owner itself or under its authorization are only in the hands of the registered trademark owner itself, which fall into trade secrets rather than public standards known by the other agencies; that is why the two state agencies, in the above legal documents, qualify the registered trademark owner to verify "whether the ods are counterfeit".
In addition, under "the crime of counterfeiting registered trademark" in Article 213 of the Criminal Law, the verification conclusion from which department meets the statutory requirement - "without permission from the registered trademark owner"? Only the evidence, trademark registration certificate and verification conclusion issued by the registered trademark owner can establish whether the ods suspected of counterfeiting trademark are produced or marketed without permission. For example: where the proprietor of a trademark commissioned an enterprise to produce 100,000 ods bearing the registered trademark (commonly known as: OEM), and the enterprise produced 1 million pieces of ods, then those additional 90 pieces of ods still belong to ods counterfeiting another person’s registered trademark and "without permission from the registered trademark owner". The quality and trademark representations of the counterfeit ods and those of the genuine ones are identical. The forensic verification result on the fake ods from the verification institution will definitely be "genuine ones", but the fact is just the opposite.
Therefore, the verification on "whether the ods are counterfeits" can only be conducted by the registered trademark owner.
6. The judiciary (the public security bureau, the procuratorate and the court) has the authority and responsibility to judge and determine the facts of the crime.
The judiciary authorities (the public security bureau, the procuratorate and the court) have their own authority and responsibility to judge and determine the facts of the crime. The public security bureau, the procuratorate and the court can, from the aspect of the ordinary customers paying common attention, make judgment on "whether the mark used on the ods suspected of counterfeiting registered trademark is identical with the registered trademark," and "whether the ods suspected of counterfeiting registered trademark are identical with those covered by the registered trademark".
For the determination standards and principles, in the notification on the Opinions on Issues concerning Application of Law in Handling Criminal Cases of Infringing Intellectual Property (Fa Fa <2011> No.3) jointly released by the Supreme People's Court, the Supreme People's Procuratorate and the Ministry of Public Security (note: the same judicial interpretation as “entrus,ting veri,fication institution to verity where necessary, in handling criminal cases of infringing intellectual property”), the relevant provisions are stipulated:
It is stipulated in Article 5 - Issue on determining “identical ods" referred to in Article 213 of the Criminal Law: ods under the identical name or those under different name but referring to the identical object may be determined as "identical ods". "Name" refers to the name of ods used by the Trademark Office under the State Administration for Industry and Commerce in the trademark registration work, generally names in the International Classification of ods and Services. "ods under different name but referring to the identical object" refer to those of the identical or basically the identical function, intended purpose, major raw materials, consumer targets, trading channels, etc, which the general consumers consider as the identical object. In determining "identical ods", a comparison shall be conducted as to the ods covered by the registered mark of the right holder and those actually made and marketed by the actor.
It is stipulated in Article 6 - Issue on determining “a trademark identical with a registered trademark" referred to in Article 213 of the Criminal Law: In any of the following circumstances, it can be determined as "a trademark identical with a registered trademark": (1) Change the font, case of letters or order of words (horizontal to vertical or just reverse) of a registered trademark, which only produces subtle difference; (2) Change the space between words, letters, digits, etc of a registered trademark, which does not affect the distinctiveness of a registered trademark; (3) Change the color of a registered trademark; (4) Other trademarks, with basically the same visual effect as a registered trademark and enough to mislead the public.
The standards in the above judicial interpretations are for the judiciary authorities (the public security bureau, the procuratorate and the court) to determine "whether the marks are identical" and "whether the ods are identical", not for the verification institution with "expertise"; so it is improper to delegate all the issues to qualified verification institution to conduct forensic verification, just based on "requirement of intellectual property criminal case".
Certainly, the judiciary authorities have the legal authority to decide on and carry out verification. Whether it is verification conclusion from the registered trademark owner or forensic verification conclusion, it is evidence for the judiciary authorities to determine the facts of the case; no “verification conclusion” cannot substitute for the “determination” made by the judiciary authorities on whether there exist criminal activities.
