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Project Details
Funding Scheme : General Research Fund
Project Number : 17610018
Project Title(English) : Building a Robust Trademark Fair Use Mechanism in China  
Project Title(Chinese) : 在中國創建一個嶄新的商標合理使用制度 
Principal Investigator(English) : Mr Sun, Haochen 
Principal Investigator(Chinese) :  
Department : Department of Law
Institution : The University of Hong Kong
E-mail Address : haochen.sun@hku.hk 
Tel : 22194516 
Co - Investigator(s) :
Panel : Humanities, Social Sciences
Subject Area : Social and Behavioural Sciences
Exercise Year : 2018 / 19
Fund Approved : 540,500
Project Status : Completed
Completion Date : 30-6-2021
Project Objectives :
To conduct systematic research on the major problems with the existing trademark limitations under Chinese law
To put forward constructive proposals for creating a new trademark fair use mechanism in China
To investigate the lessons that China can learn from the EU and US so as to adopt more effective legal standards for deciding what constitutes a trademark fair use
To analyze the ways in which the new trademark fair use mechanism can robustly promote the public interest in freedom of expression and the freedom to take part in cultural life in China
Abstract as per original application
(English/Chinese):
We live in an age in which virtually all goods and services are merchandized through trademarks. Thus, the economic and cultural value of trademarks has increased significantly, as they have become part of our daily lives and core assets for many companies. While trademark law protects the exclusive right to use a trademark, it also carves out limitations on that exclusive right. These limitations entitle the public to use a trademark without obtaining permission from, and paying remuneration to, the trademark owner. They are of critical importance to the protection of consumer welfare and cultural freedom. Despite the crucial importance of limitations on trademark rights to protecting the public interest, the Chinese law governing those limitations remains woefully underdeveloped. The Chinese Trademark Act, for example, permits only the descriptive use exemption without protecting other types of non-infringing trademark uses such as nominative use and parodic use. The Trademark Act also lacks necessary instructions on how to deal with the relationship between descriptive use and the protection of trademark rights against the likelihood of confusion or dilution. Through investigation of statutory provisions and judicial rulings, my project will identify the major problems with the existing limitations on trademark rights under Chinese law. In examining ways to address those problems, it will then explore how China can reform its trademark law by establishing a new trademark fair use mechanism. Legally, the project will suggest that the new mechanism should broadly permit not only descriptive trademark use but also other types of fair use such as nominative and parodic use. It will also shed new light on what China can learn from the European Union and United States in crafting proper legal standards for a finding of fair trademark use. Culturally, the project will examine the extent to which the proposed new mechanism will better protect the public interest and how it can promote two forms of cultural freedom in China, namely, freedom of expression and freedom to participate in cultural life. It will further demonstrate that the promotion of both forms of cultural freedom could effect positive change in the identity of both consumers and corporations, thereby fostering ethical branding and consumerism in China.
在我們生活的這個時代裏,實際上所有的產品和服務都是經由商標作買賣的。因此,商標的經濟和文化價值都被顯著提高了,因爲商標已經成爲了我們日常生活中的一部份和很多機構的核心資產。商標法一方面保護運用商標這獨一無二的權利,一方面也開闢出關於這種獨家權利的種種限制。這些限制使得公衆既不需要從商標權人手上拿到允許,也不需要付酬金給商標權人就能運用商標。它們對於保護消費者福祉及文化自由方面尤為重要。 儘管商標權的限制對於維護公衆利益有莫大的重要性,有關規管那些限制的中國律法發展仍然嚴重地滯後。例如,《中華人民共和國商標法》只允許豁免描述性的合理商標使用,而沒有保障到其他非侵權性的商標使用方式,比如指示性之合理使用及戲謔仿作。該《商標法》也缺乏應有的指引去處理描述性商標使用和保護商標權此兩者關係對於引起混淆或淡化商標的可能性。 通過研究法律條款和法治管理方式,我的課題將指出在中國律法下,目前商標權的限制所衍生的主要問題。此課題將檢測不同的方法去解決那些問題,並探索中國如何可以通過成立一個全新的商標公平使用機制從而改革國家的商標法。 在法律層面上,此課題將建議新機制應該廣泛地允許描述性的合理商標使用,以及其他商標使用方式比如指示性之合理使用及戲謔仿作。它亦將啓發中國在哪些方面可以向歐盟和美國學習制定一套用於裁決公平商標使用時的合適的法律標準。 在文化層面上,此課題將檢驗建議的新機制有多大程度可以更好地保護公衆利益,以及它如何能夠促進中國國内的兩種文化自由模式,分別是表達的自由和參與文化生活的自由。此課題將進一步地證明促進此兩種文化自由模式可以正面地改變消費者和機構的身份認同,從而培育國内合乎道德的品牌創建和保護消費者權益。
Realisation of objectives: I looked into the major Chinese statutes, administrative regulations, and interpretations issued by the Chinese Supreme Court. I analyzed the nature and scope of the descriptive use exemption under the Trademark Act, and also thoroughly examined whether other exemptions such as nominative use and parodic use have already been accepted by the relevant administrative regulations, and Supreme Court’s interpretations. I also examined the nature and scope of the descriptive use, nominative use, and parodic use exemptions by studying judicial rulings by Chinese courts. I collected a large number of rulings, sorted out influential ones, and analyzed their implications for Chinese courts to decide the nature and scope of these exemptions. I collected the major statutes and judicial rulings concerning trademark fair use in the European Union (EU) and the United States (US), and then examined the nature and scope of the fair use exemptions under these statutes and rulings. In particular, I studied how fair use exemptions have promoted freedom of expression and the freedom to take part in cultural life in the EU and the US. Based on these studies, I further considered how China could learn lessons from the EU and the US to improve its trademark fair use mechanism. I focused on two research questions. First, how China could learn lessons from the EU and the US about whether it should statutorily adopt nominative use and parodic use exemptions. Second, how China could learn lessons from the EU and the US about how to promote freedom of expression and cultural life through trademark fair use exemptions. I organized an international conference Limitations on Trademark Rights from Comparative and Interdisciplinary Perspectives on January 7-8, 2019 under the auspices of the Law and Technology Center at the University of Hong Kong Faculty of Law and the Engelberg Center on Innovation Law & Policy at New York University School of Law. The conference brought together leading trademark experts from around the world to explore the nature and scope of those limitations from comparative and interdisciplinary perspectives. Base on this conference, I co-edited a book on the limitations on trademark rights with Professor Barton Beebe, John M. Desmarais Professor of Intellectual Property Law at New York University School of Law. The editing process helped me gain a better understanding of trademark fair use from comparative and interdisciplinary perspectives. I also presented my research papers at various international conferences such as the EUPLANT Seminar: EU-China Round Table on IP at the City University of Hong Kong School of Law, the Annual Congress organized by the International Association for the Advancement of Teaching and Research in Intellectual Property (ATRIP), and the Privatizing, Quantifying, Performing and Transforming the University conference at the University of California, Davis, School of Law. I also gave a public lecture on Chinese trademark law at Waseda University School of Law. I received very helpful comments and feedbacks for my research project.
Summary of objectives addressed:
Objectives Addressed Percentage achieved
1.To conduct systematic research on the major problems with the existing trademark limitations under Chinese lawYes100%
2.To put forward constructive proposals for creating a new trademark fair use mechanism in ChinaYes100%
3.To investigate the lessons that China can learn from the EU and US so as to adopt more effective legal standards for deciding what constitutes a trademark fair useYes100%
4.To analyze the ways in which the new trademark fair use mechanism can robustly promote the public interest in freedom of expression and the freedom to take part in cultural life in ChinaYes100%
Research Outcome
Major findings and research outcome: Despite the crucial importance of trademark fair use, Chinese trademark law governing this type of limitations on trademark rights is woefully underdeveloped. The Chinese Trademark Act merely permits only the descriptive use exemption. It does not expressly recognize nominative use and parodic use exemptions. However, a closer look into the rulings made by Chinese courts shows that there is a robust judicial recognition of the nominative use exemption. Although the Chinese Trademark Act allows only for descriptive use, the Chinese courts have relied on nominative use in deciding cases without any statutory basis. In such cases, the courts have protected the interests of consumers and businesses by holding that the nominative use of a trademark can be fair despite not being an existing statutory exception to infringement. My latest search of Beida Fabao, a legal database, showed that as of January 2021, Chinese judges had applied nominative fair use to settle 172 trademark cases. Based on these research findings, I argue that China should revise its Trademark Act to expressly recognize the nominative use exemption. I also examine the implications of trademark fair use for protecting luxury brands. Although Chinese judges have used creative methods to proactively protect the public, they have not relied on freedom of expression to decide trademark fair use cases. The Chinese courts have not yet recognized parodic use as a legal limitation, even though disputes involving parodic use have increased dramatically in China in recent years owing to the rise of social media. In response, I put forward a proposal for how judges could cite the Chinese constitution’s free speech clause to uphold a ruling that limits trademark rights. Rather than adopting free speech solely as an individual liberty, I suggest that Chinese judges should view free speech as having a major function in promoting the public interest in a tolerant, pluralistic society. Research Output: Charting Limitations on Trademark Rights (Barton Beebe and Haochen Sun eds., Oxford University Press, forthcoming 2022) Haochen Sun, “Protecting the Public Interest through Intellectual Property Law: The Creative Approach of Haochen Sun, Chinese Judges,” 31 Minnesota Journal of International Law (forthcoming Fall 2021) “Higher Education as a Luxury Good,” 17 New York University Journal of Law & Business 153 (2020)
Potential for further development of the research
and the proposed course of action:
Legal disputes over parodic trademark uses are on the rise, posing challenges for the courts in the absence of any statutory guidance under Chinese trademark law. Further research will be needed to examine the growing number of parodic use cases. While the statutory recognition of the nominative use exemption is very likely in the near future, it would be difficult for the Chinese legislature to adopt parodic use as a statutory limitation on trademark rights. Based on the new developments in parodic use in China, further research is needed to study the political and legal hurdles for the statutory recognition of the parodic use exemption and how to pave the way for such a statutory revision.
Layman's Summary of
Completion Report:
Trademark fair use is of vital importance in protecting the public interest. The trademark fair use mechanism in China, however, remains underdeveloped. The Chinese Trademark Act permits only the descriptive use exemption without recognizing the nominative use and parodic use exemptions. Through investigation of statutory provisions and judicial rulings, my project has identified the major problems with the existing trademark fair use mechanism under Chinese law. The project focuses on the role of Chinese courts in dealing with trademark fair use cases. It identifies two important contributions that Chinese courts have made to protecting the public interest. First, when interpreting the nature and scope of limitations on trademark rights, they have made appropriate deviations from the civil law tradition to proactively protect the public interest. Second, in doing so, they have developed creative legal methods to ascertain the myriad public interests implicated in limitations on trademark rights. Nonetheless, Chinese judges have not yet relied on the right to free speech in their trademark rulings. This article suggests that to better protect the public interest Chinese judges should cite the Chinese constitution’s free speech clause to highlight its public interest function of fostering a tolerant, pluralistic society.
Research Output
Peer-reviewed journal publication(s)
arising directly from this research project :
(* denotes the corresponding author)
Year of
Publication
Author(s) Title and Journal/Book Accessible from Institution Repository
2022 Barton Beebe & Haochen Sun*  Charting Limitations on Trademark Rights (Oxford University Press, forthcoming Spring 2022)  No 
2021 Haochen Sun  “Protecting the Public Interest through Intellectual Property Law: The Creative Approach of Chinese Judges,” 31 Minnesota Journal of International Law (forthcoming Fall 2021)  No 
2020 Haochen Sun  “Higher Education as a Luxury Good,” 17 New York University Journal of Law & Business 153 (2020)  No 
Recognized international conference(s)
in which paper(s) related to this research
project was/were delivered :
Month/Year/City Title Conference Name
Hong Kong Building a Robust Trademark Fair Use Mechanism in China  EUPLANT Seminar: EU-China Round Table on IP 
Nashville, USA Building a Robust Trademark Fair Use Mechanism in China  ATRIP Congress 
Davis, USA Elite Universities as Global Luxury Brands  Privatizing, Quantifying, Performing and Transforming the University 
Hong Kong Building a Robust Trademark Fair Use Mechanism in China  Limitations on Trademark Rights from Comparative and Interdisciplinary Perspectives 
Tokyo Demystifying Counterfeiting in China  Public Lecture Series 2018, Waseda University, Faculty of Law 
Other impact
(e.g. award of patents or prizes,
collaboration with other research institutions,
technology transfer, etc.):

  SCREEN ID: SCRRM00542