Determining joint and several liability in trademark infringement cases

With continued improvements in intellectual property (IP) infringement legislation and intensified efforts to crack down on IP infringers, acts of trademark infringement are also changing, from the previously often seen infringement by a single entity to more complex joint infringements by multiple entities. Accordingly, determination of the joint and several liability for infringement by co-infringers has become more important.

The main legal basis for such determination is article 130 of the general provisions of the Civil Code, reading: “where joint infringement by two or more persons causes injury to another, the co-infringers shall bear joint and several liability therefore”. The article, by examples, gives accounts of the way in which a joint infringement is manifested in trademark infringement cases, and of the determination of joint and several liability of the infringers.

A typical case

In a trademark infringement case the infringer may, hoping to evade legal liability, gradually change its infringement model from traditional infringement by a single entity to the more complex joint infringement by multiple entities. A commonly seen model is as follows: infringer A applies for a trademark similar to a certain famous trademark for goods or services in a different but related class, and then licenses such trademark to company B, which it controls; company B, as licensee, uses the licensed trademark cross-class for goods or services identical to those of the famous trademark, manufacturing and selling infringing products, or engaging in the provision of a service. Through this model, the infringer intends, on the one hand, to hitchhike on the famous trademark to obtain illegal profits and, on the other, to evade legal liability as the actual main planner and operator of the infringement.

Frank Liu is a partner and Si Jiamu is a trainee at Chang Tsi & Partners in Beijing