Evidence checklist for trade mark disputes in China

Written by Mr. Jian Xu, IP Expert and collaborator of the China IP SME Helpdesk

 

There is a saying among Chinese lawyers and judges that “Litigation is all about evidence”. This clearly shows the crucial importance of evidence collection in a Chinese legal battle. The saying is perhaps more true for trade mark disputes than other types of litigation, because the majority of trade mark opposition and revocation in China are in the form of written proceedings rather than oral hearings.

Consequently, it is essential to guide the claimant to uncover and collect as much relevant evidence as possible in a trade mark dispute. The following evidence checklist can facilitate the evidence collection process.

Evidence Checklist

(1) Do you have any trade documents in relation to your trade mark?

Supply/purchase contracts

Invoices

Bills of lading

Bank documents

Import/export certificates

Others of the above nature

(2) Do you have any information on the sales situation of the trade mark goods/services?

Geographic area covered by sales

Sales network listing individual shops

Sales distribution channel

Modes of sales

Others of the above nature

(3) Do you have any financial statistics in relation to your trade mark goods/services?

Sales revenue

Profit

Tax paid

Sales quantity

Turnover

Industry rankings

Advertisement spending

Others of the above nature

(4) Do you have any marketing or promotion material in relation to the trade mark?

Broadcast,

Movie

TV

Newspaper

Magazine

Internet

Outdoor advertisement

Media reports

Others of the above nature

(5) Have your trade mark goods/services been exhibited?

Trade fair

Expo

Others of the above nature

(6) Do you know when your trade mark was firstly created?

(7) Can you explain in detail the originality of your trade mark?

(8) Do you know when your trade mark was first used in the market?

(9) Do you have any information relating to the use of your trade mark on a yearly basis?

(10) Do you have all the registration details of your trade mark in China and abroad?

(11) Has your trade mark ever been recognised as a well-known trade mark by Chinese authorities?

(12) Have you had any disputes in relation to your trade mark?

(13) Has your trade mark been infringed/counterfeited before?

(14) Have you won any awards in relation to your trade mark?

(15) Do you have any information about the other party which might be useful to your case? The following are a few examples.

(16) Do you have trade relations with the other party?

(17) Have you ever collaborated with the other party in any way?

(18) Do you trade in identical or similar geographic areas with the other party?

(19) Do you have identical or similar distribution channels with the other party in relation to your trade mark goods/services?

(20) Have you had any disputes with the other party before?

(21) Does the other party have any contact or communication with your staff or employees?

(22) Has the other party conducted any misleading marketing/promotion taking unfair advantage of the reputation of your trade mark?

(23) Has the other party threatened or forced you to have trade relations with it?

(24) Has the other party asked for unreasonably high trade mark assignment fees or license fees from you?

(25) Has the other party threatened to sue you for trade mark infringement and asked for unreasonably high compensation or settlement fees?

 

This article was originally published on Dr Jian Xu's Linkedin profile.

Dr Jian Xu is the managing director of Gowling WLG’s Beijing office, and heads up the firm’s Chinese intellectual property practice. He is a dual qualified Chinese lawyer and patent and trademark attorney practising since 2006. He is the author of the book “Chinese Intellectual Property – A Practitioner’s Guide“, published by China IP Publishing House in 2013.