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Lessons for International Small and Medium-Sized Enterprises from Counterfeiting Civil Litigations in China

Published online by Cambridge University Press:  08 August 2022

Chuanzi Cai*
Affiliation:
Faculty of Law, South China University of Technology, Guangzhou, China
*
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Abstract

This study aims to assess the effect of the 2013 trademark law revision (2013 law revision) on judicial remedies in China. The 2013 law revision increased the remedies Chinese courts can grant to plaintiffs, including small and medium enterprise (SME) plaintiffs, thus leading to higher remedies granted to plaintiffs compared to the past years in prevailing cases. This study finds that right after the law revision, the average amount of judicial remedies granted to plaintiffs increased temporarily. Meanwhile, the detailed judicial reasonings, foreign plaintiffs, and company defendants have stronger positive effects than product types and the year of decisions on the amount of monetary relief. These findings suggest that certain factors in cases may increase the remedies in trademark civil litigation. Therefore, SME plaintiffs should pay attention to core factors for litigation strategies, including preliminary injunctions, choice of defendant, choice of venue, and evidence in remedy collection.

Type
Original Article
Copyright
Copyright © The Author(s), 2022. Published by Cambridge University Press

1. Introduction

China has long been the world's Walmart of counterfeits, and the remedies in counterfeiting civil cases have been criticized as being inadequate to compensate trademark owners. As early as 1995, when the TRIPS Agreement came into effect, members have been required to have a civil relief mechanism to order infringers to pay damages adequate to compensate right holders.Footnote 1 However, both the civil remedies and criminal punishment for infringement of intellectual property (IP) rights in China seem to fail to meet the world's expectations, triggering the WTO dispute China – Intellectual Property Rights in 2007Footnote 2and US–China Economic and Trade Agreement (Phase One Agreement) in 2020.Footnote 3DS 362 claims that China's criminal penalties for trademark counterfeiting and copyright piracy on a commercial scale are far below the thresholds in the TRIPS Agreement.Footnote 4 To implement the Dispute Settle Body's recommendations and rulings, China amended its Copyright Law and revised its customs regulations regarding criminal penalties in 2010. From a different perspective, the Phase One Agreement in 2020 requires China to impose heavier punishments nearer the statutory maximum in civil cases and to increase the overall minimum and maximum damages paid by defendants, imprisonment terms, and criminal fines.Footnote 5 Noticing the rapid development of online markets in China, it also proposes measures to deal with e-commerce counterfeiting, requiring China to establish more effective end expeditious online enforcement to deal with both trademark and copyright infringements.Footnote 6

Under the external pressure and internal improvement of the intellectual property regime, China revised its trademark law (‘2013 law revision’) to increase the statutory damage cap and incorporate secondary liability clauses, signaling the country's determination to combat counterfeiting. The 2013 law revision raised several questions: Do the revisions affect the remedies granted in counterfeiting civil cases? What factors affect judicial decisions and are associated with larger remedies compared to the yearly average and to those granted to plaintiffs in past years in China? What lessons can small and medium enterprises (SMEs) learn from the civil litigation of trademark counterfeiting? In this article, we use 826 civil cases in trademark counterfeiting to study judicial reasonings and to understand the case outcomes and litigation scenarios. Within the literature on remedies in trademark cases, few studies analyze the judicial decisions or changes in remedies after the 2013 law revision. Our article contributes an empirical perspective through the lens of law revision and judicial decisions and finds the factors affecting judicial decisions on trademark counterfeiting in China.

Some of the trademark counterfeiting cases in China are brought by plaintiffs who conduct investigations and find infringers. In other cases, plaintiffs initiate a civil litigation after receiving notice of a criminal decision against counterfeiters, hoping to collect remedies. Civil remedies aim to compensate for the loss suffered by trademark owners. In Chinese courts, civil remedies for trademark counterfeiting cases include injunctive relief and monetary relief (monetary damages). The 2013 law revision raised the statutory damage cap from RMB 500,000 (USD 71,000) to RMB 3,000,000 (USD 428,000). With this revision, one would expect to find evidence of an increase in cases and of more equitable monetary relief, particularly in well-reasoned judicial decisions.

This article addresses 826 civil cases in trademark counterfeiting from 2011 to 2015 and studies the judicial reasoning. We find evidence that counterfeiting cases where a prior decision or detailed judicial reasoning had been made receive higher remedies . For example, comparing the remedies granted after the 2013 law revision with those before revealed an increase in the monetary relief granted immediately after the revision; however, this trend did not last long. Therefore, SMEs should have ‘reasonable’ expectations regarding the revision of Chinese trademark law – udicial remedies may not necessarily have increased since the 2013 law revision, but the factors affecting courts should always be understood.

This article is organized as follows. The following section reviews the existing literature on trademark civil litigation and judicial decisions. The third section describes the study design and methodology. The fourth section presents the findings, and the fifth section elaborates on the main results and implications. The sixth section recommends litigation strategies and concludes the article.

2. Trademark Counterfeiting in Civil Litigations: Theoretical Grounding

2.1 Trademark Claims of SMEs and the Underlying Grounds

Scholars have long studied the rationale underlying trademark claims brought by plaintiffs, which has facilitated the development of common law and statutes. One important concern raised is the distinction between ‘harm’ (caused to plaintiffs) and ‘legitimate interests’ (enjoyed by plaintiffs). Plaintiffs tend to ignore a crucial point, especially in post-sale confusion cases: plaintiffs should prove the injury occurred to the consumer rather than only claim that somebody else profited from the trading (Lemley and McKenna, Reference Lemley and McKenna2010, p. 188). Trademark law aims to prevent consumer confusion and to ask whether consumers are confused by the defendant's use of the mark (Lemley, Reference Lemley2004). The problems with post-sale confusion cases are that consumers could acquire the prestige value by buying fakes or cheap imitations (Lemley and McKenna, Reference Lemley and McKenna2010, p. 152). The plaintiff in a post-sale confusion case thus must show that either it suffers injury from the source confusion or the defendant's use arouses other types of confusion that are material to consumer purchasing decisions (pp. 156–188). Meeting this burden would justify the plaintiff's claim of harm. Otherwise, this situation would be a ‘trademark injury,’ affecting the trademark owner's trademark rights instead of causing harm (p. 188).

Other scholars have paid attention to the confusion imposed on consumers and the infringing activities that affect them in acting on their preferences rather than looking at how defendants misuse the meaning of the plaintiff's mark (McKenna, Reference McKenna2012, p. 132). Tushnet (Reference Tushnet2016, p. 629) argued that in many circumstances if there is no harm to consumers, there should be no harm to trademark owners. Even though the case may involve harm to consumers, such harm is always separate from the injury to trademark owners (Tushnet, Reference Tushnet2016, p. 636). Multinational companies claim significant losses due to counterfeits in developing countries, but such claimsrepresent only a loss of control in how they present their brand, which is not a financial issue (Chow, Reference Chow2010, p. 822). The exaggerated financial loss claims of multinational companies are not justified by scientific evidence or the calculation of damages. These companies are only trying to eliminate the enforcement cost/responsibilities in developing countries that host manufacturing (p. 823).

2.2 Direct Competition, Dilution Claims, and Unfair Competition

Based on the rationale of trademark infringement, the very fundamental question in granting compensation to plaintiffs should be whether there is direct competition. Without direct competition, there should be no economic justification to compensate plaintiffs for lost profits on diverted sales (Corgill, Reference Corgill1996, p. 1922). Specifically, the reputation of a trademark represents the investments and costs incurred to trademark owners. In this sense, trademark infringers avoid these fixed costs and benefit from the sales to consumers (1938–1940). Therefore, before granting remedies to a plaintiff, we need to understand what costs infringers avoid and whether the plaintiff bore such costs. Additionally, Buccafusco and Masur (Reference Buccafusco and Masur2013) focused on the balance between free-riding and free competition. Looking at the ‘form’ and the ‘nature’ of the infringing activities, they asserted that the nature of the infringement should involve ‘direct substitutes’ and ‘exact duplication’ works or products (p. 316).

With the development of trademark theories, scholars have argued that current sanctions appear too harsh for infringements that do not harm consumers or trademark owners. For example, when a consumer knowingly purchases a counterfeit Rolex, there has been no harm to the consumer because there is no injury (Rierson, Reference Rierson2007, p. 435). In other words, whether the trademark owner suffers a loss of sale depends on whether the consumer has been deceived (Bartow, Reference Bartow2011, p. 742). We must pay attention to the nature and degree of deception of consumers in counterfeiting cases. Meanwhile, when defining ‘infringement’, we need to understand whether the defendant's action would affect the plaintiff's market (Fromer and Lemley, Reference Fromer and Lemley2013). However, this theory is criticized because, in many cases, consumers probably pay more attention to the function of the products rather than the brand attached to them (Lee et al., Reference McKenna2009, p. 1099). In this sense, the ‘market criteria’ are easily met, while consumers are not deceived at all. This would lead to an ‘easy infringement’, further reducing the options on the market (Fromer, 2013, p. 1277; Tom et al., Reference Tom, Garibaldi, Zeng and Pilcher1998).

Given their increased communitive function, trademarks are more often used to transmit brand value, images, and consumer associations. Thus, trademark loss may not be limited to direct competition. For example, fake watches may not be direct competitors to Rolex, but Rolex may still be unhappy about counterfeits. The harm to Rolex could be dilution or erosion of its brand reputation.

In 1989, the European Trade Marks Directive (TMD) introduced and allowed for the protection of trademarks with a reputation against harm to distinctives and unfair advantages.Footnote 7 With the theory of dilutive harm, non-confusing uses of a famous registered mark can dilute their selling power, eventually leading to a loss of distinctive character and the demise of the mark (Schechter, Reference Schechter1927, p. 825). Especially within the luxury industry, consumers receive both a tangible product and an intangible added value (Assaf, Reference Assaf2009, p. 643). Anti-dilution protection extends the trademark protection (from anti-confusing uses) to brand communication, advertisement, and investment (Welkowitz, Reference Welkowitz2012; Kur and Senftleben, Reference Kur and Senftleben2017, p. 183).

In contrast to traditional trademark law, which looks to actual economic harm, anti-dilution protection pays attention to the trademark owners’ loss of investment and the impairment of the brand's selling power (Long, Reference Long2006, p. 1034). Though the explanations of dilutive harm have long been accepted in both the US and Europe, scholars have criticized the vaguely constructed wording in regulatory articles and case law. They argued that preserving the uniqueness of a mark indeed ignores the misappropriation rationale underlying the theory (Bone, Reference Bone2007, p. 471; Rierson, Reference Rierson2012, p. 246).

Besides dilution, unfair competition serves as another rationale for trademark protection. At the core of unfair competition is that anyone who uses another's trademark should not be legally permitted to unfairly profit from this use. Supported by unjust enrichment (Barnes, Reference Barnes2010, p. 470) and Lockean labor theory, this rationale aims to prevent the misappropriation or free-riding of someone else's reputation, effort, or time without their consent (Griffiths, Reference Griffiths2007, p. 138). Though such a catch-all approach is criticized for being unconfined for many scholars (Dogan, Reference Dogan2006, p. 103), it represents the extension of trademark theories to incorporate both consumer deception and all the interests worth protection.

2.3 Factors Considered in Judicial Decisions and Remedy Calculations

In civil litigations, only a few factors drive the case outcome, so paying more attention to them seems to be economical (Stigler, Reference Stigler1970; Gigerenzer and Goldstein, Reference Gigerenzer and Goldstein1996; Simon, Reference Simon2004, p. 1603). The decision on damages relies on the facts of the case. In trademark cases, the facts are the type of product involved, the litigating parties, and the power of the mark. This is especially true in counterfeiting cases because almost all product types have counterfeits in a wide range of industries (Wilson et al., Reference Wilson, Brandon and Hollis2016, pp. 259–260).

These perspectives can integrate into a scheme that reflects all available information about counterfeiting. Courts traditionally rely on their understanding of the facts and statutes to decide how much monetary relief to grant. Given the complexity and technological content of intellectual property (IP) cases, many regimes have included experts to answer questions related to fact-finding (e.g., consumer perspectives in trademark cases; Abramson, Reference Abramson2016, pp. 1097–1101).

Regarding damages and other reliefs granted by courts, Shapiro (Reference Shapiro2011) pointed out that punitive damages are ineffective in intentional wrongdoings. Punitive damages have fewer advantages than multiple damages and the drawback of calculation difficulties (Shapiro, 2010, p. 498). Shapiro believes that multiple damages may work better than punitive damages because multiple damages can target those intentional activities, such as trademark counterfeiting, that are truly intentional and worth deterrence but are not reprehensible; while punitive damages target those crimes considered more reprehensible (pp. 460–488).

2.4 Problems in China's Legal Mechanism Regarding Civil Remedies

Over recent decades, the number of enforcement cases in China has increased under external pressures from international society. However, such an increase in cases does not necessarily represent an increase in the quality of adjudications or enforcement (Dimitrov, Reference Dimitrov2009, pp. 9–26). Dimitrov (Reference Dimitrov2009) generated a complete picture of China's overall mechanism of dealing with IP infringement. Though he did not provide detailed empirical analysis or causal inference on why enforcement and adjudications appear to be low and ineffective, Dimitrov showed the systematic problems in local enforcement and the Chinese judiciary. He suggested enforcement improvements, including targeting custom border control and encouraging local administrative detection. Similarly, Brauer (Reference Brauer2012, pp. 277–290) asserted that even though laws are settled on paper, in reality, civil litigation and anti-dilution protection remain weak and unreliable for trademark owners.

Sepetys and Cox (Reference Sepetys and Cox2009) claimed that external pressures on China's IP legal regime primarily come from international treaties and complaints from other countries with many IP products entering the Chinese market. IP legislation usually causes a loss to consumers in the form of higher prices, but this cost is counterbalanced by social innovation and invention. From the perspective of civil remedies in judicial decisions, Sepetys and Cox also found that IP infringement cases in China have a low-unit price in each case and lack records of transactions (by defendants). These two problems result in a low compensation amount and difficulties in determining the illegal gains of infringers (pp. 6–7). The two most startling findings in Sepetys and Cox concerned monetary reliefs in Chinese IP cases: (1) the median award is about USD 15,000, and 90% of cases receive less than USD 100,000, and (2) Chinese plaintiffs receive less than foreign plaintiffs.

In studies of trademark infringement in China, judicial decisions have received less attention than statutory/doctrinal studies because of the country's civil law system. Through their case analysis, Sepetys and Cox (Reference Sepetys and Cox2009) provided detailed examination and calculation before drawing a general conclusion on civil IP protection in China. Though they did not study each type of IP, their work raised the possibility of exploring a civil law regime.

2.5 Empirical Findings in Chinese IP Studies

Scholars in China have explored, through empirical analysis, the civil protections and remedies in IP cases. Their recommendations for legislative reform fall into a few aspects. First, and consistent with scholars elsewhere, they found that the mean remedies granted in trademark infringement cases total around USD 12,000, with almost no changes between 2005 and 2011 (Duan and Xie, Reference Duan and Xie2014, p. 15). This finding was a remarkable progress in the empirical studies of judicial trademark decisions in China. But the conclusions on the decision trends (which remain unchanged) need further discussions: the remedies look unchanged may be due to the non-categorizing nature of the studies. These studies do not categorize the cause of action (e.g., trademark counterfeiting or general infringement, trademark or geographical indication not given) and only look at the overall situation of cases.

Second, and related to judicial calculation of damages, some scholars have pointed out that statutory damages are used too frequently (Duan and Xie, Reference Duan and Xie2014, pp. 21–23). The overuse of statutory damages causes low-quality decisions. Those cases involving more technical elements and foreign litigators are more likely to receive detailed and reasoned decisions (Lan, Reference Lan2012).

Third, some scholars have proposed a new mechanism to deal with cases involving civil litigation and criminal violations (Zhang, Reference Zhang2006; Sun and Dong, Reference Sun and Dong2007). In cases involving civil litigation and criminal violations, the criminal case traditionally takes priority. However, this traditional mechanism may not work for IP cases, and a mechanism in which civil litigation enjoys priority should be considered (Sun and Dong, Reference Sun and Dong2007, p. 591). Unlike torts and other crimes, IP crimes (especially trademark counterfeiting) are defined by the infringement amount. However, if the case fails to reach a monetary threshold, defendants may avoid criminal prosecution and only face a civil suit. Thus, prioritizing civil cases would assist in determining whether infringement exists and the seriousness of the liability or crime. Furthermore, IP rights are, in nature, private rights. Once defendants are found liable and pay the monetary remedies, they do not pose harm to the public or society, which may save judicial resources in avoiding criminal prosecution (596–597).

This section has reviewed the literatu on Chinese judicial practice in IP cases – though not specifically trademark – and spotted problems in the procedures. The review indicates positive trends: the legislation on IP infringement is working toward a better mechanism, and the judiciary has become aware of the drawbacks in the overall regime design.

3. Study Design and Methodology

3.1 Reason for Empirically Studying Counterfeiting Issues in China

Previous studies discuss trademark statutes and the justifications of civil claims. Most studies focus broadly on trademark infringement without distinguishing trademark counterfeiting cases from infringement cases or theoretically look at the civil protection by courts and agencies. Few studies have looked empirically at civil litigation in trademark counterfeiting – even though it is the most serious type of infringement, and there could be criminal liability if the threshold is reached. Meanwhile, IP scholars have asserted that counterfeiting comprises many factors, such as trademark owners/entities, counterfeiters, and products counterfeited. Discussions of these factors within the context of a ‘bigger picture’ have been fragmented throughout the years. A broader scheme that reflects as many factors as possible is needed to show the different aspects of trademark counterfeiting.

The case study is not an innovation in legal research. Plenty of IP scholarship has employed the case study and further generated empirical analysis or policy recommendations. But in trademark counterfeiting, case studies on civil judicial decisions are rare, probably because counterfeiting is often a low priority for prosecution agencies (Wilson et al., Reference Wilson, Brandon and Hollis2016, p. 270). From an international trade and policy perspective, we are interested in whether counterfeiting enforcement in China has improved with the long-lasting external pressure. We also want to know the suggestions regarding the litigations of SMEs. We try to explore the characteristics and trends of trademark counterfeiting litigations from China's perspective, employing a detailed empirical study of government annual reports and case studies.

3.1.1 Data

This study relies on the 2011–2015 annual reports of the Supreme Court of the PRC,Footnote 8 which discloses the number of trademark case-closed rates for each year. Among all trademark civil decisions, counterfeiting cases comprise 27.9% of all trademark cases (26525), with a total of 7,388 (population). The data came from the most widely used legal research database in China: PKULaw.Footnote 9 For the overall dataset, 826 cases were coded, comprising 10.7% of the population.Footnote 10

The data selection and analysis consisted of two stages. In the first stage, 401 cases were randomly selected to conduct a descriptive analysis and generate a ‘big picture’ of civil decisions on trademark counterfeiting in China. In the second stage, 425 cases were added to confirm findings in the first stage and further develop a coding system with which to analyze civil litigation. Table 1 presents the closed trademark civil cases in each year and the dataset coded.

Table 1. Number of cases by year (all data)

Notably, under Chinese civil procedure, the retroactive application of the 2013 law revision depends on when the counterfeiting activities ended and when the civil litigation began. The new law does not retroactively apply to civil cases litigated before it took effect. Similarly, if the counterfeiting activities ended before the new law took effect and the plaintiffs litigated after it entered into force, the new law still did not apply. However, if the counterfeiting activities lasted until 2013, when the new law took effect, then the new law applied. Therefore, this study coded cases according to the year of closing and when the counterfeiting activities occurred. The year coded for each case here indicates that the law had been applied (for further analysis).

3.2 Regression Model Designs, Assumptions, and Coding System

Through ordinary least squares (OLS) regressions, this study tries to explore the association between remedies (outcome variable) and the various characteristics of parties and cases (independent variables). This helps to illustrate what factors drive remedies higher than others. The assumption and model established here is that the amount of monetary remedies is associated with how much plaintiffs claimed, whether the case had a prior decision, if the court provided a calculation of remedies or legal reasoning, whether the court granted an injunction, what type of company the plaintiff and defendant were, the type of product, and if the case was decided after the law revision.

Amount of monetary remedies = Plaintiff claims + Prior decisions + Court's calculations and legal reasoning + Injunction + Plaintiff type + Defendant type + Year of case + Product type + After revision.

Furthermore, this study also aims to find out the relationship between monetary relief and the grant of an injunction after the 2013 law revision. After the law change, did the monetary relief become greater for every grant of injunction than before the law changed? The study sought to compare the monetary relief in three periods: 3 months after the law was revised; 7 months after the law was revised; and all cases in the 28 month period after the law was revised (September 2013–December 2015) – and then compare them with the monetary remedies granted before the law revision. The assumption established for the time effects and coding table with an interaction term are as below:

Monetary remedies = Plaintiff claims + Prior decisions + Court's calculations and legal reasoning + Injunction + Plaintiff type + Defendant type + Year of case + Product type + After revision +  3 months after revision + (3 months after.injunction) +  7 months after revision + (7 months after.injunction) + n. 28 months after revision + o. (28 months after.injunction).

Most importantly, many previous studies on general IP judicial decisions do not differentiate among trademarks, patents, and copyright (Park and Ginarte, Reference Park and Ginarte1997; Sepetys and Cox, Reference Sepetys and Cox2009). Without studying the law applications, these studies only look at the information shown in the decisions. To find out what causes some remedies to be higher than others, this study substantially researched into the judicial reasonings. Below, an elaboration of the factors and reasons for establishing these assumptions are explained (Table 2).

Table 2. Variables for OLS interaction effect of injunction and time on monetary relief

First, this study reviewed every case in detail to see whether the courts provided any reasons for their decisions and, if so, what those were. Scholars have pointed out that a large percentage of the cases in Chinese courts lacked reasoning (Cheung, Reference Cheung2009; Dimitrov, Reference Dimitrov2009). The courts only copied the legal clause in determining the remedy amount without illustration. In rare cases, the courts provided a detailed calculation based on the number of items and retail price. Therefore, the cases were coded into categories according to the extent of the judicial reasoning to test the assumption of whether remedies are associated with courts’ reasoning, and if they were, how.

Next, the powers of litigating parties sometimes impacted judicial decisions because large companies may have better legal resources or be better at document preparation. Thus, the plaintiffs were coded by type, such as foreign companies, state-owned companies, and domestic SMEs (referred to as ‘grassroot’ companies).Footnote 11 Meanwhile, previous studies have found that most counterfeiters are family-style small factories or individuals (Cai, Reference Cai2020). This study paid attention to secondary liability legislation and coded whether the defendant company was a flea market, supermarket, or shopping mall to test the assumption of how party types relate to the remedies granted.

To compare remedies before and after the 2013 law revision, the year the case closed was coded in each case. The new trademark law took effect in August 2013. Thus, the time period 2011–August 2013 was treated as the time before the change, and the cases thereafter were treated as those after the change. Finally, Table 3 summarizes the variables coded and prepared for analysis.

Table 3. Explanation of Coding

4. Findings

Before analyzing the changes in civil remedies granted to plaintiffs in trademark counterfeiting cases, it is necessary to understand the amount of the remedies, the parties involved, and how the courts reach their decisions. Therefore, this section begins by describing the characteristics of parties in civil trademark counterfeiting cases. It then describes the differences in the judicial remedies granted.

4.1 How Much Courts Grant and Who Are the Litigating Parties?

The 2013 law revision increased the statutory damage cap from RMB 500,000 (USD 71,000) to RMB 3,000,000 (USD 428,000). Courts use their discretion to determine whether the plaintiff should prevail, such as the power of the evidence, the arguments of parties, and the justifiability of the defenses. Therefore, after the increase in the statutory damage cap, do courts grant more monetary remedies to plaintiffs? Are there any trends in the remedies for trademark counterfeiting cases? Table 4 provides the monetary remedies by summary statistics.

Table 4. Monetary Remedies by Year (in RMB ¥)

Monetary remedies, in most cases, remained reasonably stable during the 2011–2015 period. The annual mean remained stable at around RMB 42,000 (USD 6,000), with a slight upward trend after 2014. Higher remedies (i.e., max remedy) showed a slight increase in 2014 and 2015. The annual median reached its lowest point in 2013, rebounded in 2014, and then settled with a slight downward trajectory in 2015. Remedies for most of the cases are less than or equal to RMB 56,000 (USD 8,000), looking from the 75% distribution.

Besides examining the overall monetary remedies granted in trademark counterfeiting cases each year, this study also looked at the month-by-month civil remedies to generate a ‘bigger picture’ of the overall protection of trademark rights. It paid special attention to when the 2013 law revision took effect to see whether any changes occurred in civil monetary relief. The results are illustrated in Figure 1.

Figure 1. Monetary relief and injunction, by month

After the 2013 law revision took effect, monthly medians immediately increased for a few months. This change suggests that, first, the overall monetary remedies increased, and, second, more cases appear to have received significantly large monetary remedies. Additionally, the injunction rate in each month remained relatively stable in the 5-year time frame (around or above 80%). After the law revision took effect, the injunction rate did not change dramatically, either right after the revision or in later months. The date the law revision took effect, 30 August 2013, is clearly marked.

This study further looks at the remedies granted to five types of plaintiffs: foreign companies, state-owned companies, domestic public companies or famous private companies (domestic giants), joint ventures (JVs), and general SMEs (grassroot). Table 5 shows the monetary remedies granted to different types of plaintiffs. Large remedies (median and max) were granted to foreign and grassroot companies the most. The medians and means of foreign and grassroot companies are higher than others. The JVs appear to have the lowest mean and median.

Table 5. Monetary remedies granted by plaintiff types (in RMB ¥)

In comparison, do the damages paid by defendants differ across types? Do company defendants pay more damages than other defendants? Do flea market defendants pay more damages than individuals or retail stores? Flea markets may not have a commercial scale as large as a company, but their financial capability should be no less than that of an individual or retail store. Table 6 illustrates the remedies paid by defendant type.

Table 6. Monetary remedies by defendant types (in RMB ¥)

Table 6 shows that company defendants pay large remedies, followed by individuals and shopping malls. Trivial remedies appear most in flea markets (lowest mean and median), followed by individuals and shopping malls. The medians among company defendants are higher than those of shopping malls and flea markets, with company defendants having the highest mean.

4.2 Cases with Larger Remedies

The previous subsection explored the nature of litigating parties to study the differences in remedies across company type. This section explores the monetary remedies and distributions in cases where the courts explain their reasonings in granting a specific remedy amount.

Most courts do not provide explanations of how they decided the remedy amount (82%) as shown in Table 7. When we try to compare the remedies granted in the cases with no reasonings (82%) to those with some reasonings (15%) in Table 7, we notice that both the mean and median of cases with some reasonings (10715, 4286) are twice of the mean and median of those with no reasonings (5315, 1857). For those cases with detailed reasoning on the remedies granted (3%), the mean and median are not significantly larger than those with some explanations. However, the distribution appears to be trending upward, which indicates more large remedies. The 90th percentile cases with detailed reasonings are 1.6 times more than those with some explanation and 3.5 times more than those without any explanation.

Table 7. Decisions with court reasonings

4.3 Factors Associated with Greater Monetary Relief

This study explores in detail the factors associated with higher monetary remedies. It employs a linear regression model to predict the judicial monetary remedies as a function of the characteristics of the cases and litigating parties. The sample studied here consists of 788 cases with monetary remedies. The model posits that the higher monetary remedies (in RMB ¥) may relate to the detail of the judicial reasoning (calculation), whether an injunction is granted, what type of entities are the plaintiff (ptype) and defendant (dtype), and the year the case at issue was decide.

As Table 8 reflects, judicial monetary remedies vary in cases with prior decisions, judicial explanations, different types of litigating parties, and product types. Specifically, cases with a brief judicial explanation of factors considered (calculation-1) are granted RMB 16,000 (USD 2,300) more than cases without any reasoning. Cases with detailed judicial reasoning (calculation-2) lead to RMB 21,000 (USD 3,000) more in monetary relief than those without. In cases where monetary remedies are granted together with an injunction, the monetary remedy shows RMB 14,000 (USD 2,000) higher than cases without an injunction. Foreign plaintiffs (ptype-1) receive RMB 23,000 (USD 3,200) more than JVs, and company defendants (dtype-1) are more likely to pay higher damages (RMB 33,000 or USD 4,700) than individuals. Other types of plaintiffs (i.e., state-owned, grassroot, domestic giants) do not receive significantly higher remedies than JVs. Other types of defendants (i.e., flea markets, shopping malls) do not pay significantly more damages than individuals.

Table 8. Estimated Association between Factors and Monetary Remedies (in ¥)

Note: Ordinary least squares linear regression model on monetary remedies. ‘calculation’ = whether courts provide (a) considerations on some factors but no details or (b) detailed explanation on remedy calculation. Coefficient provided. *p < 0.1; **p < .05; ***p < .01.

Specifically, cases with a brief judicial explanation of factors considered (calculation-1) are granted RMB 16,000 (USD 2,300) more than cases without any reasonings. Cases with detailed judicial reasonings (calculation-2) lead to RMB 21,000 (USD 3,000) more in monetary relief than those without. A grant of injunction is associated with RMB 14,000 (USD 2,000) more in remedies than no injunction. Foreign plaintiffs (ptype-1) receive RMB 23,000 (USD 3,200) more than JVs, and company defendants (dtype-1) are more likely to pay higher damages (RMB 33,000 or USD 4,700) than individuals. Other types of plaintiffs (i.e., state-owned, grassroot, domestic giants) do not receive significantly higher remedies than JVs. Other types of defendants (i.e., flea markets, shopping malls) do not pay significantly more damages than individuals.

4.4 The Monetary Relief Changed After the Law Revision

Now, we look in more detail at whether the monetary relief changed after the law revision took effect in August 2013. As shown in Table 9, this study codes the month in which the case was decided. Table 9 shows that a few months immediately after the law revision took effect, there was an immediate upward trend in both of the monthly median of civil remedies. To see if the increase is significant compared with the months before the revision, Models A2 and A3 consider the three months after the revision to the first highest point of monthly mean – September–November 2013 – as ‘after revision’ cases (3-month span). Models A4 and A5 consider September 2013–March 2014 as after revision cases (7-month span). Finally, all cases from September 2013 to the end of the data period (1.5-year span) are considered in Models A6 and A7.

Table 9. Estimated Association between Interaction on Monetary Remedies

Note: Ordinary least squares linear regression model on monetary remedies. ‘September–November’; ‘September–March’; ‘September–end = cases closed during 2013.09–11; 2013.09–2014.03; 2013.09–2015.12, are treated as after revision respectively.

*p < 0.1; **p < .05; ***p < .01.

As Table 9 reflects, cases decided after the law revision in August 2013 are associated with higher monetary relief than cases before it. Cases decided September–November 2013 received RMB 37,000 (USD 5,200) more than cases prior (model_2–3). Expanding the time frame to March 2014, cases received RMB 22,000 (USD 3,000) higher than cases before the revision (model_4–5). All cases closed from September to the end of 2015, overall cases after the revision received RMB 30,000 (USD 4,000) higher than the previous cases (model_6–7). Furthermore, the months immediately after the law revision took effect – September 2013–November 2013 – have stronger positive effects than other periods.

5. Discussion: What SMEs Can Learn from Trademark Civil Adjudications

5.1 Most Remedies Remain Low, and Injunctions Deserve More Attention

Consistent with previous studies, this study found that civil remedies in trademark counterfeiting cases are low. Specifically, 60–70% of the monetary remedies are USD 3,000 or less, and 20% fall between RMB 22,000 (USD 3,000) and RMB 66,000 (USD 9,000). There are many reasons that courts might be reluctant to grant large remedies (when they should), including the simplicity of the facts, evidence of the involved infringement, and concerns about the financial conditions of the defendants. For instance, most plaintiffs provide simple evidence, such as a screenshot from defendants’ websites or counterfeit merchandise purchased anonymously from defendants’ stores. More than 50% of defendants are individuals or retail stores that run small-scale businesses instead of registered entities, indicating a poor financial capability.

At the same time, changes in remedies do occur in some extreme cases. The medians remain stably low throughout the years (as shown in Table 4), while the means are much larger than the medians. This suggests an effect of some significantly large reliefs dragging the overall annual mean to a higher point but with overall low remedies. Such an increase in remedies may seem plausible and may indicate increasing civil protection. However, referring back to the 2013 law revision to the statutory damage cap – which increased from RMB 500,000 (USD 71,000) to RMB 3,000,000 (USD 428,000) – the slight change in remedies may also indicate a gap between what the legislation expects and what the courts grant.

One very fundamental concern of SMEs in trademark litigation is the difference between them and large companies in using judicial resources. Trademark enforcement in China involves administrative enforcement (by local government), criminal sanctions, and civil litigation (Cai, Reference Cai2018). To initiate administrative enforcement and criminal prosecution, large companies, such as famous foreign brands or JV enterprises, enjoy more advantages in coping with administrative enforcement by local government. Large companies have branches in China (or other countries) for more years than SMEs, attorneys more versed in Chinese law, and more contact with local governments (Cai, Reference Cai2020). Therefore, SMEs litigating trademark cases in China need to have understanding of the legal mechanism and strategies that differ from large companies. SMEs should have reasonable expectations about the 2013 law revision.

Injunctive relief in civil litigation enables plaintiffs to promptly stop infringing activities, which is important for them to prevent greater loss. SME plaintiffs should apply for preliminary injunctions whenever possible when litigating against counterfeiting, given the low remedy of the civil protection in China. Unlike large companies with more resources to collect evidence, SMEs may have difficulties collecting evidence and proving their case, resulting in lower monetary remedies than large foreign companies. From an evidence perspective, injunction thus seems more important to SMEs in sealing the counterfeit products, manufacturing locations, online selling evidence, etc.

5.2 Litigating Parties and Choice of Venues

Civil litigation is closely tied to trademark owners because they collect the monetary remedies into their own pockets. Plaintiffs’ expectations for judicial remedies are not high, as evidenced by the types of defendants sued: most defendants are individuals or off-street stores that will not (cannot) hire experienced attorneys or make well-argued defenses. Furthermore, secondary liability is still in a primitive stage. Flea markets are rarely found liable or rarely pay as often as off-street school supplies stores. If plaintiffs’ expectations do not improve in the long term, the evidence used in civil cases is unlikely to improve as well. Litigators will only have incentives to invest more in the case if they expect to receive greater remedies.

This study finds that company defendants pay more damages compared to individuals or flea markets, and foreign plaintiffs receive greater remedies than other litigators. From a choice of defendant perspective, SMEs may first consider litigating more against company defendants than other defendants.

Regarding foreign plaintiffs and other litigators, we have two interesting findings. First, foreign plaintiffs – both large companies and SMEs – are concerned about de facto discrimination against foreigners in local courts. In testing this question, this study finds that foreign companies receive higher remedies than others (as shown in Table 5). To some extent, foreign-related cases – especially IP cases – receive more attention in Chinese courts. On the one hand, only intermediate courts (appellate courts) in capital cities have jurisdiction over them. On the other hand, IP cases are tried in the IP division of these courts. Thus, compared to domestic counterfeit cases tried in lower courts, foreign-related IP cases have a higher starting point.

Second, more than 90% of foreign plaintiffs are big brands, and they are more confident in claiming dilution and unfair competition. SMEs may not litigate as often as big brands due to the high transaction costs and physical remoteness. However, big brands’ winning rates in counterfeit cases send positive signals for future litigations. For example, except for the high remedies granted in court verdicts, the enforcement by courts of counterfeit cases is also strengthened in recent years. In 2018, the Supreme Court announced that IP enforcement cases received the most priority. Most importantly, at the end of 2020, the Supreme Court published detailed legal explanations clarifying how to enforce IP judgements. The rules include the collection of online evidence, a convenient procedure for foreign litigators, and an evaluation of the financial conditions of defendants. We view this progress of the legal mechanism as a result, in part, of long-term efforts by foreign big brands and an opportunity to uphold trademark rights of SMEs.

From a choice of venue perspective, SMEs are expected to receive higher remedies in large cities (more developed areas) than rural areas. The first basis for this assertion is that large cities, especially the specialized IP courts in the capital cities of China, can handle trademark cases with detailed reasonings and better application of the law. Since 2014, Beijing, Shanghai, Guangzhou, and another 15 capital cities have gradually established specialized IP courts. These courts take less time to close foreign-related IP cases and grant larger remedies. For instance, the average trial time (before the case is closed) is four months in Beijing IP courts.Footnote Footnote Footnote Footnote Footnote 16 The largest remedies granted to foreign litigators have been in the courts of capital cities, including RMB 10.8 million (USD 1.54 million) in a New Balance case in Guangzhou and RMB 15.5 million (USD 2.21 million) in a Spin Master case in Suzhou.Footnote 17

The second basis for this assertion is that foreign-related cases receive more attention in courts of big cities, and the remedies granted in these courts are more predictable. Until 2019, only a few cities had disclosed trademark cases closed with foreign litigators, including Beijing, Shanghai, Guangdong Prov., Zhejiang Prov., Shandong Prov., and Liaoning Prov. Meanwhile, as shown in Table 10 below, a large percentage of litigations by foreign plaintiffs are trademark cases. The winning rates of foreign plaintiffs in these courts are around 80%, and the courts also have disclosed the increase in remedies (though not constantly), specifically in trademark cases. Notably, US plaintiffs are more likely to litigate in Beijing and Shanghai.

Table 10. Wining Rates, P’ Nationalities, and Average Remedies Disclosed

Counterfeiting activities are more often seen in less developed areas where labor and rents are cheaper, further reducing costs. Meanwhile, counterfeiting is believed to enjoy more local protection in these remote areas, and local enforcement departments may have fewer incentives to crack down on factories or flea markets. Thus, it is reasonable to believe that higher remedies increase in large cities where local protectionism is less likely to prevail, and counterfeiting defendants may have stronger financial capabilities (to pay remedies).

5.3 Court Explanations Matter

Cases with judicial reasoning that includes multiple factors are more likely to have higher monetary remedies than those without. In the data here, some courts briefly explain the factors considered in determining the remedies, including the reputation of the trademark involved, the scale of the defendant's business/shop, or concerns related to the willfulness of the defendants. These factors range from social welfare to public health, thereby justifying a higher remedy and showing society (and potential counterfeiters) what such infringement would harm.

The existing trademark law in China has specified a few means courts can use when determining monetary remedies. Courts can refer to the actual loss of plaintiffs, profits of defendants, licensing fees, or statutory damages (if all other three options are not available).Footnote 18 However, cases adopting a specific calculation reference is rare. Therefore, if SME plaintiffs and attorneys can clarify or improve the evidence, as well as proposing calculations when arguing for remedies, it may help courts in their reasoning. This view is consistent with the finding among the prevailing foreign plaintiffs. For example, litigators suing flea markets are all foreign companies or JVs (part of which are foreign). Plaintiffs’ marks are famous with more detailed evidence in proving the strength of the mark. These should facilitate the judicial reasoning and further drive up the relief.

Currently, many SME plaintiffs that initiate civil litigation only provide a screenshot or a product from the defendant without further arguments on the factors of trademark infringement. Here, litigation strategies that may help attain higher monetary remedies include proofs that the defendant's quality is substandard, the possibility of diverting SMEs plaintiffs’ sales (in the same market), the similarities between their store locations or marketing channel, the similarities between their consumer groups, and the similarities between the unit prices.

5.4 Effect of Law Revision on Monetary Relief

The data reveal that after the law revision in August 2013 took effect, there was an immediate increase in judicial monetary relief in the first three to six months. However, such effects did not last. A few more months after the revision, both of the time trends (in months) and regression results show that the changes to monetary remedies in civil cases did not increase steadily over time. The immediate increase of monetary relief may be a reaction (of courts) to the new law without being internalized as a commitment.

Many of the litigators in cases where plaintiffs receive higher monetary relief are foreign plaintiffs. Possible reasons include that the foreign plaintiffs provide more complete evidence and invest in their trademark over time, thereby incentivizing them to protect and exercise the strength of their mark. They take litigation and protection seriously. Meanwhile, all cases involving flea market defendants are litigated by foreign plaintiffs, confirming that foreign plaintiffs focus more on protection. Crushing the whole-sale providers may be more helpful than chasing individual retailers. Furthermore, it is reasonable to believe and expect that once SMEs can develop more domestic brands or trademarks – investing in their brands over time and gaining their trademark strength – enforcement and judicial protection will enter a new era.

Better evidence in civil litigation will help courts in their legal applications and reasoning. The large percentage of statutory damages in Chinese courts signals two things. First, courts have difficulties in calculating the defendants’ profits or plaintiffs’ lost sales (because the parties do not provide such evidence). Second, courts are under pressure to close cases. Under Chinese civil procedure, a general civil case should be closed in six months from the day the case is docketed. Here, it seems difficult to predict whether courts are willing to sift through detailed evidence (if any) in trademark counterfeiting cases and how much weight they would give to a plaintiff with well-prepared evidence. What does appear plausible is the increase in civil remedies when courts take serious consideration of evidence in their legal reasonings. We expect civil courts to work toward such exquisiteness, specifically for SME plaintiffs.

6. Conclusion

This article adopts summary statistics and regression models to analyze the civil cases of trademark counterfeiting using judicial reasonings, litigating party types, grant of injunctions, and time effects. The findings make explicit that neither case factors nor higher remedies are random. Thus, SME plaintiffs should pay close attention to core factors for litigation strategies, including applying for preliminary injunctions in civil cases whenever possible and litigating against company defendants that may have greater ability to pay. It may also be helpful to choose venues in more developed cities to reduce the risk of local protectionism.

Most importantly, simple evidence proofing without further arguments on the factors of trademark infringement will not help SMEs attain higher monetary remedies. SMEs should learn from the litigation strategies of large companies in remedy collection, such as the defendants’ poor quality, diverting of SME plaintiffs’ sales, similarities in the marketing channel, or similarities between their consumer groups. Even though the Chinese government revised the law, signaling to other countries that China has the determination to combat counterfeiting, the courts are not granting remedies in the way the state expected. This study thus aims to explain the characteristics of trademark civil litigation in China and provide recommendations for SME litigation strategies.

Funding

This work was supported by National Central Universities Basic Social Science Research (XYMS202101); Major Project of National Social Science Foundation Project (19VHJ005); and National Social Science Foundation (19BFX141).

Acknowledgements

The author wants to thank Professor Jay Kesan at the University of Illinois-Urbana Champaign, College of Law, for his supervising and advice throughout the research design and progress. The author also wants to express her gratitude to Professor Huijia Xie at the South China University of Technology, Faculty of Law, for his invaluable insight and input.

Footnotes

1 Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), Part III, Section 2, Article 45–46 (2015).

2 China – Measures Affecting the Protection and Enforcement of Intellectual Property Rights – Understanding between China and the United States Regarding Procedures under Articles 21 and 22 of the DSU, WT/DS362/15 (13 April 2010).

3 Economic and Trade Agreement Between the Government of the United States of America and the Government of the People's Republic of China, January 15, 2020. https://ustr.gov/sites/default/files/files/agreements/phase%20one%20agreement/Economic_And_Trade_Agreement_Between_The_United_States_And_China_Text.pdf

4 DS362: China – Measures Affecting the Protection and Enforcement of Intellectual Property Rights, (2007).

5 Economic and Trade Agreement Between the United States of America and the People's Republic of China: Phase One, Chapter 1, Section H, Article 1.27 (2020).

6 Ibid, Section E, Article 1.13.

7 Art. 5(2) of Council Directive (EU) 2008/95 EC.

8 Zhongguo Fayuan Zhishi Chanquan Sifa Baohu Zhuangkuang (中国法院知识产权保护状况) [Judicial Protection of Intellectual Property Rights in Chinese Court] (generated by Supreme Court), 2011–2015. Hereinafter Judicial Protection Reports.

10 This study considered the population size (7,388); margin of error (5%) and confidence level (95%) to decide the needed sample size (needed to get statistically significant results), and it was at least 366.

11 This study relies on the State established database - www.Qixinbao.com, to input the enterprise information. In some but rare cases, enterprises who are no longer exists or have no records in the database, I supplement the information through online searching. www.Qixinbao.com (企信宝)

13 2020 Guangdong IP Protection Annual Report (www.gdcourts.gov.cn/index.php?v=show&cid=226&id=56121).

14 2021 Shanghai IP Protection Development in Foreign-related cases (www.hshfy.sh.cn/css/2021/04/25/20210425171652984.pdf).

15 2020 Zhejiang IP Protection Annual Report (www.zjsfgkw.cn/attach/0/067dc333edbf4bd4ba0a1320166202bb.pdf).

16 Supreme Court Report, ‘4-month Average Trial Period and the Judicial Efficiency in China IP Courts’, www.chinacourt.org/article/detail/2018/04/id/3277895.shtml, 2018. [最高法院:《平均审理周期4个月彰显中国效率》]

17 (2015)粤高法民三终字第44-4号(New Balance v. New Barlun, by Guangzhou court); and (2018)浙01民初610号(Spin Master v. Suzhou Gaoxin Hongtu, by Suzhou court).

18 P.R.C. Trademark Law, art. 60–63, 2013, www.wipo.int/edocs/lexdocs/laws/en/cn/cn195en.pdf.

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Figure 0

Table 1. Number of cases by year (all data)

Figure 1

Table 2. Variables for OLS interaction effect of injunction and time on monetary relief

Figure 2

Table 3. Explanation of Coding

Figure 3

Table 4. Monetary Remedies by Year (in RMB ¥)

Figure 4

Figure 1. Monetary relief and injunction, by month

Figure 5

Table 5. Monetary remedies granted by plaintiff types (in RMB ¥)

Figure 6

Table 6. Monetary remedies by defendant types (in RMB ¥)

Figure 7

Table 7. Decisions with court reasonings

Figure 8

Table 8. Estimated Association between Factors and Monetary Remedies (in ¥)

Figure 9

Table 9. Estimated Association between Interaction on Monetary Remedies

Figure 10

Table 10. Wining Rates, P’ Nationalities, and Average Remedies Disclosed