In commercial activities, a trademark is an important intellectual property that embodies a company’s brand image and market value. Yet, trademark infringement remains a persistent challenge, posing serious threats to the legitimate rights and commercial interests of trademark owners. So, what measures can trademark owners take to defend their rights when trademark infringement occurs?
Before initiating any enforcement action, the first step is to secure evidence of the infringement. This is a critical foundational step for rights holders to effectively safeguard their interests, providing solid support for subsequent enforcement actions such as sending cease and desist letters, filing complaints, or initiating infringement lawsuits. This serves as an essential prerequisite for ensuring the exercise of the owner's rights.
I. Evidence Collection
Depending on the specifics of the infringement, evidence may be secured through the following methods:
1. Preliminary Online Search and Investigation: This is a necessary step to understand the facts of the case and formulate a strategy for subsequent actions.
2. Evidence Preservation via Blockchain Forensics (such as webpage evidence collection and screen recording) or Traditional Notarization: This step is necessary for formal legal actions such as infringement litigation, and is strongly recommended for supporting complaints and cease-and-desist letters.
3. Purchasing Samples: This is necessary for enforcement action that requires an infringement analysis report or relies on test purchases to confirm product authenticity.
4. On-site Investigation: For large-scale infringement or suspected manufacturing sites with limited online presence, on-site investigations are recommended to uncover clues about warehouses or factories.
II. Enforcement Measures
Once evidence of infringement is secured, trademark owners may pursue the following enforcement actions through private or public recourse depending on the circumstances:
1. Sending a Cease and Desist Letter
This method is suitable for cases involving minor infringement where the other party is cooperative, offering low cost and high efficiency. Both parties can negotiate on issues like compensation and cessation of infringing activities. However, to ensure enforceability of any agreement, it is important that all communications should be documented in writing, clearly outlining the rights and obligations of both parties.
2. Filing Complaints with E-commerce Platforms
For infringement occurring through online stores, this is often the most suitable route. Currently, major e-commerce platforms have established IP protection mechanisms. Trademark owners need to submit relevant evidence—such as trademark registration certificates and links to the infringing products—to the platform for review. Once verified, platform operators typically take measures such as removing the infringing listings and penalizing the sellers, allowing for a quick halt to online infringement.
3. Customs Recordal and Protection
Trademark owners are encouraged to record their trademarks with Customs as early as possible after trademark registration. If the infringement is discovered before recordal has been completed, it is strongly recommended to file for recordal immediately. Once a trademark is recorded with Customs, the authorities will conduct regular inspections of imported and exported goods to detect potential infringement.
4. Filing Complaints with Administration for Market Regulation for Administrative Action
Trademark owners can file complaints about trademark infringement with the local Administration for Market Regulation by calling the 12315 hotline or reporting through the national 12315 platform. This route applies broadly, including to unfair competition cases where trademarks are improperly used in business names.
Materials required for filing an administrative complaint include proof of trademark ownership (e.g., registration certificate, etc.) and evidence of infringement (e.g., photos of infringing products, purchase receipts). Once infringement is established, authorities may take administrative penalties such as ordering immediate cessation, confiscating and destroying infringing goods and tools for manufacturing infringing goods or forging registered trademark labels, and imposing fines.
5. Reporting to Public Security Authorities (i.e. Police Department) for Criminal Investigation
In cases involving significant financial impact, serious violations, or uncooperative infringers, administrative measures may not suffice. In such situations, owners may consider reporting the case to the local public security authorities, submitting detailed factual evidence and other supporting materials to request formal case filing and investigation. After public security authorities become involved, they may take compulsory measures such as inspections and raids to uncover broader criminal facts. After criminal proceedings, owners may further file civil lawsuits to claim monetary damages.
6. Filing Civil Lawsuits in People's Courts
Civil litigation remains a fundamental tool for trademark enforcement. Lawsuits may be filed in the court where the infringement occurred or where the defendant has its domicile. When filing a lawsuit, sufficient evidence must be prepared, including proof of trademark validity (registration certificate, etc.), documentation of infringing acts (e.g., physical samples of infringing products, notarized evidence of purchasing infringing products), and evidence of financial losses (e.g., company sales data, profit loss details). The court will conduct a trial based on the evidence presented by both parties and applicable laws. If the court rules in favor of the trademark owner, the infringing party will be held liable for civil remedies, including but not limited to injunctive relief and monetary damages.
7. Seeking Assistance from Local Intellectual Property Protection Centers
As part of China's national IP strategy, many provinces have established IP Protection Centers offering "one-stop" services. In some regions, trademark owners can resolve infringement disputes in a relatively short time through these centers, which offer fast-track examination, fast-track rights confirmation, and fast-track enforcement services. These centers provide a fast and cost-effective alternative for resolving disputes. Trademark owners are recommended to proactively familiarize themselves with procedures and scope of acceptance of their local IP fast-track enforcement channels, submit applications, and leverage these advantages that enable swift action against infringement.
Conclusion
In summary, trademark owners facing infringement have a wide range of enforcement tools at their disposal. The most effective approach depends on the specific circumstances—such as the nature of the infringement, the scale of damage, and the owner's strategic goals. Options include direct negotiation, filing administrative complaints, initiating civil litigation, utilizing fast-track enforcement through IP centers, and filing complaints with e-commerce platform actions. By proactively protecting their trademark rights, owners can preserve their brand's distinctiveness, maintain market competitiveness, and ensure long-term business success in an increasingly challenging commercial environment.
