China: Notarial protection of trademark rights

In recent years, as China’s economy and technology have continued to develop, there has been an increasing demand for a trade and technology-related IPR protection system. The IPR protection system both maintains the exclusivity of the creator and stimulates the creative spirit of both competing parties at a high starting point. As a special kind of attestation activity carried out by the state-specialized judicial attestation institution in accordance with legal procedures, notarization plays an important role in all aspects of intellectual property protection, and has a special social function of preventing disputes and resolving conflicts in civil activities and economic interactions. 

Article 2 of the Notary Law of the People’s Republic of China promulgated and implemented in 2005: Notarization means an act performed by a notarial institution, upon the application of a party concerned, such as certifying the authenticity and legality of a legal act, a document or a fact of legal significance according to the statutory procedures. 

Article 11(1): Upon request of a natural person, legal person or any other organization, the notarial office shall perform notarial acts for the following matters: (1) Contract; …… (9) Preservation of evidence; ……and (11) Other matters that a natural person, legal person or any other organization voluntarily requests for notarization. 

Article 36: The notarized civil legal act, fact and document of legal significance shall be considered as the basis for determining a fact except that there is contrary evidence which is enough to reverse the notarization. 

The above-mentioned articles regulate notary activities at the legal level, define the scope of business of notarial institutions, and provide legal protection for notary institutions and notaries to perform their duties in accordance with the law. 

The role of notarization in the confirmation of trademark rights 

In order to promote the reasonable use and normal trade of trademark rights, trademarks can be transferred during the application process and after obtaining registration. Article 31(1) of Trademark Law of the People’s Republic of China: Where a registered trademark is assigned, the assignor and the assignee shall file an application for assignment of the registered trademark with the Trademark Office. The assignor and the assignee shall jointly undergo the application procedure for such assignment. If the application is approved, the Trademark Office shall issue a corresponding certificate to the assignee, and publish it. Article 17(2) of the Regulation on the Implementation of the Trademark Law of the People’s Republic of China: Where an applicant transfers its application for trademark registration, it shall undergo the transfer procedure with the Trademark Office. 

Although the laws do not explicitly require that the assignment of trademark application rights and registered trademarks should be notarized, in practice, when the assignee is a foreign company or individual, they usually ask the assignor to conduct a notarization for a declaration after signing the assignment agreement, which, on the one hand, further confirms the true intention of the assignor to transfer the trademark to avoid backtracking; on the other hand, it is prepared for checking when the Chinese Trademark Office issues a notice of correction due to the inconsistency between the assignor’s signature and the one on the trademark application during the assignment procedure. 

The above process also applies to the transfer of a trademark after it has been purchased by negotiation. 

The role of the notary public in trademark infringement litigation 

A notary public mainly provides services to preserve evidence in trademark infringement litigation cases. There are two main categories: A 

Category A 

To provide evidence to confirm the infringement of the other party. In the process of litigation, evidence is an important basis for the court to make trial conclusions, so how to properly preserve evidence has become one of the most focused issues in litigation cases, and preservation of evidence through notarization is also the most credible evidence collection measures at present. 

The notarization of preservation evidence has the following outstanding features:  

1. Relevance of interest. The parties must be natural persons, legal persons or other organizations that have an interest in the matter being preserved.  

2. Neutrality. Neutrality is the basic attribute of a notary, who must maintain a neutral position when preserving evidence, uphold the principle of objectivity and impartiality, and exclude subjective factors in the process of recognition.  

3. Procedural. The Notary Law of the People’s Republic of China, the Rules of Notary Procedure, the Guidance of the China Notary Association on Handling Notarization of Preservation, and the Supreme Court’s Several Provisions on Evidence in Civil Litigation and Several Provisions on Evidence in Administrative Litigation all make strict provisions on the procedural nature of notarization of preservation evidence to ensure the procedural legality of notarization of preservation. 

Evidence preservation notarization is mainly applied in trademark infringement litigation: on-site purchase of infringing goods, TV and telephone purchases, online purchases, notarization of infringing web pages; notarization of telephone recordings; notarization of electronic data such as cell phone SMS, WeChat, QQ, email, Weibo, etc. records; a postal service records of IPR infringement warning letters, etc. 

With the increasing number of online shoppers, the online purchase of infringing goods and on-site receipt is one of the main forms of evidence preservation class notarization in recent years. In addition to using the notarized purchase of infringing goods as evidence to determine the fact of infringement and to ensure the authenticity and validity of evidence preservation, it can also establish a one-to-one correspondence between the infringer and the infringing goods through infringing goods, purchase invoices, and photos taken on location to accurately determine the relevant information of the defendant in the litigation case and provide a guarantee for the smooth opening of the litigation process. 

Case: A watch company, Company A, learned that Company B was selling products with Company A’s registered trademark through WeChat and also selling the same trademark-infringing watches in its offline stores. Company A wanted to stop Company B’s infringement through litigation and demanded B to compensate for damages. To this end, Company A’s agent filed an application for notarization of evidence preservation with a notary public. Considering that Company B’s infringement occurred both online and offline, and that there was a correlation between online and offline evidence, Company A decided to notarize the electronic evidence on the WeChat platform together with the offline physical sales stores selling the infringing products. Subsequently, under the supervision of a notary, Company A notarized the evidence preservation of the product promotion texts and pictures conducted by Company B on WeChat as well as WeChat chat records using the network of notary public and equipment at the notary public office. At the same time, the details and the photo albums of the WeChat, etc. were also notarized in order to prove the relevance of the extracted electronic pictures to Company B. Then, the notary and the agent of Company A went to the physical store of Company B to notarize the purchase of the infringing products, and the notary supervised the whole process on site. The notary also took photos of the physical store’s door number, signboard and business license, and made detailed records of the time, place, name and quantity of infringing products purchased to ensure the authenticity of the purchase. 

The above notarization of evidence preservation plays a key evidential role in the subsequent litigation process. Notarization of evidence preservation for purchasing infringing goods may also encounter some problems. For example, if the notary identifies himself in the process of notarization, it is impossible for the infringer to sell the infringing goods and obtain evidence of infringement; and if he does not identify himself, the defendant in the proceedings will often claim that such notarization has no legal effect. The specific procedures and requirements for preservation of evidence are not clearly stipulated in the Notary Law and other laws, regulations and rules concerning notaries, etc. Therefore, the controversy over this way of obtaining evidence used to exist all the time. 

In 2002, the Supreme People’s Court issued the Interpretation on Several Issues Concerning the Application of Law in the Trial of Civil Disputes on Copyright, which stipulates in Article 8 that where any party concerned purchases infringing reproductions by ordering or on-the-spot dealing by himself or authorizing any other person, the physical objects and invoices, etc., obtained thereby may be adopted as evidence. The notaries issued by any notary public, without disclosing his own identity to the party that is suspicious of infringement, concerning the evidences obtained by the party concerned in the ways as mentioned in the preceding paragraph or concerning the process of obtaining the evidences shall be adopted as evidences unless there are evidences that can prove the opposite. This is the first time that the feasibility of this type of deposition has been affirmed in the form of a judicial interpretation. 

Category B 

To provide evidence to confirm its non-infringement. Although China is a country that applies the first-to-file principle for trademarks, according to Article 59(3) of the Trademark Law of the People’s Republic of China, if another person has already used the same or similar trademark with certain influence on the same goods or similar goods before the trademark registrant applies for trademark registration, the registered trademark owner has no right to prohibit the user from continuing to use the trademark within the original scope of use. The holder of the exclusive right to use the registered trademark has no right to prohibit the user from continuing to use the trademark within the original scope of use, but may require it to attach appropriate distinguishing marks. 

In practice, if the prior user of a trademark can keep evidence of its use in the form of notarization at the beginning of use, it will greatly reduce the burden of proof when disputes arise in the future. 

In addition, in order to accommodate the massive generation of data message evidence in the electronic information era, data message preservation measures similar to notarization have also emerged in recent years. According to Article 11(2) of Provisions of the Supreme People’s Court on Several Issues Concerning the Trial of Cases by Internet Courts: the parties submit electronic data, through electronic signatures, trusted time stamps, hash value verification, block chain and other evidence collection, fixed and anti-tampering technical means or through the electronic forensic deposition platform authentication, can prove its authenticity, the Internet Court shall confirm. For example: Trusted timestamp is an electronic credential issued by the Trusted Timestamp Service Center that can prove that the data message (electronic document) is already existed, complete and verifiable at a point of time, mainly used for electronic document tamper-proofing and determining the exact time of electronic document generation or existence. The advantages of Trusted Timestamp are the low cost and the availability of 24/7 service. However, it also has obvious disadvantages: the use of timestamps for infringement evidence collection requires a high level of professionalism of the operator, and the steps involved in evidence collection are complicated, and any mishandling of the steps will result in the evidence collected being suspect and inadmissible in court, thereby increasing the risk of litigation. Moreover, the evidence fixed by timestamp cannot form objective and brief expression like a notary certificate, so when the evidence is submitted to the court, the parties need to explain the evidence carefully, and the court also needs to upload the submitted documents to “timestamp verification” for examination, which is not conducive to the improvement of trial efficiency. 

Summary 

To sum up, the most important notary procedure involving trademark rights is evidence preservation notarization, which can preserve important evidence; prevent evidence from being tampered with, damaged or lost; and ensure the authenticity of the evidence. With the notarization of evidence preservation conducted by a notary public, the authenticity and integrity of the evidence is legally recognized, which improves the credibility and authority of the evidence. Evidence preservation notarization is an effective legal means that can provide legal protection for the parties involved in the lawsuit and fully protect their legitimate rights and interests.