Law Interpretation 〔2020〕No. 32

Notice of The Supreme People's Court Issued the Guiding Opinions on the Trial of Civil Cases Involving Intellectual Property Rights on E-commerce Platforms

The higher people’s courts of all provinces, autonomous regions, and municipalities directly under the Central Government, the Military Court of the People’s Liberation Army, and the Production and Construction Corps Branch of the Higher People’s Court of Xinjiang Uygur Autonomous Region:

The Guiding Opinions of the Supreme People’s Court on the Trial of Civil Cases Involving Intellectual Property Rights on E-commerce Platforms is hereby released and distributed to you, please implement them carefully.

The Supreme People's Court

Sep. 10th, 2020

The Guiding Opinions of the Supreme People’s Court on the Trial of Civil Cases Involving Intellectual Property Rights on E-commerce Platforms

In order to fairly hear the civil cases involving intellectual property rights on e-commerce platforms, protect the legitimate rights and interests of all parties in the e-commerce field in accordance with the law, and promote the standardized, orderly and healthy development of business activities on e-commerce platforms, in combination with the actual situation of IP trials, this Guiding Opinions is formulated.

1.When hearing the cases involving IP disputes on e-commerce platforms, people's courts shall adhere to the principle of strict protection of IP rights, punish the acts of providing counterfeit, pirated and other infringing goods or services through e-commerce platforms in accordance with the law, actively guide the parties to follow the principle of good faith and to exercise rights legally and legitimately, and properly handle the relationship among the owners of IP rights, e-commerce platform operators and business operators in e-commerce platforms.

2.When hearing the cases involving IP disputes on e-commerce platforms, the people’s court shall, in accordance with Article 9 of the E-commerce Law of the People’s Republic of China (hereinafter referred to as the E-commerce Law), determine whether the relevant parties are e-commerce platform operators or business operators in the platform.

To determine whether e-commerce platform operator conducts self-operated business or not, the people’s court may consider the following factors: the "self-operated" information marked on the product sales page; the information of sales entity marked on the physical product; the information of sales entity indicated on the invoice and other transaction documents, etc.

3.If e-commerce platform operator knows or should know the IP infringement conducted by the business operator in the platform, it should take necessary measures in a timely manner based on the nature of the right, the specific circumstances of the infringement and technical conditions, the preliminary evidence of infringement as well as the type of service. The necessary measures, including but not limited to deleting, blocking, disconnecting links and other removal measures, shall be taken observing the principle of reasonable prudence. If the business operator in the platform has repeatedly and deliberately infringed IP rights, the e-commerce platform operator is entitled to take measures to terminate transactions and services.

4.Pursuant to the provisions of Article 41, Article 42 and Article 43 of the E-Commerce Law, e-commerce platform operators can formulate specific implementation measures for the notification and declaration mechanism in the platform according to the types of IP rights, the characteristics of goods or services. However, the relevant measures shall not impose unreasonable conditions or obstacles on parties’ right enforcement in accordance with the law.

5.The notification issued by the IP right holder to the e-commerce platform operator in accordance with the provisions of Article 42 of the E-Commerce Law generally includes:  IP right certificate and the real identity information of the right holder; information of the accused infringing goods or services that can be accurately positioned; preliminary evidence of infringement; written guarantee of the authenticity of the notification, etc. The notification should be in written form.

Where the notification involves patent rights, the e-commerce platform operator may require the IP right holder to submit the materials such as a description of the comparison of technical features or design features, an assessment report on utility model or design patent right, etc.

6.When determining whether the notifying party has “bad faith” stipulated in Paragraph 3 of Article 42 of the E-Commerce Law, people’s court may consider the following factors: submitting forged or altered right certificate; submitting false assessment opinions and expert opinions on infringement comparison; sending notification despite knowing that the right is unstable; knowing that the notification is wrong but still failing to withdraw or correct in time; repeatedly submitting erroneous notifications, etc.

If e-commerce platform operator or business operator in the platform initiates a lawsuit before the people’s court on the ground of the losses caused by erroneous notification or the notification issued out of bad faith, it can be heard together with the case involving IP disputes on the e-commerce platform.

7.According to Article 43 of the E-Commerce Law, the declaration of non-infringement submitted by the business operator in the platform to the e-commerce platform operator generally includes:  real identity information of the business operator in the platform; information of the product or service that can be accurately positioned and requires for necessary termination measures; preliminary evidence proving there is no infringement, e.g. ownership certificate, authorization certificate; written guarantee of the authenticity of the declaration, etc. The declaration should be in written form.

Where the declaration involves patent rights, the e-commerce platform operator may require the business operator in the platform to submit materials such as descriptions of the comparison of technical features or design features.

8.When determining whether the declaration made by the business operator in the platform is out of bad faith, the people’s court may consider the following factors: providing forged or invalid right certificate and authorization certificate; declaration containing false information or being obviously misleading; sending the declaration  despite that an effective judgment or administrative decision affirming the infringement has been attached with the notification; knowing that the content of the declaration is wrong but still failing to withdraw or correct in time.

9.Under urgent circumstance that IP right holder’s legitimate interests will suffer irreparable damages if immediate measures such as taking the product off the shelf are not taken by e-commerce platform operator, they may apply to the people's court for preservation measures pursuant to Article 100 and Article 101 of the Civil Procedure Law of the People’s Republic of China.

Under urgent circumstance that the legitimate interests of the business operator in the platform will be irreparably damaged if e-commerce platform operator does not immediately restore the product link, the notifying party does not immediately withdraw the notification or stop sending the notification, etc., they may apply to the people's court for preservation measures according to the law and stipulations stated in the preceding paragraph.

If the request filed by the IP right holder or the business operator in the platform complies with the law, the people's court shall support it according to law.

10.When judging whether the e-commerce platform operator has taken reasonable measures, the people’s court may consider the following factors: preliminary evidence of infringement; possibility of infringement; scope of influence of infringement; specific circumstances of infringement, including whether it is malicious infringement, repeated infringements; effectiveness of preventing the damages from further expansion; possible impact on the interests of business operators in the platform; service types and technical conditions of the e-commerce platform, etc.

Where if the business operator in the platform has evidence to prove that the patent right involved in the notification has been invalidated by the CNIPA, and based on which the e-commerce platform operator suspends necessary measures, if the IP right holder requests people’s courts to confirm that the e-commerce platform operator has not taken the necessary measures in time, the people's court shall not support it.

11.Where e-commerce platform operator has one of the following circumstances, the people’s court may determine that it “should be aware of” the existence of the infringement:

(1) Failing to fulfill legal obligations including formulating IP protection rules and reviewing the operation qualifications of business operators in the platform;

(2) Failing to review the right certificate of the operators whose store type in the platform is marked as “flagship store”, “brand store”, etc.;

(3) No effective technical means have been taken to filter and block the links of the infringing products that contain the words “high-quality counterfeit”, “fake goods”, etc., and the links of infringing products that have been put on the shelves again after the complaint is established;

(4) Other circumstances where reasonable review and duty of care are not performed.