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依据现行《商标法》第56条、57条的规定，注册商标的专用权，以核准注册的商标和核定使用的商品为限，原则上仅能禁止在相同或类似的商品上使用相同或近似商标的行为。实践中存在将他人注册商标使用在不类似的商品上的行为，这类行为往往使得商标权利人捉襟见肘；若放弃维权，显然不利于企业商标形象、美誉度的维护。

为了有效遏制商标侵权行为及维护自身商标权益，企业可以在诉讼中争取认定驰名商标。

1、驰名商标有利于企业商标跨类别进行保护

OPPO商标权利人通过诉讼认定为第9类手机上的驰名商标来禁止他人将“OPPO”商标使用在第11类的热水器等上；荷花商标权利人通过诉讼认定为第34类烟草上的驰名商标来禁止他人将“荷花”商标使用在第33类白酒上。

2、驰名商标可以对抗注册商标

商标获准注册，意味着获得了法律的保护，权利人基于获权信赖利益使用已注册商标，原则上属于合法使用，不应被认定为侵权行为。因而，《最高人民法院关于审理注册商标、企业名称与在先权利冲突的民事纠纷案件若干问题的规定》第一条第二款规定“原告以他人使用在核定商品上的注册商标与其在先的注册商标相同或者近似为由提起诉讼的，人民法院应当根据民事诉讼法第111条第（三）项的规定，告知原告向有关行政主管机关申请解决”。即：此类行为应当行政前置，原告需待国家知识产权局无效宣告该注册商标后才能起诉。

但依据《最高人民法院关于审理涉及驰名商标保护的民事纠纷案件应用法律若干问题的解释》第十一条：被告使用的注册商标违反商标法第十三条的规定，复制、摹仿或者翻译原告驰名商标，构成侵犯商标权的，人民法院应当根据原告的请求，依法判决禁止被告使用该商标。

即使他人使用的是注册商标，原告仍然可以通过认定驰名商标直接要求予以禁止侵权，无需行政前置提起商标无效。

2021年3月3日施行的《最高人民法院关于审理侵害知识产权民事案件适用惩罚性赔偿的解释》明确了：“原告主张被告故意侵害其依法享有的知识产权且情节严重，请求判令被告承担惩罚性赔偿责任的，人民法院应当依法审查处理。人民法院依法确定惩罚性赔偿的倍数时，应当综合考虑被告主观过错程度、侵权行为的情节严重程度等因素。”

1.对于下列情形，人民法院可以初步认定被告具有侵害知识产权的故意：

（一）被告经原告或者利害关系人通知、警告后，仍继续实施侵权行为的；

（二）被告或其法定代表人、管理人是原告或者利害关系人的法定代表人、管理人、实际控制人的；

（三）被告与原告或者利害关系人之间存在劳动、劳务、合作、许可、经销、代理、代表等关系，且接触过被侵害的知识产权的；

（四）被告与原告或者利害关系人之间有业务往来或者为达成合同等进行过磋商，且接触过被侵害的知识产权的；

（五）被告实施盗版、假冒注册商标行为的；

2.被告有下列情形的，人民法院可以认定为情节严重：

（一）因侵权被行政处罚或者法院裁判承担责任后，再次实施相同或者类似侵权行为；

（二）以侵害知识产权为业；

（三）伪造、毁坏或者隐匿侵权证据；

（四）拒不履行保全裁定；

（五）侵权获利或者权利人受损巨大；

（六）侵权行为可能危害国家安全、公共利益或者人身健康；

3.各地纷纷发布惩罚性赔偿的相关指南或指导案例，位于粤港澳大湾区的广东省高级人民法院也于今年首次发布六个知识产权惩罚性赔偿典型案例，最高判赔数额达3000万元。

在浏阳利某置业有限公司、大某城商业管理（北京）有限公司等侵害商标权纠纷中，关于赔偿基数的确定。大某城公司未提交证据证实其实际损失数额、利某公司违法所得数额或者因侵权所获得的利益，但提交了商标使用许可合同及许可使用费支付凭证。根据大某城公司提交的证据显示，大某城公司授权许可长沙北某公司使用“大某城”系列九枚商标的许可使用费在开业前为800万元，考虑到大某城公司在本案中主张权利的注册商标为三枚，同时考虑利某公司所在城市经济水平，一审法院确定涉案三枚注册商标许可使用费为133万元（800万元÷9×3×0.5=133万元）。鉴于利某公司使用涉案侵权商标的持续时间长，且利某公司线上线下多种方式使用侵权商标等因素，一审法院确定赔偿基数为商标许可使用费的2倍即266万元。综合考虑本案利某公司的主观恶意程度、侵权行为的性质、情节和后果等因素,按照上述确定的赔偿基数266万元的1.5倍确定惩罚性赔偿数额。

综上所述，原告在个案中应积极搜集相关损失、获利、商标许可使用的证据。实践中，如原告商标曾授权加盟或许可他人使用，则按照合同约定及支付的许可费，更有利于计算惩罚性赔偿的基数。

Temporary Injunction - Application for Pre-litigation or Interim Act Preservation

The first instance of a trademark infringement civil lawsuit usually takes 10 months, and the second instance usually takes 5 months. Considering the backlog of court cases, the service of documents and other factors, it takes far more than 15 months until the judgment takes effect. In the age of network information, trademark infringement has spread very rapidly. If the market is cleaned up after the effective judgment, it may cause irreparable damage to the trademark owner.

In order to quickly curb trademark infringement, the plaintiff may apply to the people’s court for an application for act preservation, ie. temporary injunction.

1. Temporary injunction to curb trademark infringement in as little as 48 hours

According to Article 104 of the “Civil Procedure Law”: where an interested party whose legitimate rights and interests, due to an emergency, would suffer irreparable damage if the party fails to petition for property preservation promptly, may, before instituting a lawsuit or applying for arbitration, apply to the people's court at the locality of the property, the domicile of the party on which the application is made, or the people's court with jurisdiction over the case, for the property preservation measures. The applicant shall provide security for such application; where the party fails to provide such security, the court shall reject the application. When a people's court receives an application for preservation, it shall decide within 48 hours after the receipt of the application; if the court accepts the application, the preservation measures shall come into force immediately.

The temporary injunction measures adopted by the ruling to stop the infringement of the exclusive right to use a registered trademark shall not be lifted due to the security provided by the respondent (defendant), unless the applicant (plaintiff) agrees.

2. When the court examines whether the respondent (defendant) should be ordered to stop the relevant behavior, the following factors are mainly considered:

2.1. Whether the applicant has the possibility of winning in this case;

The so-called possibility of winning the case is the possibility judgment made by the court based on the existing evidence and the characteristics of procedural provisional measures, which is obviously different from the deterministic determination after the substantive trial. Therefore, in the review stage of the pre-litigation act preservation application, the possibility of winning the case does not necessarily exclude the possibility that the preservation applicant loses the case or the preservation respondent wins the case.

2.2. Whether it is urgent, and whether failure to take immediate measures may cause irreparable damage to the legitimate rights and interests of the applicant;

In the pre-litigation preservation case of Voice of China, the court held that the reason for filing the pre-litigation preservation application was the urgency of the situation, and such urgency was manifested in that failure to immediately take preservation measures would cause irreparable damage to the applicant's legitimate rights and interests. This case involves the production and broadcast of a singing competition talent show. The materials submitted by Zhejiang Tang Company showed that the “2016 Voice of China” program involved in the case would be recorded in June 2016 and broadcast in July. The time was tight, and it can be expected that, once the program was recorded and broadcasted, it would be widely disseminated and spread. Many links may constitute an infringement of the exclusive license to use the rights obtained by the Zhejiang Tang company, which may significantly increase the costs and difficulty of rights protection for the Zhejiang Tang company.

2.3. Balance of damage, that is, whether the damage caused to the applicant by not ordering the respondent to stop the relevant behavior is greater than the damage caused to the respondent by the respondent being ordered to stop the relevant behavior;

2.4. Whether the ordering of the respondent to stop the relevant behavior damages the social public interests.

Cross-class protection of well-known trademarks, defense of well-known trademarks against registered trademarks

According to the provisions of Articles 56 and 57 of the current “Trademark Law”, the exclusive right of a registered trademark is limited to the approved registered trademark and the approved goods. In principle, only the use of identical or similar trademarks on identical or similar goods can be prohibited. In practice, there is the act of using other people's registered trademarks on dissimilar goods, which often makes the trademark owner helpless. If the trademark owner gives up rights protection, it is obviously not conducive to the maintenance of the company's trademark image and reputation.

In order to effectively curb trademark infringement and safeguard its own trademark rights, companies can strive to identify well-known trademarks in litigation.

1. Well-known trademarks are conducive to the cross-class protection of company’s trademarks

OPPO trademark was identified as a well-known trademark on Class 9 mobile phones through litigation to prohibit others from using the “OPPO” trademark on water heaters in Class 11; “荷花” trademark was identified as a well-known trademark on Class 34 tobacco through litigation to prohibit others from using the “荷花” trademark on Class 33 liquor.

2. Well-known trademarks can be opposed to registered trademarks

The approval of the trademark registration means that it has obtained the protection of the law. The use of the registered trademark by the right holder based on the relied interest of the right is legal in principle and should not be regarded as an infringement. Therefore, Paragraph 2 of Article 1 of “Provisions of the Supreme People's Court on Several Issues concerning the Trial of Civil Dispute Cases Concerning the Conflict of Registered Trademarks, Company Names and Prior Rights” stipulates that “where the plaintiff files a lawsuit on the grounds that the registered trademark used by others on the approved goods is identical or similar to his earlier registered trademark, the people's court shall, in accordance with the provisions of Article 111(3) of the Civil Procedure Law, notify the plaintiff to apply to the relevant administrative authority for settlement”. That is, such acts should be pre-administrative, and the plaintiff can only sue after the National Intellectual Property Administration has invalidated the registered trademark.

However, according to Article 11 of the “Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Civil Disputes Involving the Protection of Well-known Trademarks”, where the registered trademark used by the defendant violates the provisions of Article 13 of the Trademark Law by copying, imitating or translating the plaintiff's well-known trademark, which constitutes trademark infringement, the people's court shall, according to the plaintiff's request, rule to prohibit the defendant from using the trademark according to law.

Even if someone else is using a registered trademark, the plaintiff can still directly request the prohibition of infringement by identifying a well-known trademark, without the need for administrative preposition to file a trademark invalidation.

Punitive damages

“Interpretation of the Supreme People's Court on the Application of Punitive Damages in the Trial of Civil Cases Infringing Intellectual Property Rights”, which came into effect on March 3, 2021, clarifies: “where the plaintiff claims that the defendant deliberately infringes upon the intellectual property rights it enjoys according to law and the circumstances are serious, and requests that the defendant be ordered to bear the responsibility, the people's court shall review and deal with it in accordance with the law. When determining the multiple of punitive damages in accordance with the law, the people's court shall comprehensively consider factors such as the degree of subjective fault of the defendant, the seriousness of the circumstances of the tortious act, etc. "

1. In the following circumstances, the people's court may preliminarily determine that the defendant has the intention to infringe intellectual property rights:

(1) The defendant continues to commit the infringing act after being notified or warned by the plaintiff or an interested party;

(2) The defendant or its legal representative or manager is the legal representative, manager or actual controller of the plaintiff or the interested party;

(3) There are labor, service, cooperation, licensing, distribution, agency, and representative relationships between the defendant and the plaintiff or interested parties, and the defendant has been in contact with the infringed intellectual property rights;

(4) The defendant has business dealings with the plaintiff or interested parties or has negotiated for the conclusion of a contract, and has been in contact with the infringed intellectual property rights;

(5) The defendant commits acts of piracy or counterfeiting of registered trademarks.

2. If the defendant has the following circumstances, the people's court may determine that the circumstances are serious:

(1) Committing the same or similar tortious acts again after being administratively punished or liable by a court judgment due to infringement;

(2) Infringing intellectual property rights as a business;

(3) Forging, destroying or concealing infringement evidence;

(4) refusing to perform the preservation ruling;

(5) Huge profits from infringement or huge losses to the right holder;

(6) The infringement may endanger national security, public interests or personal health.

3. Relevant guidelines or guiding cases for punitive damages have been issued in various areas of China.

The Guangdong Higher People's Court located in the Guangdong-Hong Kong-Macao Greater Bay Area also issued six typical cases of punitive damages for intellectual property rights for the first time this year, with a maximum award of 30 million yuan.

In the case concerning the determination of the compensation base in the trademark infringement dispute between LiTong Company and DaYueCheng Company, DaYueCheng Company did not submit evidence to prove the actual amount of losses, the amount of illegal gains obtained by LiTong Company, or the benefits obtained from infringement by LiTong Company, but submitted the trademark license contract and the payment certificate for the license fee. According to the evidence submitted by DaYueCheng Company, the license fee for DaYueCheng Company to authorize a company in Changsha to use the nine trademarks in DaYueCheng series was 8 million yuan before the opening. Considering that DaYueCheng Company claimed three registered trademarks in this case, and considering the economic level of the city where LiTong company is located, the court of first instance determined that the license fee for the three registered trademarks involved in the case was 1.33 million yuan (8 million yuan ÷ 9× 3×0.5=1.33 million yuan). In view of the long duration of the use of the trademarks involved in the case by LiTong company, and the use of the trademarks in various online and offline ways by LiTong company, the court of first instance determined that the compensation base was 2.66 million yuan, twice the trademark license fee. Taking into account factors such as the subjective malicious degree of LiTong company in this case, the nature, circumstances and consequences of the infringement, the amount of punitive damages was determined according to 1.5 times the compensation base of 2.66 million yuan determined above.

The plaintiff should actively collect evidence of relevant losses, profits, and licensed use of trademarks in the case. In practice, if the plaintiff’s trademark has been authorized to join or license others to use it, the license fee paid in accordance with the contract is more conducive to the calculation of the base of punitive damages.