(3) Based on the interpretation of Section 1, Article 3 of the Trademark Law

Section 1, Article 3 of the Trademark Law amended in 2001 provides that, “Trademarks that are registered upon verification and approval of the Trademark Office are registered trademarks, including commodity marks, service marks, and collective marks, certification marks.” We hold that the law makers didn’t consider the four types of trademarks as parallel concepts. This can be evidenced by the location of the word “and” used in the Section. If the law makers considered the four types of trademarks as parallel concepts, based on the Chinese grammatical habit, the word “and” would be put before the last listed item, which is “certification marks”. This Section simply lists the trademarks categorized with different criteria, among which, “commodity marks” is parallel with “service marks”, while “collective marks” is parallel with “certification marks”.

In conclusion, commodities marks, service marks, collective marks and certification marks are not parallel concepts, but are divided with different criteria. Their implications cross over each other. Whenever the trademarks are divided into commodity marks and service marks, or into normal trademarks, certification marks and collective marks, they can be further divided into the following six categories: (1) normal trademarks registered on goods; (2) normal trademarks registered on services; (3) certification marks registered on goods; (4) certification marks registered on services; (5) collective marks registered on goods; and (6) collective marks registered on services.

Certification marks and collective marks are only a further division of commodities marks or services marks with special function. A trademark, no matter if normal trademark, collective mark or certification mark, registered pursuant to relevant Chinese laws must bear the nature of commodity mark or service mark. A certification mark must be a commodity mark or service mark in the first place, and then show a specific quality of the related commodity or service. A certification mark registered on a commodity is both a certification mark and a commodity mark.

2. Interpretation of Article 213 of the P.R.C. Criminal Law and other stipulations

According to Article 213 of the Criminal Law, “whoever, without permission from the owner of a registered trademark, uses a trademark which is identical with the registered trademark on the same kind of commodities shall constitute the crime of counterfeiting registered trademark.” There are disputes in judicial practice as to the meanings of “registered trademark” and “use” in this Article when involved in the case of counterfeiting certification mark.

(1) “Registered trademark”

We hold that the crime object in this Article is “registered trademark” and the specific type of registered trademark is not set out, meaning that use of a “registered trademark” on an identical commodity may constitute crime. The same reading also applies to “registered trademark” and “sign of a registered trademark” as stipulated respectively in Article 214 and Article 215.

Someone views that “… use … on the same kind of commodities …” set out herein specifies that the “registered trademark” should be commodity mark other than certification mark.

We hold that certification marks registered on commodities are also commodity marks as already ascertained in the above. Therefore, even if the “registered trademark” here is limited to commodities marks, infringement of certification marks registered on commodities shall constitute the crime of counterfeiting a registered trademark.

Given that the Criminal Law was promulgated in 1997 when the currently effective Trademark Law not promulgated yet until 2001 and the 1993 Trademark Law effective at that time did not explicitly set out certification marks, it is argued that the “registered trademark” in the crime of counterfeiting registered trademark, the crime of selling commodities bearing counterfeit registered trademark, and the crime of manufacturing and selling illegally manufactured sign of registered trademark as provided in the current Criminal Law does not include certification marks. In fact, certification marks have been mentioned earlier in related trademark laws and practices. As stated above, the State AIC promulgated the Policy for the Registration and Administration of Collective Marks and Certification Marks as early as 1994, and Article 6 of the Regulation for Implementation of the P.R.C. Trademark Law promulgated in 1995 explicitly stipulated that collective marks and certification marks verified and approved for registration by the Trademark Office shall be legally protected in accordance with provision of Article 3 of the Trademark Law.

(2) “Use”

It is argued that the function of a certification mark is not in identifying the origin of commodities, thus the act to apply a certification mark to commodities is not the “use in trademark context”.

As stipulated however in Article 8 of the Interpretation on Certain Issues Concerning the Application of Law in Handling Criminal Cases Involving Infringement of Intellectual Property Rights, and Article 3 of the Regulation for Implementation of the Trademark Law, “use refers to using registered trademarks or counterfeit registered trademarks in commodities, commodity packaging or containers and product manuals, commodity trading instruments, or other acts such as using registered trademarks or counterfeit registered trademarks in advertising and publicity, exhibition and other business activities.” Therefore, trademark use is established as long as the infringement of certification marks satisfies the requirements above.

In addition, as stipulated by Article 3 of the Trademark Law, certification mark certifies the origin, raw material, manufacturing method, quality, or other characteristics of the goods or services. Those elements certified by the mark, as well as the mark itself, have the function to distinguish the source of goods or services (i.e. whether the goods or services have such characteristics). So using certification mark obviously can be deemed ‘trademark use’.