WORLD TRADE
ORGANIZATIONIP/C/W/361
11 July 2002
(02-3870)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Questions posed by the European Communities and their member States
By means of a communication from the Permanent Delegation of the European Commission,
dated 9 July 2002, the Secretariat has received copies of the following questions, that the European
Communities and their member States have communicat ed to China.  In the cover note to these
questions, the European Commission has indicated that in the absence of the official notification of
China's laws and regulation, they have based themselves for the time being on the material availablethrough other means than the WTO.  Therefore, the list of questions may need to be updated once
they will have had a chance to check it against the official notification of China's laws and
regulations.
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A. G
ENERAL PROVISIONS
1. Please state precisely when the relevant laws, regulations and measures relating to the
implementation of the TRIPS Agreement would be noti fied to the WTO and thus be made available to
all Members.  The present analysis is based on unofficial translations of laws and regulations, or in
some cases mere draft versions of them.
2. Please confirm that Chinese IPR laws treat all foreigners in accordance with the principle of
national treatment as set forth in Article 3 of the TRIPS Agreement.  More precisely, please confirm
that copyright enforcement actions by local copy right bureaux involving foreign right-holders no
longer require clearance by the National Copyright Administration in Bejing.
3. Please state whether your IP legislation includes measures to protect public health and
nutrition, and to promote the public interest in sectors of vital importance to your socio-economic andtechnological development as mentioned under Article 8 of the TRIPS Agreement.  If yes, please
describe these measures and explain how such measures are consistent with the provisions of the
TRIPS Agreement.
4. China is a signatory to many international intellectual property agreements.  Please state
whether the Chinese Government also intends to join the WIPO Copyright Treaty (WCT) and theWIPO Performances and Phonograms Treaty (WPPT).
B. C
OPYRIGHT AND RELATED RIGHTS
5. Please state how your legislation grants the retroactive protection provided pursuant to
Article 18 of the Berne Convention (the obligati on of which derives from Article 9 of the TRIPS
Agreement) and Article 14.6 of the TRIPS Agreement.IP/C/W/361
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6. Please state where your legislation provides exceptions and limitations to copyright and
related rights, how these exceptions and limitations comply with the "three-step" test in Article 9.2 of
the Berne Convention and with Article 13 of the TRIPS Agreement.
7. Article 47 of the revised Chinese Copyright Law (which came into effect as of
27 October 2001, hereafter "new Copyright Law") states that if an infringement constitutes a criminaloffence, criminal liability shall be pursued accord ing to the Criminal Law.  Does this mean that
infringers will be prosecuted at the initiative of the public prosecutor, or does the copyright holder
have to file an application?
8. Since the Criminal Law of China only contains two Articles that relate to criminal penalties
for copyright offenders, these Articles cannot cover all kinds of criminal copyright offences listed in
Article 47 of the new Copyright Law.  Under which circumstances will an infringement be considered
a criminal offence?  Does the Government of China intend to modify its Criminal Law in order todefine more specifically criminal copyright offences?
9. Under the new Copyright Law, copyright owne rs may apply to the People’s Court for
preliminary injunctions and property preservation.  The procedure foresees that the right holder
should prove his ownership.  How should proof of such ownership be provided?  How is Article 15.1
of the Berne Convention complied with?
10. In conformity with Article 45.2 of the TRIPS Agreement, Article 48 of the new Copyright
Law provides for the possibility of applying "Statutory damages".  The upper limit set in the new
Copyright Law is 500,000 RMB.  Which are the criteria that are applied to determine the amount of
the compensation (i.e. whether it is 500,000 RMB or less)?  Please specify whether the ceiling set for
statutory damages is per lawsuit or per piece of the infringed copyright work.
11. Please explain how your legislation deals with copyright piracy and, in particular, with
material made available, without authorisation of the right owner, over the Internet.
C. T
RADEMARKS
12. Please explain whether or not your trademark registration authority will refuse a trademark
application if it contains a geographical indication.  Please explain how the new Trade Mark Law ofthe People's Republic of China (hereafter "new Trade Mark Law"), which took effect on
1 December 2001, implements Article 23.2 of the TRIPS Agreement.
13. Article 13 of the new Trade Mark Law provides protection to a well-known mark even if it is
not registered in China.  Please explain whether, in order to benefit from protection under the Law, a
well-known mark has to be used in the People's Republic of China or simply known in that territory.
Article 14 of the new Trade Mark Law mentions that, in order to determine a well-known mark,
duration of use should be taken into consideration.  Does this refer to use outside the Chinese borders
as well?
14. The new Trade Mark Law does not seem to accommodate Article 6 bis(1) of the Paris
Convention, which extends protection of well-known trade marks to cases in which only "an essential
part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to
create confusion therewith".  Please clarify.
15. The new Trade Mark Law gives the parties an opportunity for judicial review of final
administrative decisions.  What kind of chamber will handle such cases?  China has created specific
IPR courts with specialised judges.  Since the issues involved in decisions taken by the Trade MarkIP/C/W/361
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Review and Adjudication Board are very technical, even if they are administrative decisions, such
decisions should be reviewed by a judicial body specialized in Intellectual Property matters.
16. The new Law does not appear to cover "offer for sale".  The expression "in the course of
trade" (Article 16 of the TRIPS Agreement) is generally agreed to cover "offer for sale".  Please
clarify.  Contrary to the Trade Mark Law, the Chinese Patent Law does incorporate in its Article 11"offers for sale".
17. Please explain whether the new Trade Mark Law provides protection for sound marks and for
olfactory (smell) marks as Article 15.1 of the TRIPS Agreement appears to permit.  Can the applicant,
in relation to a sign which is not inherently distinctive, invoke acquired distinctiveness through use
(second to last recital Article 15.1 of the TRIPS Agreement)?
18. Please explain how Article 22.1 of the new Trade Mark Law is compatible with Article 19.2
of the TRIPS Agreement.  Will use of a trade mark by a person other than the owner of the trademarkonly be recognised as "use" in the sense of Article 19.2 of the TRIPS Agreement when the latter gave
a right of exploitation under a licensing contract?
19. Article 41 of the new Trade Mark Law provides that, on request, the registration may be
cancelled after an uninterrupted period of at least five years of non-use.  Please explain whether
resumption of use after a period of more then five years of non-use, may lead to a revival of theexclusive rights.
20. Article 30 of the new Trade Mark Law provides for a term of 3 months to file an opposition.
Article 17 of the implementing regulations ("IR") specifies that the time to file a reply to an
opposition is only 30 days from receipt of the notification of opposition.  Experience shows that such
a period is extremely short, especially when the applicant is a foreign company and even more whenthe application was filed through WIPO (International Registrations).  Would the Chinese
Government, at least in cases where the applicant is a foreign company, consider prolonging this term
to a minimum of two months?
21. Article 31 of the IR provides that once the trade mark is registered the use of the symbol ®, or
its Chinese equivalent on the goods or packaging.  This is somewhat unusual as it is normally up tothe owner to decide whether to use the registration symbol or not.
D. G
EOGRAPHICAL INDICATIONS
22. While there is a Chinese law establishing a specific system of GI protection, it appears that
GIs in China can also be indirectly protected via registration as a Collective or Certification mark.
China, however, needs to provide adequate protection to geographical indications in conformity with
Section 3 of the TRIPS Agreement.  It is important that China defines the scope of protection for GIs
and that it provides proper protection through a uniform registration procedure.
23. Please give the definition of a geographical indication in Chinese legislation.
24. Please describe and explain the provisions in Chinese legislation establishing a link, if any,
between the characteristics of an indication and its geographical origin.
25. Please describe how additional protection is granted by Chinese legislation to wines and
spirits. Please mention other types of products, if any, which might be covered by such additionalprotection.IP/C/W/361
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26. Please explain what use has been made in China of the exceptions under Article 24 of the
TRIPS Agreement?  Please provide examples of the use of the exceptions by courts, or lists of names
considered as generic in your jurisdiction.
27. Please explain how foreign geographical indications enjoy the protection prescribed by
Articles 22 and 23 of the TRIPS Agreement.  We understand that the State Administration for QualitySupervision and Inspection and Quarantine (AQSIQ) is responsible for the registration and protection
of geographical indications in China.  Can you please provide us with an overview of all the
geographical indications that are currently protected in China?
E. I
NDUSTRIAL DESIGNS
28. Has the protection of textile designs been incorporated in the industrial design provisions of
China's Patent Law?  Apparently, textile designs could only be protected, under China's provisions on
the implementation of the WIPO Copyright Treaty, as works of applied art.
F. PATENTS
29. Please explain how Article 5 of China's Patent Law complies with Article 27.2 of the TRIPS
Agreement.  Article 5 of China's Patent Law  stipul ates that inventions that violate laws of China or
social morality or prejudice public interest would not be entitled to patent protection.  How does this
match with the wording used in Article 27.2 of  the TRIPS Agreement, which specifies that "Members
may exclude from patentability inventions, the prevention within their territory of the commercial
exploitation of which is necessary to protect ordre public or morality, including to protect human,
animal or plant life or health or to avoid serious prejudice to the environment, provided that such
exclusion is not made merely because the exploitation is prohibited by their law" .  Please also explain
how the scope of Article 9 of the Implementing Regulation matches with the terms used underArticle 27.2 of the TRIPS Agreement.
30. Article 49 of China's Patent Law stipulates that compulsory licences may be granted
exceptionally without the requirement that efforts we re made to obtain authorisation from the right
holder.  Please explain how this is compatible with Article 31(b) of the TRIPS Agreement where the
obligation that efforts must be made to obtain authorisation from the right holder prior to the grantingof 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.
31. Article 31(f) of the TRIPS Agreement stipulates that "use under a compulsory licence shall be
authorised predominantly for the supply of the domestic market" .  Please describe how the Chinese
Patent Law complies with this Article.
32. Please describe how the Chinese Patent Law complies with Article 4(d) of the Paris
Convention which states that when legalised documents need to be submitted, a reasonable termshould be granted.  Chinese Patent Law requires that when Paris Convention Priority is claimed the
applicant has to submit the legalised documents at the moment the Priority is claimed (Article 34
Implementing Regulation).
G. PLANT VARIETY PROTECTION
33. In March 1997, the Chinese Government promulgated the Regulation on the Protection of
New Plant Varieties ( sui generis  system as provided for by Article 27.3 of the TRIPS Agreement).
Please describe how the protection of plant varieties is regulated by this Regulation.  Please provide
an English version of the text of the Regulation.IP/C/W/361
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H. LAYOUT DESIGNS OF INTEGRATED CIRCUITS
34. Please describe how Chinese legislation complies with  Articles 36-38 of the TRIPS
Agreement.  Please provide an English version of the text of the Regulation on the Protection of
Layout Designs of Integrated Circuits which became effective in October 2001.
I. PROTECTION OF UNDISCLOSED INFORMATION
35. Please explain how Chinese legislation defines undisclosed information.  Please explain how
Article 39.3 of the TRIPS Agreement has been implemented in the legislation.
36. Please explain whether or not Chinese legislation grants a defined period of time for the
protection of undisclosed information.  If so, please specify it.
37. Please explain how China intends to protect undisclosed test data and other data submitted to
Chinese authorities to obtain marketing approval for pharmaceuticals against unfair commercial use
and disclosure.
J. ENFORCEMENT
38. The new Trade Mark Law gives the parties an opportunity for judicial review of final
administrative decisions.  This is in conformity with Article 41.4 of the TRIPS Agreement.  Please
indicate whether decisions taken by the Trade Mark Review and Adjudication Board will also be open
for judicial review by the specialised IPR courts.
39. Please describe how your legislation authorizes judges to order production of evidence by the
opposing party.  Please give precise information on what measures are taken to ensure the protection
of confidential information.
40. Please quote provisions of your legislation that authorize judges to order a defendant to desist
from an infringement.
41. Please quote what provisions of your legislation authorize judges to order the payment of the
right holder's expenses by the infringer.
42. Please explain if and how judges have the authority to order that infringing goods are placed
outside channels of commerce or destroyed.
43. Please quote what provisions of your legislation authorize judges to indemnify a defendant in
the event of abuse by the plaintiff.
44. Please identify the competent authorities in your jurisdiction who receive requests from right
holders for an application to suspend the release of counterfeit goods by the customs authorities.
45. Please describe how Articles 42 and 43 of the TRIPS Agreement have been implemented in
the judicial rules of civil procedures.  Do the fees for filing an infringement action still depend on the
damages that are being requested?  A foreign company must comply with various administrative
requirements before a procedure can be lodged (for example the obligation to legalise powers ofattorney and the obligation to provide "securities").  Please explain whether Chinese civil procedures
grant equal protection to foreigners and Chinese nationals.
46. Article 45 of the TRIPS Agreement stipulates that "the judicial authority shall have the
authority to order the infringer to pay the right ho lder damages adequate to compensate for the injuryIP/C/W/361
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suffered" .  Please indicate how the Chinese civil judicial remedies comply with this TRIPS obligation.
What shall be taken into consideration to calculate the amount of damages?  Shall the infringer's
profits, inventory and past activity be considered?
47. China, when amending the Patent Law for the second time in 2000, introduced Article 61
which regulates provisional measures (in line with Article 46 of the TRIPS Agreement).  Pleaseclarify whether holders of intellectual property rights other then patents can also rely on a similar
procedure.  Are additional judicial interpretations that specify the procedure for the handling of such
preliminary injunctions in IP-related litigation available?
48. Most IPR enforcement in China is carried out by administrative actions.  Do administrative
authorities have the authority to impose sufficient penalties to prevent or deter further infringement?
Are cases involving repeat offenders and wilful piracy and counterfeiting referred to the appropriate
authorities for initiation of criminal proceedings?  Can China provide some relevant statistics of casesthat have led to prosecution under the criminal law provisions?
49. As currently applied, the monetary thresholds for bringing a criminal case are very high and
seldom met.  Has the judicial authority made the necessary adjustment to lower those thresholds so as
to permit effective action that would deter future piracy and counterfeiting?
50. The new Regulation of the People's Republic of China Governing Customs Protection of
Intellectual Property Rights came into effect in October 1995.  Concern as to the compatibility of this
regulation with obligations under Article 51 to 60 of the TRIPS Agreement were expressed in the
past.  The Chinese Government has committed itself to revise the Regulation to make it fully
compliant with the relevant provisions of th e TRIPS Agreement.  When may we expect the
Regulation to be revised?
51. Would the right holder and the consignee, in accordance with Article 57 of the TRIPS
Agreement, have the right to inspect the goods that were seized (retained) by Customs?
52. Article 14 of the Regulation of the People's Re public of China Governing Customs Protection
of Intellectual Property Rights provides that the IP owner is to pay a security equal to the value of the
goods concerned.  Article 53 of the TRIPS Agreement stipulates however that "such security or
equivalent assurance shall not unreasonably deter recourse to these procedures" .  Please explain how
Article 14 of China's Custom Regulation complies with Article 53 of the TRIPS Agreement.
53. Article 56 of the TRIPS Agreement provides that the applicant may be ordered to pay
appropriate compensation because of wrongful detention of goods.  Please explain how Chinese
legislation complies with this Article of the TRIPS Agreement.
54. Will the amended version of the Regulation of the People's Republic of China Governing
Customs Protection of Intellectual Property Rights in clude ex officio actions as allowed by Article 58
of the TRIPS Agreement?
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