WORLD TRADE  
ORGANIZATION  IP/C/W/538 
16 October 2009 
 
 (09-5114) 
Council for Trade-Related Aspects 
of Intellectual Property Rights Original:   English 
 
 
 
TRANSITIONAL REVIEW MECHANISM OF CHINA 
 
Communication from the United States  
 
 
 By means of a communication from the delegation of the United States, dated 9 October 2009, the Secretariat has received th e following contribution in the context of the 
transitional review mechanism under Secti on 18 of China's Protocol on Accession. 
 
 
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I. TRADEMARKS AND GEOGRAPHICAL INDICATIONS 
1. In past transitional reviews before this Counc il, the United States has submitted a number of 
questions regarding the status of the 2005-2006  List of Leading Export Brands Nurtured and 
Developed by the Ministry of Commerce measure .  The United States appreciates the responses 
previously provided by China on this topic.  Howeve r, China has not yet provided responses to certain 
questions relating to "famous bra nds," "famous trademarks," and "e xport brands," and what level of 
protection is afforded these brands in th e area of intellectual property rights.   
(a) Please explain whether foreign enterprises and/or users of "foreign" trademarks or 
brands are eligible to become "famous trademarks," "export brands" and "famous 
brands."  Please also describe the special protections afforded owners of these 
distinctions.   
 
(b) Please identify all provincial and local me asures relating to "famous trademarks," 
"export brands" and "famous br ands" and the special protections afforded owners of 
these distinctions.  
 2. Previously, China has indicated  that it has established its own geographical indication (GI) 
protection system based upon its national conditions  and is working to constantly improve the 
system’s effectiveness.  The United States appreciat es China’s stated willingness to share experiences 
and actively cooperate with Member s regarding GI protection systems.  To that end, could China 
please describe its GI protection system as it curren tly operates and outline the measures it has taken 
to improve its effectiveness?   
3. In connection with last year’s transitional re view before this Council, the United States 
submitted several questions regarding China’s GI system, but China did not answer them.  Please 
provide responses to the following questions  at this year’s transitional review: 
 (a) In the event that there is a conflict be tween a GI registered with the AQSIQ and one 
registered  to another party with  the CTMO, is there a system in place at the AQSIQ IP/C/W/538 
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  for the owner of the trademark, certification mark or collective mark registered at the 
CTMO to oppose or seek cancellation of th e GI at the AQSIQ?  With regard to 
priority rights, has the Chinese legislat ure or any judicial authority provided 
interpretations for conflicts involving GIs protected under the Trademark Law  and 
GIs registered with the AQSIQ? 
 
 (b) In February 2008, the Measures for the Administration of Geographical Indications 
of Agricultural Products  went into effect.  What are the differences between this 
registration system and the registration systems at the AQSIQ and CTMO?  How would conflicts between registrations of GIs with the Ministry of Agriculture be 
resolved with registrations at the AQSIQ or CTMO? 
  (c)  With regard to the Measures for the Administration of Geographical Indications of 
Agricultural Products , Article 12 notes that there is an opportunity for an entity to 
object to the approval of the GI.  What are the possible grounds for objection? 
 
 (d)  Article 13 of the Measures for the Administration of Geographical Indications of 
Agricultural Products  indicates that the registration certificate shall be valid 
permanently. Can a third party seek cancellati on of the GI on priority grounds once it 
is registered?  Are there any maintenance or renewal requirements for registered GIs?  
 
 (e)   Is there a published database for GIs at  the Ministry of Agriculture, such as the one 
that exists for trademarks? 
  (f)   Please explain whether the Ministry of Agriculture will provide national treatment for 
foreign GIs. Article 24 of the Measures for the Administration of Geographical 
Indications of Agricultural Products  indicates that specific measures for registration 
of GIs of agricultural products from foreign countries shall be worked out in another 
initiative.  Is this initiative in place and is it publicly available? 
 4. Article 16 of the Trademark Law states that if a trademark contains a geographic mark for 
goods that do not come from that region, and the trademark misleads the pub lic, the trademark shall 
not be registered or used.  However, the Article st ates that trademarks that have been registered in 
good faith shall continue to be valid.  It is not clear how this provision operates in practice.  Can 
China please clarify whether the prior rights of a trademark owner are grounds for refusing protection during examination, opposition and cancellation of a later in time and confusingly similar 
geographical indication?  Presumably, if the trademar k has priority rights in China that pre-date the 
GI, the trademark owner should be given its full set of rights under Article 16.1 of the Trademark law, 
without requiring the mark to coexist with the later in time GI. 
II. UNDISCLOSED INFORMATION 
5. Please confirm whether the State Food and Drug Administration is providing pharmaceutical 
companies with six years of data protection pursuant to China’s Drug Registration Regulation .  If that 
is the case, please provide information as to how many foreign and how many domestic companies 
have received data protection.  
III. ENFORCEMENT 
6. The United States has posed several questions to China regarding enforcement issues in 
connection with past transitional reviews before th is Council.  However, some of those questions 
remain unanswered.  To gain a better understandi ng of China’s enforcement regime, the United States 
would appreciate China’s responses to the following qu estions during this year’s  transitional review.   IP/C/W/538 
 Page 3 
 
 
  7. With regard to case initiation standards for crim inal IP investigations, are there uniform 
guidelines/procedures applicable to Public Security  Bureaus (PSB) throughout the whole country?  If 
so, please identify them. 
8. We understand that in certain jurisdictions th e PSB and the Procuratorates have adopted case 
initiation standards that allow for certain latitude in investigating potential crimes, such as by 
investigating on suspicion or on the basis of statisti cal sampling.  One such example we are aware of 
is the Jiangsu province.  Is China considering making these pilot programmes more comprehensive?  If so, please explain. 
9. Has there been any further discussion of clarif ying the role of private investigators in 
obtaining evidence to be used in ci vil court proceedings?  We note that  there has been a trial effort in 
Shenzhen to compel exchange of evidentiary material in intellectual property cases and we are 
interested in learning about further efforts in that area.  
10. Are there any legislative proposals under discussi on that would enhance the power of Chinese 
judges to enforce judicial orders? 
11. The United States appreciates that China has provi ded a summary of enforcement priorities in 
China’s 2008 Action Strategy on IPR protection.  Could China provide further information on specific 
enforcement initiatives that are under way or under development regarding:  (a) counterfeit products 
that pose health and safety threats, such as fake pharmaceuticals, agricultural chemicals, electronics, 
etc.;  (b) piracy and counterfeiting on the Intern et;  (c) commercial production and sale of optical 
disks containing pirated movies and music;  and (d) acts of unfair competition involving the intentional registration of infringing company names and the misuse of such registrations in China? 
12. We note that US customs data shows that Chin a is by far the largest source of counterfeit and 
pirated goods seized at US borders.  In that respect , the United States is pleased to have reached a 
bilateral customs agreement with Ch ina to enhance cooperation in this area.  Could China identify any 
new efforts that it is undertaking to reduce the out bound flow of counterfeit and pirated goods across 
China’s borders? 
IV. COPYRIGHT 
13. The United States posed several questions to Ch ina regarding copyright issues in connection 
with last year’s transitional review before this Council.  However, all of those questions remain 
unanswered.  The United States asks that China provide responses to those questions, which are 
reproduced below, at this year’s transitional review 
14. Have there been any court decisions, judicial in terpretations, judicial notices or guidance, law 
enforcement guidance, State Council regulations, ad ministrative rules, including local legislative 
enactments or regulations, or other legal documents interpreting Article 4 of the Copyright Law , 
adopted by the National People’s Congress on 7 September 1990, and amended according to the 
Decision on the Revision of the Copyright Law , adopted by the National People’s Congress on 
27 October 2001?  If so, please identify them, and i ndicate whether China has made translations of 
them available to WTO Members in accordance wi th China’s commitment in paragraph 334 of the 
Working Party Report accompanying China’s Protocol of Accession. 
15. With regard to copyright piracy on the In ternet, please provide a detailed description of: 
 (a) the legal steps necessary to expeditiously  take down infringing content and/or links 
after receiving proper notice from recogni zed right holders' representatives;  
 IP/C/W/538 
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   (b) the types of remedies available against Internet Service Providers (ISPs) who do not 
engage in immediate takedowns under the In ternet Regulations and whether any such 
remedies have been imposed to date agai nst ISPs who have fa iled to engage in 
immediate takedowns; 
 
 (c) the types of remedies available to su spend or terminate the accounts of repeat 
infringers and the consequences of recidivism;  and  
  (d) the legal steps necessary for right holders or their representatives to obtain 
information about direct infringers. 
 
16. Please provide examples of cases where copyright pi racy on the Internet has been addressed 
using the above-referenced legal procedures, includi ng specific efforts taken to protect foreign right 
holders and the results of those efforts. 
17. The Regulations for the Protection of the Right of Communication through Information 
Network  appear to limit implementation of Article 8 of the WIPO Copyright Treaty (WCT) to the 
interactive "right of making available" which results in a lack of clarity as to whether other forms of 
transmission in an online environment such as real -time and P2P streaming, are covered within an 
exclusive right under China's law as required by Arti cle 8 of the WCT, as noted above.  Please clarify 
whether these other forms of transmission are inte nded to be covered with in these regulations and 
whether the regulations will be amended to clarif y that other forms of transmission in an online 
environment are covered by these regulations.   
18. With regard to Internet piracy, please clarify how, if at all, the criminal 
prosecution/conviction thresholds established in the j udicial interpretations i ssued in 2004 and 2007 
apply to copyright infringements committed or ta king place in the digital environment.   
19. For each provision of law under which criminal copyright infringement, including criminal 
copyright infringement on the Internet, may be pr osecuted, please provide information on the number 
of prosecutions that have been initiated in 2007 a nd 2008.  Please indicate:  (a) when the criminal 
complaint was filed;  (b) with which court;  (c) the identities of the defendant(s);  (d) the provisions of 
law alleged to have been violated;  (e) current di sposition;  (f) if concluded, whether the case resulted 
in acquittal or conviction;  (g) if it resulted in conviction, the sentence, a nd whether the sentence was 
suspended;  and (h) whether the case involved a foreign work. 
20. Please clarify whether software end-user pir acy is subject to criminal procedures and 
penalties and if so under what circumstances and pursuant to which laws.  
21. It is our understanding that China has or will be  undertaking revisions to its copyright law.  
What is the projected timeline for this work and what are the steps involved?  Will foreign 
governments and other stakeholders have the opport unity to provide input into and comment on the 
drafts and if so at what stages? 
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