EOPINIONS UPON CERTAIN PROBLEMS CONCERNING
THE PROTECTION FOR SERVICE MARKS

Issued on March 30, 1999 by the State Administration for Industry and Commerce
The Administrations for Industry and Commerce of Provinces, Municipalities directly under the Central Government and Separately Arranged Municipalities:

To effectively enforce the Trademark Law and feasibly protect the exclusive rights to use service marks, it is hereby to clarify the following opinions upon certain problems concerning the protection of service marks:

1. A service mark refers to the mark used by provider of service for the purpose of distinguishing service he provides from that of another person.
Service mark is composed of word, device or their combination.

2. The provisions in the Trademark Law and the Implementing Regulations under the Trademark Law concerning the acts to infringe the trademark rights shall be applied to service marks; the principles for deciding the similarity of goods and the trademarks shall be applied to services and service marks.

3. A similar service refers to the service that is interrelated in the aspects of purposes, modes and subject matters, or has specific connections.
A similar service mark refers to the service mark that will easily lead consumers to confuse about the origins of the service, when compared with registered ones in the respect of the words' pronunciation, appearance and meaning, the devices' composition and color or the combination's integral appearances.

4. If there is any specific relation between an act of service and the goods used for providing the service, the service will be deemed as similar to such goods.

5. The following acts constitute the infringement of service mark rights:
(1) to use without authorizations a service mark that is identical with or similar to the service mark of another person, in respect of the same or similar service;
(2) to use, as the name of service without authorization, any word that is identical with or similar to the service mark of another person, in respect of the same or similar service, which is so sufficient as to mislead the public;
(3) to counterfeit or to make without authorization the representations of a service mark of another person, or to sell such representations of a service mark as were counterfeited or made without authorization; The above mainly refers to the act to counterfeit and make without authorization, the goods bearing representations of a service mark of another person and being used in the same industry, or sell such goods as counterfeited and made without authorization (like the dinner wares used in the catering services);
(4) to use without authorization a service mark that is identical with or similar to the service mark of another person, taking advantage of advertising, media or other measures to influence the consumers act, which is so sufficient as to mislead the public;
(5) to intentionally provide the infringers, in order to carry out the infringing acts, such as of place, utility, assistant device, servants and introduction of clients (consumers), or as of storing, transporting, posting and concealing the infringing goods with the representations of the service mark;

6. The acts infringing the exclusive rights to use a registered trademark, which are not specified in Item 1 to Item 4 of Article 38 of the Trademark Law and in Article 41 of the Implementing Regulations under the Trademark Law, constituting the infringement of trademark rights as referred to in Article 38 (4) of the Trademark Law;

The damages to the exclusive service mark right of another person includes the possibility of damages.

7. The use of a service mark in the following situations will be deemed as the use of a service mark:
(1) Place of service;
(2) Signboard of service;
(3) Utility of service;
(4) Goods of service such as business card, postcard and gift, which bears a service mark;
(5) Commercial trade documents such as accounting books, invoices and contracts, which bear a service mark;
(6) Advertisement and other utility of propaganda;
(7) Other goods used for providing the service.

The use of generic mark in the service industry, and the use, in normal modes, of business (trade) name, personal name, geographical name and name of service place, the presentation of service specialties and the description of service contents shall not constitute the infringement of exclusive service mark rights, except of those having outstanding intention of unfair competition.

8. The infringement of the well-known service mark of another person and the acts to infringe the service mark of another person more than two times shall be deemed so serious as to be imposed more severe punishment.

9. The illegal business income by infringement of service mark mainly refers to that obtained by the infringer in the period of infringement. Generally, the income earned by using without authorization the service mark identical or similar to that of another person to provide services shall be the illegal business income.

Where only advertisement without commencing services is carried out, the illegal incomes shall be calculated on the basis of the advertisement expenditures; if there are

only bills for providing services without the relevant evidence of having provided service discovered, the illegal income shall be calculated according to the amount in the bills.

10. The evidences for calculating the illegal business income include:
(1) Contract;
(2) Account book;
(3) Invoice;
(4) Advertisement;
(5) Other evidences.

(by Copyrights 1998-2003 Liu Lee & Associates)