WORLD TRADE
ORGANIZATIONIP/C/W/374/Add.3
19 May 2003
(03-2660)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Responses from China to questions posed by the European Communities
and their member States, Japan, Korea and Switzerland
Addendum
The present document reproduces the responses to the questions posed by the European
Communities and their member States, Japan, Korea and Switzerland, as circulated in documentsIP/C/W/361/Add.1, IP/C/W/362/Add.2, IP/C/W/380 and IP/C/W/372/Add.1, respectively, which have
been received from the Permanent Mission of the People's Republic of China by means of a
communication dated 14 February 2003.  It was circulated as an advance copy at the TRIPS Council
meeting of 18-19 February 2003.
_______________
EUROPEAN COMMUNITIES AND THEIR MEMBER STATES
A. T
RADEMARKS
1. Well-known marks:  (i) what is the actual status regarding the review of the Interim
Rules on the Determination and Administration of  Well-known Marks?  (ii) Article 5 of the
Implementing Regulations only permits a trademark owner to submit an application for
recognition of a well-known mark when a dispute arises (when he pursues oppositions or
cancellations).  Is there any provision that would permit the trademark owner to apply directly
for well-known status?  (iii) Apparently, there ex ists a list of all the trademarks which were
recognised as well-known in China (your reply to question 9 raised by the United States is not
unequivocal).  If so, may we receive a copy of such a list and please specify how the list was
elaborated (i.e. whether all trademarks enlisted were recognised as such after an application for
recognition was filed).
(i) The Rules on the Determination and Administration of Well-known Marks, issued by the
State Administration for Industry and Commerce in 1996, is an administrative rule and it is underrevision in an attempt to implement the relevant provisions under the Trademark Law and its
Implementing Regulations. (ii) Article 5 and Article 45 of the Implementing Regulations under the
Trademark Law respectively provides that an interested party may apply, in the procedure of
trademark registration, review and adjudication and trademark use, for the determination of his mark
to be protected as a well-known mark.  There is no such provisions as that a trademark owner maydirectly apply for the determination of a well-known mark. (iii) Since China became a member of the
Paris Convention, at the request of the interested  parties, the Trademark Office under the State
Administration for Industry and Commerce has, according to relevant provisions, determined some
well-known marks in succession. But up to now, the Trademark Office under the State Administration
for Industry and Commerce has never published such a list.IP/C/W/374/Add.3
Page 2
2. Transliterations:  Which procedure does the Chinese Trademark Law foresee for the
protection of transliterations of foreign marks into Chinese?  Would a foreign trademark owner
be able to successfully oppose a trademark applic ation filed in Chinese characters of his earlier
trademark written in roman characters?  Would  the owner of a registered mark in roman
characters be successful in opposing the use of his mark in Chinese characters?
In the practice of trademark examination in our Trademark Office, pronunciation is an
element that is taken into consideration when determining whether marks are similar or not.
Therefore, the procedure of examination, opposition, review and adjudication may provide protection
for transliterations of foreign marks into Chinese.  As for the issue whether a foreign trademark owner
be able to successfully oppose a trademark application filed in Chinese characters of his earlier
trademark written in roman characters, the following factors shall be comprehensively taken intoaccount:  whether the earlier trademark in roman characters is registered in China;  whether the mark
in Chinese characters is the formal transliterati on of the mark in roman characters;  whether the
foreign owner of the mark has used the mark in Ch inese characters;  the bad faith of the interested
parties and other specific circumstances of the case etc.  It is very complicated and cases should not be
treated as the same.  Similarly, if an owner of a registered mark in roman characters opposes the useof the mark in Chinese characters, all the above mentioned factors should also be considered and
different cases should not be treated as the same.
B. G
EOGRAPHICAL INDICATIONS
3. In reply to EC question 22, it is mentioned that "at the level of law adopted by the
People 's Congress and the regulations promulgated by the State Council, GIs are protected
mainly under the Trademark Law and the Anti-Unfair Competition Law ".  Please clarify
whether there are other tools that may serve to adequately protect GIs in China (i.e. the so-
called GI Act  - General requirements for products of designations of origin or geographical
indications GB 17924-1999 - of 7 December 1999, in  force since 1 March 2000 and issued by the
State Administration for Quality Inspection, Supervision and Quarantine).
In the present laws and regulations in China, Trademark Law, Anti-unfair Competition Law
and the Implementing Regulations under the Trademark Law provide protection for GIs.  There is no
other law or regulation that provides protection for GIs.
4. In reply to question 14 posed by the United States it is mentioned that "if a GI is
protected under the Trademark Law, the scope of it s protection is limited to the mark that has
been approved for registration and to the goods in  respect of which the use of the trademark has
been approved " and "this kind of protection for GIs is identical with that for registered
trademarks ".  Such a reply seems to confirm that the Trademark Law does not provide in an
enlarged protection for GIs for wines and spir its (such GIs should be protected according to
Article 23.2 TRIPS regardless whether or not they mislead the public).  Please clarify.
Yes, the reply to question 14 posed by the US only goes to prove that the Trademark Law
provides an enlarged protection for GIs for wines and spirits, because Article 52.1 of the Trademark
Law provides:  it is an infringement of the exclusive right to use a registered trademark if anyone uses
a trademark that is identical with or similar to a re gistered trademark in respect of the same or similar
goods without the authorization of the proprietor of the registered trademark. This provision neitherexclude the GIs that are registered as collective marks or certification marks nor put confusion as a
condition.IP/C/W/374/Add.3
Page 3
C. PATENTS
5. The reply to EC question 30 states that for compulsory licences granted for reasons of
"public interest " the requirement of prior negotiations with the patent holder does not apply.
Could you please explain how this fits into the wording of Article 31(b) which stipulates  that
the obligation that efforts must be made to obtain authorisation from the right holder prior tothe granting of a compulsory licence can only be  waived by a Member in the case of a national
emergency or other circumstances of extreme urgency or in cases of public non-commercial use.
What is the basis to interpret Article 31(b) as waiving the obligation to have prior negotiations
with the patent holder also in cases where an authorisation is granted for reasons of "public
interest "?
Although the term used in Article 49 of the Chinese Patent Law is not identical with that in
Article 31(b) of TRIPS Agreement, the meaning of "public interest" used in Article 49 of the ChinesePatent Law is just the same as that of "public non commercial use" in Article 31(b) of the TRIPS
Agreement.
D. U
NDISCLOSED INFORMATION
6. According to Article 35 of the Implementing Regulations of the Drug Administration
Law of 4 August 2002, the undisclosed test and other data submitted in support of applications
for marketing approval of pharmaceutical products which utilises new chemical entities, are
protected, conform Article 39.3 TRIPS, against unfair commercial use (6 years as from the date
of marketing approval, no disclosure and no re liance by the marketing authorisation body for
second applicants).  (i) Please confirm that data exclusivity over 6 years would be available evenin cases where the drug concerned is not patent  protected.  (ii) Please indicate whether the
marketing authority will have an obligation to v erify (i.e inform with the Patent Office), prior to
the granting of an authorisation, whether the drug  concerned is patented or not.  (iv) Finally
please specify whether your legislation "links " the term of data exclusivity protection to, where
appropriate, the term of the underlying patent, i.e. if the drug concerned is also patented, would
the term of data protection be linked to the te rm of the patent in such a way that the data
protection term eventually may be shortened in case the patent expires before the 6 year data
exclusivity term?
The pharmaceuticals that are not patent protected can still enjoy the 6 years' protection of
undisclosed information according to the Implementation Rules of Drug Administrative Law. But this
kind of protection is not exclusive according to our  understanding.  The State Drug Administration is
not obligated to verify with the patent authorities whether the products applied for marketing approvalare patent protected or not.  However, According to Article 11 of the Rules on Administration of Drug
Registration issued by the SDA on December 1, 2002, the applicant are required to provide
information on patent protection of the products applied and commit to undertake liability for any
infringement of third person's patent that may exist so as to ensure that patent disputes will not arise.
The 6 years' protection of undisclosed information will not be affected by the expiration of patentprotection.
E. E
NFORCEMENT
7. In the replies received, China communic ated statistical information regarding
counterfeiting and piracy.  It appears that fo r the year 2001, of the initial copyright claims
(4,416) 66 were transferred to criminal procedure and of the initial counterfeiting cases (22,813)
only 86 were transferred to criminal procedure.  Such figures demonstrate that the prosecution
standards are indeed very tough.  We understand that recommendations have been made by
relevant administrative authorities to the judici al authorities in order to lower the thresholdsIP/C/W/374/Add.3
Page 4
for initiating criminal investigations.  Please specify when and how the State Council 's
Regulation "Provisions on the Transfer of Susceptible Criminal Cases by Administrative Law
Enforcement Bodies " and the Supreme People 's Procurator "Standard for Criminal Prosecution
in Economic Offences " will be modified in order to lower the prosecution standard.
The Supreme People's Procurement and the Ministry of Public Security is studying the
problem of the appropriate level of threshold of initiation of criminal procedure according to the
situation of IPR infringement in China taking into account the recommendation from MOFTEC made
according to China's commitment in accession to WTO.
8. Many different administrative governmental bodies (Customs, SAIC, AQSIQ, AIC) are
in charge of the enforcement of the laws against IP infringement and more precisely
counterfeiting and piracy.  Please briefly indicate which procedure a right holder is to takeshould he desire to undertake action against the infringement of his rights.  How is he to initiate
the action before each of the administrations?  On what grounds precisely can the right holder
ask either one of the named bodies to interven e?  Who will give him a helping hand in the
investigation?  What are the rules to be resp ected for determining which administration has
jurisdiction both administratively and territoria lly?  What legal or administrative actions can
be undertaken by the respective governmental bodies?
The administrative enforcement of IPR is provided in Article 52, 53, 54, 55, 56 of Trademark
Law; Article 50, 51, 52, 53 of Implementing Regulatio ns of Trademark Law; Article 47 of Copyright
Law; Article 36, 37 of Implementing Regulations of Copyright Law; Article 57of Patent Law.  The
administrative authorities will deal with IPR infringement cases according to the authorizationprovided by those provisions.
9. In China 's communication regarding the Transitional Review Mechanism (IP/C/W/382)
it is mentioned that customs authorities around China investigated and dealt with 330 cases
involving infringements by the end of 2001.  Please give details as whether any of these caseslead to criminal prosecutions.  Please indicate wh ether there is an increase of investigations for
the year 2002 so far.
No cases dealt by customs were transferred for criminal prosecution.  Up to 31 October 2002,
China Customs has handled 517 cases involving IPR infringement.
F. B
ORDER MEASURES
10. From the response to question 26 of the United States it appears that the Custom
Regulations of 1995 are under review, please specify whether the modified Regulation would
(i) lower the security that is requested to the applicant when he requests to detain suspected
infringing goods (actual Article 14);  (ii) whether the modified version will explicitly foresee that
both the applicant and the consignee or consigno r will have the right to  inspect the suspected
infringing goods according to Article 57 TRIPS;  (iii) whether "ex-officio actions " would be
instituted even in cases where the rights were not recorded with the General Administration of
Customs, that is to say in flagrant cases of infr ingement, ex. obvious cases of counterfeiting well-
known marks or drugs counterfeiting.
(i) It has not yet been decided whether to lower the amount of security required for an
application of detainment on goods suspected infringing IPR;  (ii) The modified Regulations wouldprovide that the applicant and consignee or consignor  be entitled to inspect the suspected infringing
goods;  (iii) The provisions concerning ex-officio action against the shipment suspected infringing
IPR that have not been recorded with the General Administration of Customs is still under
consideration.IP/C/W/374/Add.3
Page 5
JAPAN
A. COPYRIGHT
Ad response to question 2:
Please explain who decides whether each cases apply to "justifiable extent " stipulated in
Article 22(7) of the Copyright Law in line with the so-called "three-step test ".  Furthermore,
please provide clear interpretation and criteria of "justifiable extent ".
The Courts will decide the application of 'justifiable extent' according to the 'three step text'
on a case by case basis.
Ad response to question 3:
Concerning Article 22(9) of the Copyright Law, if a "free-of-charge live performance of
a published work, where fees are not charged on the public, and nor are payments made to the
performers " is performed for profit (such as a performance at a department store to attract
consumers where fees are not charged from the consumers, and nor are payments made to the
performers), does this article apply to such pe rformance?  (We consider such case exceeds the
scope of the "three-step test ".)
The circumstances of fair use provided in Article 22 are all limited to non-commercial use.
Ad response to question 4:
Concerning Article 39.3 of the Copyright Law, please explain how to declare "that such
exploitation is not permitted ".
Article 39.3 of China's Copyright Law is about an exception of copyright protection, e.g., the
'statutory exception'. According to the second sentence of this provision, a producer of sound
recordings shall not make use of statutory except ion provision in producing sound recordings by using
a music work that has been legally recorded as audio work, if the copyright holder has declared that
such use is not allowed.
Ad response to questions 5 and 6:
Please explain following questions referring to the concrete contents of regulation:
(1) Is there any government authority which is in charge of dispute arbitration
between broadcasting organizations a nd right holders over the payment of
remuneration?  If so, does the State Council play such role?
(2) When will the regulation of the remuneration come into effect?(3) How do broadcasting organizations distribute the remuneration to right
holders?
The State Council will issue Regulations on the royalty criteria for broadcasting and
television organizations. The disputes relating to royalty payment can be resolved through arbitration
according to China's Arbitration Law, or through litigation before the courts. Government authoritieswill not be in charge of such arbitration.IP/C/W/374/Add.3
Page 6
Ad response to question 12:
Please provide the "recommendation " referred in the response 12.  Please explain what
measures have been taken in response to the recommendation.  (How much has the Supreme
People 's Court decreased the amount of damages to which criminal procedure is applicable?)
The Supreme People's Procurement and the Ministry of Public Security is studying the
problem of the appropriate level of threshold of initiation of criminal procedure according to the
situation of IPR infringement in China taking into account the recommendation from MOFTEC made
according to China's commitment in accession to WTO.
B. TRADEMARKS
Ad response to question 11:
(i) In the Trademark Law Implementing Regulations, Article 5.1, it is written that
in determining whether a trademark is well-known, any objection in registering
the trademark or appeal for a retrial is taken into account.  Please explain the
relationship between this Article 5.1 of the Trademark Law Implementing
Regulations and Article 16.2 of the TRIPS Agreement.
(ii) Please explain the time schedule of the specific procedural rules on
determination of the well-known trademarks.
(iii) According to Answer 9 to the United St ates, information on the list of well-
known trademarks and the website mentioned in the question are not accurate,
and the Trademark Office does not have an official website.  Does China plan tomake an accurate reference list of we ll-known trademarks including those of
foreign companies?
(iv) And Japan would like to confirm wh ether the requirements stipulated in
Article 14 of the Trademark Law are limited only to the situation in China or
are applied to the situation in the countries other than China as well.
(i) Article 5.1 of the Implementing Regulations provides that if there is any dispute in
the procedure of trademark registration and trademark review and adjudication, an
interested party may apply for the determination of his mark as a well-known mark.
The second paragraph of the same Article provides the Trademark Office and the
Trademark Review and Adjudication Board determine, according to provisions of
Article 14 of the Trademark Law, whether a mark is well-known or not. Article 14 of
the Trademark Law includes the content of Article 16.2 of TRIPS.
(ii) At present, the State Administration for Industry and Commerce is revising the Rules
on the Determination and Protection of Well-known Marks. It is expected the revision
will be released soon.
(iii) At present, China does not plan to make an accurate reference list of well-known
trademarks. But one point is sure that if China is going to make such a list in the
future, it will include foreigners' or fore ign enterprises' well-known marks determined
in China.
(iv) Chinese law only protects marks that are well-known in China. But this does not
exclude that the interested part may provide other relevant proofs that prove his markIP/C/W/374/Add.3
Page 7
is well-known in countries other than China, e.g. materials concerning the mark once
protected as a well-known mark in countries or regions other than China, for the
reference of the relevant competent authorities when determining whether the mark is
well-known in China or not.
Ad response to question 12:
Please indicate the goods prescribed by Article 6 of Trademark Law and please explain
the relationship between Article 6 and Article 11.2 of Trademark Law (e.g. whether Article 11,
which stipulates the register of trademark having acquired distinctiveness through use, is
applied to the goods prescribed by Article 6).
The goods provided under Article 6 of the Trademark Law currently only refer to tobacco
products provided under the Law of the People's Re public of China on Tobacco Monopoly. Article
11.2 also applies to the goods provided under Article 6.
D. PATENT
Ad response to question 15:
In Japan, the government does not designate agents, nor do Japan believes it to be
international practice.  Please explain whether or  not the fact that in China, foreign applicants
must carry out procedures through an attorney  designated by the Chinese government is in
compliance with Article 3 of the TRIP S Agreement on National Treatment.
We'd like to first clarify here that in our first answer, what we said was that it is a
international practice that foreigners shall appoint a domestic patent agent to file patent application
and not that foreigners shall appoint an agent designated by the government.
It is true that Article 3.1 of TRIPS Agreement has provided for the principle of national
treatment, but it is also provided in the same pa ragraph that this principle is subject to exceptions
under Paris Convention, Berne Convention and Rome Convention. According to Article 2.3 of Paris
Convention, 'The provisions of the laws of each of the countries of the Union relating to judicial
administrative procedure and jurisdiction, and to th e designation of an address for service or the
appointment of an agent, which may be required by the laws on industrial property are expressly
reserved'.  Article 3.2 of TRIPS Agreement also provides explicitly that Members may avail
themselves of the exceptions permitted under paragraph 1 in relation to judicial and administrative
procedures, including the designation of an address for service or the appointment of an agent withinthe jurisdiction of the Member.  From those provisions, we can see that the Article 19.1 of China's
Patent Law is in full compliance with the national treatment principle provided by Article 3.1 of
TRIPS Agreement.  In order to provide good service for foreign clients, a competent agent needs to
have technical background as well as legal knowledge, and needs to be excellent in foreign languages.
At the beginning of the establishment of China's patent system, very few patent agents can meet theabove requirements.  To guarantee the quality of service provided by patent agents to foreign clients
and to protect the interests thereof, the first Patent Law of China of 1984 provided that foreigners
shall appoint designated patents agencies in filing application in China.  And this kind of provision
was necessary at that time. Along with the deve lopment of China's patent practice, the number of
designated agencies has increased to 60 from 3 at beginning.  The Chinese government will furtherenlarge the list of designated agencies at appropriate time.IP/C/W/374/Add.3
Page 8
Ad response to question 16:
Japan 's question concerns the actual average length of period for obtaining rights, not
time limits.  Please provide some statistical or other information, if any, that explains the length
of period for the grant of patent right in China is reasonable.
According to a research made by SIPO on the 26876 applications filed by Japanese nationals,
the average time needed for examination is 36.8 months and such period will be further shortened due
to efforts made by SIPO including recruiting 700 new examiners.  Compare the statistics of SIPO with
that of other patent offices, for example 24.7 mont hs in the USPTO, 27.7 months in the JIPO and 46.1
months in the EPO in 2001, we can see that the average time needed for examination in China is
reasonable.
E. UNDISCLOSED INFORMATION
Ad response to question 22:
Please confirm that the definition of undisclosed information (trade secrets) of
Article 39.2 of TRIPS and the definitions of Article 10 of the Anti-unfair Competition Law can
be regarded the same.  In addition, Japan woul d appreciate statistical or other information
about the violation of undisclosed information protection.
The definition of undisclosed information of Article 39.2 of TRIPS and the definition of
Article 10 of China's Anti-unfair Competition Law can be regarded as the same.
F. ENFORCEMENT
Ad response to question 24:
Please provide information on who bears the cost for confiscation and disposal
(including storage) of trademark infringing goods undertaken by enforcement agencies
including the Customs.
The cost for confiscation and disposal of trademark infringing goods undertaken by the
administrative authorities for industry and commerce shall borne by the State (government).
Ad response to question 25:
Please provide information on the recommenda tion to judicial authorities regarding the
threshold (under paragraph 304 of China 's TRIPS Commitment (WT/L/432)) and the progress
of this recommendation, in detail.
Please refer to answer to question 5 above.
Ad response to question 28(ii):
Regarding Article 56 of the Trademark Law and Article 48 of the Copyright Law,
please explain why China sets a limit for compensation (500,000 yuan in RMB) and how this
amount can be justified under Articles 41.1 and 45 of the TRIPS Agreement.
In order to understand Article 56.2, we should put it together with Article 56.1, which
provides: the amount of damages for infringement of the exclusive right to use a registered trademark
shall be the profit that the infringer has earned  through the infringement during the period of theIP/C/W/374/Add.3
Page 9
infringement or the losses that the infringee has suffered through the infringement during the period of
the infringement, including any reasonable expenses th e infringee has incurred in its effort to stop the
infringement. Usually, the exclusive trademark right owner may get sufficient protection under this
Article. But sometimes the amount of the profit that  the infringer has earned through the infringement
or the losses that the infringee has suffered through the infringement can not be determined. As aresult, in order to adequately and effectively protec t the legal interests of the trademark registrant, the
second paragraph of the same Article provides that under this circumstance, the people's court shall
decide an amount of damages not more than 500,00 0 RMB, depending on the circumstances of the
infringing acts. This provision is in full compliance with the requirement of Article 41.1 of TRIPS.
Ad response to question 30(i):
Please explain in detail China 's activities against local protection and its developments.
The Chinese governments agencies at all levels understand the role of intellectual property
right protection in promoting economy development and has exploded the local protectionism.
Regional cooperation on cracking down counterfeiting has been launched.  Trademark enforcement
cooperation network has been established in the Pan Huaihai Economic Development Zone, theregion of Three Provinces and One Municipality in Eastern China, as well as the Three Provinces in
North-East China.  These networks have been helpful for government enforcement inter-regional
cooperation and coordination.
H. O
THERS
Ad response to question 58:
If the Technology Import/Export Control Regulation is related to discrimination
between foreign licensors and Chinese licensor s on the Enforcement of IPRs, Japan considers
that this regulation is not consistent with Article 3.1 of the TRIPS Agreement.  Please confirm
whether the restriction on a foreigner 's licensor under this Regulation , including the restriction
under Article 24 and that of a domestic licensor under the Civil Law is the same.
First of all, we'd like to emphasize is that Technology Import/Export Control Regulations are
relating to liabilities of the parties of a technology import/export contract, which are not covered by
Article 3.1 of TRIPS Agreement. So China does not  have any obligations under TRIPS Agreement
with that regard.  Secondly, Article 24.3 of those Regulations is to the effect that, Where a licensee
used a technology licensed by a licensor according to the provisions of a technology import contract
between the two parties and where a legitimate interest of a third party was infringed as a result of useof that technology by the licensee, the licensor is to be held responsible.  This kind of provision is
consistent with that of Article 353 of China's C ontract Law, so there's no discrimination against
foreign licensor in the Technology Import/Export Administration Regulations.  (Questions from 16-18
are based on the responses from China dated 19 September 2002 in document IP/C/W/374/Add.2).
B. E
NFORCEMENT
Ad response to question 13:
The National Copyright Administration requires the person who allege his/her right is
infringed to produce evidence to establish locati on of factories producing pirated goods and the
amount of damage in order to apply administrative penalty prescribed in Article 47.  (Unlesssuch evidence is produced, National Copyrigh t Administration will never apply administrative
penalty).  Please explain the reason imposing such heavy burden on right holders is consistent
with Article 41(2) of the TRIPS Agreement stipulating "procedures concerning the enforcementIP/C/W/374/Add.3
Page 10
of intellectual property rights shall not be unnecessarily complicated or costly ".  (Such burden
on right holders seems to be too heavy that they must establish location of the factories and the
amount of damage in order that National Copy right Administration order the infringing act to
be ceased, confiscate unlawful income, confiscate or destroy the infringing copies, and impose a
fine, even though Article 11.4 of the Copyright Law is taken into account.)
As in most other countries in the world, copyright is mainly protected through judicial means
in China. Apart from this, copyright can also be protected through administrative way, which is rarely
seen in other countries. This shows that China's protection of copyright has exceed the minimum
requirement of TRIPS Agreement. "The party who claims shall bear the burden of proof" is a basic
principle of judicial procedure, which is also the case in administrative enforcement. So the party who
alleges that his copyright is infringed shall provide information about the infringer.
Ad response to question 14:
Japan 's original question is to make clear "why" Article 217 of the Criminal Law is
consistent with Article 61 of the TRIPS Agreement.  Supreme people's Court's notification of
17 December 1998 limits the scope of infringement  extremely.  Due to this notification, even
though intentional copyright pira cy on a commercial scale occurs, it is almost impossible to
apply criminal penalties.  Please explain the reason "why" such situations are consistent with
Article 61 of the TRIPS Agreement stipulating "Members shall provide for criminal procedures
and penalties to be applied at least in cases of copyright piracy on a commercial scale "?
In 1998, the Supreme People's Court issued an Interpretation on Several Questions in
Application of Law in Criminal Cases Involving Illegal Publications, which clarified the standard for
sentencing and punishment of crime for infringement of copyright provided in Article 217 of China's
Criminal Law.  According to the Interpretation, it wi ll constitute criminal infringement of copyright if
the unlawful earning surpasses 50 thousand RMB in  case of individuals or 200 thousand RMB in case
of units.  The Interpretation also provided that it will also constitute criminal infringement of
copyright if the following circumstance exist, practicing actions infringing copyrights listed in Article
217 of China's Criminal Law within two years of being punished administratively or civilly for reason
of copyright infringement; or the unlawful turnover surpasses 200 thousand RMB in case of
individuals and 1 million RMB in case of units; or other serious results exist.  The above provisions
interpreting the standards for sentencing and punishment enabled the judicial authorities to apply the
provisions of Article 217 of China's Criminal Law in cases involving copyright piracy of commercial
scale.  Therefore, instead of 'limit the scope of infringement extremely', the Interpretation issued by
the Supreme People's Court explicitly clarified the st andard for sentencing and punishment.  And the
China's Criminal Law and its Interpretation issued by the Supreme People's Court are fully in
compliance with the requirements of Article 61 of TRIPS Agreement.
As far as criminal procedure is concerned, according to China's Criminal Procedure Law and
the Interpretation on Several Questions of Implementation of Criminal Procedure Law issued by the
Supreme People's Court, cases for criminal infringeme nt of IPR can be filed before the court by the
right holder whose rights were infringed through private prosecution as well as by public prosecution
by the people's procuratorate.  The people's courts should entertain the lawsuits filed by right holders
as far as the relevant legal requirements are satisfied.  Therefore, the requirements of Article 61 ofTRIPS Agreement are fully complied with in China.
Ad response to question 15:
Concerning Article 47 of the Copyright Law, what kind of acts are considered to be the
subject of the administrative or criminal penalty?  Please explain relevant articles of the
Criminal Law and their judicial interpretation  as well as a couple of instances thereof.IP/C/W/374/Add.3
Page 11
It has been made clear in Article 47 of China's Copyright Law that the eight kinds of actions
provided in that Article are subject to civil liabilities and those injure public interests at the same time
may also be administratively punished. And when the circumstances provided in Article 217of
China's Criminal Law exist and the standard for sentencing and punishment issued by the Supreme
People's Court further clarifying the provisions of Criminal Law are met, the acts will be subject tocriminal punishment.
KOREA
1
1. Article 10 of the Trademark Law stipulates that foreign geographical names that are
well-known to the public shall not be used as trademarks but may be used exclusively as
certification marks. Does this indicate that geographical names registered as certification markshave distinctiveness? Also, do certification ma rks give the kind of protection to geographical
indications as stipulated in Article 22.1 of the TRIPS Agreement?
The provisions in Article 10 doesn't necessarily mean that geographical names registered as
certification marks have distinctiveness.  The purpose of this article is to allow geographical
indications to be registered as certification marks.  Based on the provisions in Article 16, ageographical name in the sense of geographical indications is usually inseparable to a particular goods
in respect of which it is used. In this sense, there is no doubt that the geographical indication has
distinctiveness. In addition to the specific provisio ns in the Trademark Law, in China, the Anti-unfair
Competition law and some other laws can also be used for the protection of geographical indications.
China's protection for geographical indications through these provisions meets the requirement inArticle 22.1 of the TRIPS Agreement.
2. How does the Chinese Trademark Law implement Article 23.2 of the TRIPS
Agreement?
Articles 3, 28 and 41 provide the kind of protection stipulated in Article 23.2 of the TRIPS
Agreement.
3. Concerning Article 13 of the Trademark Law, how do the terms "liable to create
confusion " and "misleading the public " differ from each other? How is this provision
implemented in practice?
In Article 13, the term "liable to create confusion" refers to the situation, in which a trademark
application is filed for registration in identical or similar goods or services and the mark is a
reproduction, an imitation or a translation of another party's well-known mark which is not registered
in China. Under this situation, it will cause consumers to misunderstand the supplier or deliverer of
the goods or service.  Whereas the term "mislead ing the public" refers to the situation, in which A
trademark is applied for registration in non-identical or dissimilar goods and it is a reproduction, animitation or a translation of a well-known mark which is registered in China.  Under this situation, it
may not necessarily cause consumers to misunderstand the supplier or deliverer of the goods or
service.  But it may mislead consumers into thinking that there is a particular relationship between the
specific supplier or deliverer of the particular good or service and the owner of the well-known mark.
In practice, we implement the provisions on the basis of these standards.
4. With regard to the conditions for the rec ognition of well-known marks stipulated in
Article 14 of the Trademark Law, is it required that trademarks be known both to consumers
and in the relevant sectors? Or would it be sufficient for a trademark to be known only in the
relevant sectors?
                                                     
1 Responses to questions posed by Korea have also been circulated in document IP/C/W/374/Add.2.IP/C/W/374/Add.3
Page 12
Whether a trademark can be considered as well known shall be decided on a case by case
bases, so it can not be said generally if it be sufficient for a trademark to be known only in the
relevant sectors.
5. Article 44 of the Trademark Law stipulates that a trademark 's registration will be
cancelled if the trademark is not used for 3 consecutive years. Does China recognize any
circumstance that may arise independently of the will of the trademark owner, that may
constitute an obstacle to the use of the tr ademark? Could such circumstances provide valid
reasons for non-use, as stipulated in Article 19 of the TRIPS Agreement? And under what
situations would the use of a trademark by anot her person be considered by China as meeting
the requirements of the use of the trademark for the purpose of maintaining the registration?
Yes, we recognize there are circumstances that may arise independently of the will of the
trademark owner that may constitute an obstacle to the use of the trademark. Such circumstances
provide valid reasons for non-use as stipulated in Article 19 of the TRIPS Agreement. Any use of a
trademark by the registrant or a licensee for the purpose of distinguishing his goods or service from
others', in the manner prescribed in Article 3 of the Implementing Regulations under the Trademark
Law, is considered in China as meeting the requirements of the use of the trademark for the purposeof maintaining the registration.
17. Please explain in detail the contents of the 'Regulations of the People 's Supreme Court
regarding the Evidence in Civil Procedure ' promulgated on 1 April 2002.
The Regulations of the People's Supreme Court regarding the Evidence is a binding judicial
interpretation that will be applied by the people's courts of each level. The main points of the
Regulations include:
(i) A party shall provide evidence regarding the facts upon which the claims raised by that party
rely and will bear the negative consequence for failing to do so.  If a party can not collectevidence by itself due to objective reasons, it can  apply to the court for investigating and
collecting such evidence.  If the burden of proof can not be decided due to lack of specific
provisions in laws or regulations, the people's courts can decide burden of proof according to
principle of fair and good faith taking into account of the ability of the parties to provide
evidence.
(ii) The parties need not provide evidence for th e following facts, (a) facts known by general
public; (b) the order of natural; (c) facts that can be reasoned from legal provisions or facts
already known; (d) facts that have been found true by effective decisions of people's courts;
(e) facts that have been found true by effective arbitration decisions; (f) facts that have been
evidenced by effective notary documents.  The facts stated in (a) (c) (d) (e) (f) above can be
objected by evidence to the contrary provided by relevant party.
(iii) If an evidence provided by a party originat ed outside the territory of People's Republic of
China, such evidence shall be notarized by co mpetent institutions of the originating country
and certified by  embassy or consulate of People's Republic of China to that country, or be
certified through procedures agreed in relevant treaties between the People's Republic ofChina and the originating country.
(iv) The people's courts shall specify the time limit for providing evidence at the time the notice of
acceptance of case or notice of response is served.  The time limit for providing evidence can
also be decided by agreement between the parties subject to certification of the people's court.The parties shall abide by the time limit and will be deemed as waive the right of providing
evidence when failing to do so.  The evidence provided after the expiration of the time limitIP/C/W/374/Add.3
Page 13
will not be debated before the court unless agreed by the opposite party.  The people's court
will not accept the evidence provided after the expiration of the time limit unless it is new
evidence.  The application by the parties to the people's court for investigation and collection
of evidence and preservation matters shall be filed 7 days before the expiration of the time
limit.
(v) With application of the parties, the people's court can arrange the parties to exchange
evidence before hearing.  For the complex and difficult cases, the people's court should
arrange the parties to exchange evidence after the expiration of the time limit for response and
before the hearing.  The time for exchange of evidence can be agreed by the parties subject to
certification of the people's court or be designated by the people's court.  The time limit for
providing evidence is expired on the day of exchanging of evidence.
(vi) All the evidence shall be showed on before the court and be debated by the parties. The
evidence that have not been debated by the parties shall not be accepted as the foundation for
facts finding.  The evidence that are acknowledged during the course of exchange of evidence
and recorded in the files can be the foundation of facts finding after illustration by the judgein hearing.  The evidence in which national secrete, business secrete or individual privacy are
involved and the evidence that shall be kept confidential according to law or regulations shall
not be publicly debated before the court.
(vii) The parties can apply to the court for one or two experts with specific knowledge to appear
before the court to illustrate on specific problems.  The judge and parties can inquire the
experts and the experts of the two side of parties can debate after agreed by the court.
(viii) The judges shall examine the evidence objectively and decide the capacity of the evidence,
and shall publish the results and reasoning thereof.
(ix) The acknowledgement made by the parties regarding the facts of the case involved in the
compromise made by the parties for the purpose of reaching settlement agreement in the
course of litigation, shall not be accepted as evidence negative to the party making such
acknowledgement.
18. Is it possible to seek injunction under Article 44 of the TRIPS Agreement against a
person responsible for IPR infringeme nt case, even if that person is able to prove that he or she
did not have knowledge of the relevant infringement?
Yes, the right holder can get the injunction even if the infringer do not have the knowledge of
infringement.
19. Please clarify whether, by way of investigating and collecting evidence, the People 's
Court has the authority to order the infringer to inform the right holder of the identity of third
persons involved in the production and distribution of the infringing goods or services and of
their channel of distribution.
According to Article 13 and 15 of the Regulations of the People's Supreme Court regarding
the Evidence in Civil Procedure, the people's cour t can collect evidence by its own initiative. The
people's court can also order the relevant party to provide evidence when national, social or a third
party's interests are involved, but the evidence so provided are not information needed to be provided
to the right holder. The right holder can get the in formation provided during the course of debating of
such evidence before the court.IP/C/W/374/Add.3
Page 14
20. What is the approximate rate of the provisional measure filings that are affirmed by the
People 's Courts?
There is no statistics for such rate. The application by the parties for ordering provisional
measures will be approved if the requirement of the relevant laws and regulations are satisfied.
21. Has Paragraph 2, Article 53 of the TRIPS Agreement been accommodated in the
domestic regulations?
Yes. Article 19 of the Regulations of the Cu stoms Protection of Intellectual Property Rights
of the People's Republic of China provides that the consignee or consignor of goods may apply, with
depositing a security in 2 times the value of the goods, for release of their goods by the Customs, if
they regard their goods as legal and have delivered objections to the Customs detention. Since ChinaCustoms are empowered to examine the objections mentioned above and reject any ungrounded
application for such release, any counterfeit or pirated goods may not benefit from such arrangement.
22. Please describe in detail, the types of IPR infringement cases and possible criminal
punishment as stipulated in the relevant law.
Please refer to answers to question 2 of the Enforcement part of Japan's question.
23. According to paragraph 15 of China 's "Checklist of Issues on Enforcement", it is stated
that the Customs authorities suspend the release of counterfeit trademark or pirated copyright
goods and right holders can apply to the Customs for suspension of any export and import of
goods infringing trademark and copyright infringeme nt, who is eligible on behalf of the right
holders to lodge an application for the suspension of release ?
The right holders, excluding those stationed outside Mainland China, can lodge the
application to China Customs for the suspension of release. For those stationed outside Mainland
China, they need to entrust representatives stationed in Mainland China to lodge the application ontheir behalf.  The entrust representatives can be natural as well as legal person.
24. According to paragraph 16(5) of China 's "Checklist of Issues on Enforcement",
regarding the indemnification of the importer and the goods owner, it is stated that 'where the
court or other competent administrative authorities find no infringement, Customs shall, at the
requirements of the court or the competent authority, submit the security deposited by the right
holder to the court to compensate for the losses of the relevant party arising from the improper
application. ' In such cases, what is the coverage of  compensation payment for damages resulting
from the deposited security and wrongful detention or detention of goods in accordance with
Article 55 of the TRIPS Agreement?
The compensation of payment varies from case to case according to the judgement of the
court. It commonly covers the cost of storage of the goods detained by the Customs, the damages ofthe goods during Customs detention due to their nature, the compensation payment arises from
delayed consignment of goods.IP/C/W/374/Add.3
Page 15
SWITZERLAND
A. PATENTS
Ad response to question 1:
You mention that according to your law, plant varieties shall be excluded from patent
protection.  Please explain how your legislation pr ovides for protection of plant varieties.  Is it
by a sui generis  protection as referred to in Article 27.3(b) of the TRIPS Agreement?  If so,
please describe that sui generis  protection more in detail.
Please explain the scope of the exclusion of "substances obtained by means of nuclear
transformation " in your law from patentability and how this exclusion complies with Article 27
of the TRIPS Agreement?
As mentioned in the answer to question posed by Australia, plant varieties are protected by
"Regulations on Protection of New Plant Varieties" came into force on October 1, 1997, which is a sui
generis  protection referred to in Article 27.3(b) of TRIPS Agreement. For detailed information, please
refer to the Regulations notified to TRIPS Council.
It is provided in China's Patent Examination Guidance that 'substances obtained by means of
nuclear transformation primarily refer to various radioisotopes manufactured and produced by
accelerator, reactor or other nuclear reaction apparatus.  The patent right may not be granted for suchisotope.  However, the applications of the said isotope and the device or equipment used for
producing such isotope are qualified for patent protection.'
According to Article 27.2 of TRIPS Agreement, Members may exclude from patentability
inventions, the prevention within their territory of the commercial exploitation of which is necessaryto protect ordre public  or morality, including protecting human, animal or health or to avoid serious
prejudice to the environment. It is our understanding that the provision of China's Patent Law
excluding substances obtained by means of nuclear transformation from patent protection is to protect
ordre public or morality and to protect human, animal or plant life or health or to avoid  serious
prejudice to the environment. Therefore, it conforms to Article 27.2 of TRIPS Agreement.
Ad response to question 3:
When describing China 's compliance with Article 31(l) of the TRIPS Agreement, no
reference is made to the non-assignability of th e compulsory licence granted to the owner of the
second patent (as provided for in Article 31(l)(iii) of the TRIPS Agreement).  Please explain
whether your law is in compliance with that  obligation and cite the relevant provision of
Chinese law.
Article 53 of Chinese Patent Law states that ' Any entity or individual that is granted a
compulsory license for exploitation shall not have an exclusive right to exploit and shall not have the
right to authorize exploitation by any others'.  It is indicated in this provision that any entity orindividual that is granted a compulsory license, including the entity or individual that is granted a
compulsory license for exploitation of the second patent, shall not assign the said compulsory license.
Therefore, this provision is in full compliance with Article 31(d) and (e), as well as 31 (l) (iii) of
TRIPS Agreement. We think the misunderstanding maybe caused by the fact that we only referred to
Article 31(d) and (e) and did not refer to Article 31 (l) (iii) of TRIPS Agreement in the first answer toyour question .IP/C/W/374/Add.3
Page 16
C. ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS
Ad response to question 7:
According to Article 46 of the TRIPS Agreement the judicial authorities of Members
"shall have the authority to order that goods that  they have found to be infringing be, without
compensation of any sort, disposed of outside the channels of commerce in such a manner as to
avoid any harm caused to the right holder, or, unless this would be contrary to existing
constitutional requirements, destroyed.  The judi cial authorities shall also have the authority to
order that materials and implements the predomin ant use of which has been in the creation of
the infringing goods be, without compensation of any sort, disposed of outside the channels of
commerce in such a manner as to minimi se the risks of further infringements ".  Please describe
the implementation of these remedies into Chin ese law and cite the relevant provisions of law.
The legal remedies stipulated in Article 46 of the TRIPS Agreement can be implemented by a
series of statues enacted by the Chinese Government, which include The General Principle of Civil
Law of The People's Republic of China, intellectual property legislations and other relevant
provisions contained in the administrative regulations.  These legislations meet the requirements ofArticle 46 of TRIPS in every respect. Conc erning provisions are quoted as follows:
(i) Article 134 paragraph 3 of The General Principles of Civil Law of The People's
Republic of China (adopted at the Forth Session of the Sixth National People's
Congress on 12 April 1986) states:
When hearing civil cases, a People's Court, in addition to applying the
above stipulations, may serve admonitions, order the offender to sign a
pledge of repentance and confiscate the property used in carrying out
illegal activities and the illegal income obtained therefrom.  It may alsoimpose fines and detentions as stipulated by law.
(ii) Article 47 of The Copyright Law of The People's Republic of China (adopted at the
Fifteenth Session of the Standing Committee of the Seventh National People's
Congress on 7 September 1990, and revised at the Twenty-forth Session of the
Standing Committee of the Ninth National People's Congress on 27 October 2001)
states:
Anyone who commits any of the follow ing acts of infringement shall bear
civil liability for such remedies as ceasing the infringing act, eliminating
the effects of the act, making an apology or paying damages, depending
on the circumstances and may, in addition, be subjected by a copyrightadministration department to such administrative penalties as ceasing the
infringing act, confiscating unlaw ful income from the act, confiscating
and destroying infringing reproductions and imposing a fine; where the
circumstances are serious, the copyright administration department may
also confiscate the materials, tool s, and equipment mainly used for
making the infringing reproductions; and if the act constitutes a crime,
the infringer shall be prosecuted for his criminal liability:
(1) Reproducing, distributing, performing, showing, broadcasting, compiling or
communicating to the public on an information network a work created byanother person, without the permission of the copyright owner, unless
otherwise provided in this Law;IP/C/W/374/Add.3
Page 17
(2) Publishing a book where the exclusive rights of publication belongs to another
person;
(3) Reproducing and distributing a sound recording or video recording of a
performance, or communicating to the public his performance on aninformation network without the permissi on of the performer, unless otherwise
provided in the Law;
(4) Reproducing and distributing or communicating to the public on an information
network a sound recording or video recording produced by another person,
without the permission of the producer, unless otherwise provided in the Law;
(5) Broadcasting and reproducing a radio or television program produced by a
radio station or television station without the permission of the radio station or
television station, unless otherwise provided in this Law;
(6) Intentionally circumventing or destroying the technological measures taken by
a right holder for protecting the copyright or copyright-related rights in his
work, sound recording or video recording, without the permission of the
copyright owner, or the owner of the c opyright-related rights, unless otherwise
provided in law or in administrative regulations;
(7) Intentionally deleting or altering the electronic right management information
of a work, sound recording or video recording, without the permission of the
copyright owner or the owner of a copy right-related right, unless otherwise
provided in law or in administrative regulations;
or
(8) Producing or selling a work where the signature of another is counterfeited.
(iii) Article 24 paragraph 1 of The Regulations on the Protection of Computer Software of
the People's Republic of China states:
Except for the situations described in The Copyright Law of The People's
Republic of China, the Regulations and other law or administrative
regulations, without the permission of the software copyright holder,
anyone who commits any of the following acts of infringement shall bear
civil liability for such remedies as ceasing the infringing act, eliminating
the effects of the act, making an apology or paying damages, depending
on the circumstances and may, in addition, be subjected by a copyright
administration department to such administrative penalties as ceasing the
infringing act, confiscating unlaw ful income from the act, confiscating
and destroying infringing reproductions and imposing a fine; where thecircumstances are serious, the copyright administration department may
also confiscate the materials, tool s, and equipment mainly used for
making the infringing reproductions; and if the act constitutes a crime,
the infringer shall be prosecuted for his criminal liability:
(1) Reproducing software, in whole or in part;
(2) Distributing, renting or communicating to the public on an information network
the software of the copyright holder;IP/C/W/374/Add.3
Page 18
(3) Intentionally circumventing or destroying the technological measures taken by
the copyright holder for protecting the copyright in his software;
(4) Intentionally deleting or altering the electronic right management information
of software;
(5) Transferring or permitting others to use the software copyright of the right
holder.
(iv) Article 55 of The Trademark Law of The People's Republic of China (adopted at the
Twenty-Forth Session of the Standing Committee of the Fifth National People'sCongress on 23 August 1982; first amended according to the Decision on the
Revision of the Trademark Law of the Peop le's Republic of China adopted at the
Thirtieth Session of the Standing Committee of the Seventh National People's
Congress on 22 February 1993; last amended according to the Decision on the
Revision of the Trademark Law of the Peop le's Republic of China adopted at the
Twenty-Forth Session of the Standing Committee of the Ninth National People's
Congress on 27 October 2001) states:
According to the acquired evidence or report of a suspicious
infringement, in the course of investigating or taking actions on theactivities which suspiciously infringe the exclusive right to use a
registered trademark of another person, the administrative authority for
industry and commerce at county level or above may exert the following
authorities:
(4) Inspecting any material related to  the infringing activities; sealing
up or seizing any material which is evidenced to infringe the
exclusive right to use a registered trademark of another person.
(v) Article 31 of The Regulations on the Protection of layout-Designs of Integrated
Circuits of the People's Republic of China (adopted at the 36th Executive Meeting of
the State Council on 28 March 2001) states:
Where a dispute arises as a result of the exploitation of a layout-design
without the authorization of the holder of the right of layout-design, that
is, the infringement of the exclusive right of layout-design, it shall be
settled through consultation by the parties concerned. Where the partiesare not willing to consult with each other or where the consultation fails,
the holder of the right of layout-design or any interested party may bring
a law suit before the people's court, or request the intellectual property
administration department of the State Council to handle the matter.
When the intellectual property administration department of the StateCouncil handling the matter considers that the infringement is
established, it may order the infringer to stop the infringing act
immediately, and confiscate or destroy the infringing products or articles.
(vi) Article 40 of The Regulations on the Protection of the New Varieties of Plants of the
People's Republic of China (promulgated by the State Council on 20 March 1997)
states:IP/C/W/374/Add.3
Page 19
Where any new plant variety is counterfeited, the administrative
departments of agriculture and forestry of the People's Governments at
county level or above shall order the party concerned to stop the
counterfeiting act, confiscate the unlawful earnings and the propagating
material of the plant variety, and punish him with a fine at least one butnot exceeding five times more than the unlawful earnings; where the
circumstances of the case are so serious as to constitute a crime, the party
concerned shall be subjected to criminal liability investigation in
accordance with the law.
In order to ensure that the People's Court could implement the aforementioned provisions
correctly when hearing intellectual property civil cases, the Supreme People's Court of China hasmade special provisions in its relevant judicial explanation of the law. For example, Article 21
paragraph 1 of the Supreme People's Court's Explanations on Certain Questions Concerning
Implementation of the Law When Hearing Trademark Civil Cases (adopted by the Judicial Committee
of the Supreme People's Court on 12 October 2001) states:
In the course of hearing disputed cases on registered trademark infringement the People
Court, according to Article 134 of The General Principles of Civil Law, Article 53 of The Trademark
Law and the facts of the cases, may rule that the infr inger shall bear civil liability for such remedies as
ceasing the infringing act, removing the encumbrance, eliminating the hazards, paying damages and
eliminating the effects of the act. It may also issue civil sanction decisions to impose a fine, confiscatethe infringing materials, the counterfeit trademar k signs and materials, implements and equipments
mainly used for making the infringing goods. The amount of a fine can be decided in the light of the
relevant provisions in The Regulations on the Implementation of the Trademark Law of the People's
Republic of China.
Article 29 paragraph 1 of the Supreme People' s Court's Explanations on Certain Questions
Concerning Implementation of the Law When Hearin g Copyright Civil Cases (adopted by the Judicial
Committee of the Supreme People's Court on 12 October 2001) states:
In relation to the infringing acts stipulated in Article 47 of The Copyright Law, on the request
of the parties concerned, apart from civil liability, the People's Court may also impose civil sanctions
on the infringer according to Article 134 paragraph 1 of The General Principle of Civil Law. Theamount of a fine may be decided in the light of relevant provisions in The Regulations on the
Implementation of the Copyright Law of The People Republic of China.
In sum, in the course of hearing intellectual property cases, the People Courts in China are
empowered to order the infringing goods, the materi als, implements and equipments mainly used for
the creation of the infringing goods be disposed of outside the channels of commerce. Consequently,
the legal remedies stipulated in Article 46 of the TRIPS Agreement can be implemented by the
Chinese national legislation.
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