Although there has been disagreement in judicial practice as to whether the infringement of certification marks constitutes trademark infringement crimes such as 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, there are meanwhile a number of supporting precedents. We hold the view that the infringement of certification marks constitutes trademark infringement crimes such as counterfeiting registered trademark, and that it is of great necessity to list certification marks as the object of the crimes above and explicitly put certification marks under criminal protection. Our reasons are set out as follows:
1. Certification marks are either commodity marks or service marks
In accordance with Section 3, Article 3 of the Trademark Law, “certification marks refer to signs that are controlled by organizations having the capacity for supervision over certain goods or services and which are used by organizations or individuals other than such organizations on goods or services to certify the origin, raw materials, manufacturing method, quality, or other characteristics of such goods or services.”
Certification marks can therefore be either commodity marks or service marks, as per below:
(1) Based on the definition of categories of certification marks by the administration department of trademark registration
As stipulated in Article 2 of the Policy for the Registration and Administration of Collective Marks and Certification Marks (herein referred to as the Policy) promulgated by the State Administration for Industry and Commerce (herein referred to as the State AIC) in 1994, “A certification mark refers to a commodity mark or a service mark which is controlled by an organization with capacity to test and supervise a certain type of goods or services, and used by persons other than the said organization on goods or services, to certify their places of origin, manufacturing methods, quality, accuracy or other traits.” This Section was unchanged when the State AIC amended the Policy in 1998.
The State AIC deleted the definition of certification mark in Article 2 when releasing the new Policy in 2003 since the definition had been clearly set out in Section 3, Article 3 of the Trademark Law in 2001. However, it can still be inferred from the previous two promulgations and amendment of the Policy that the certification mark is clearly categorized as a commodity mark or service mark when defined by the administration department of trademark registration.
(2) Based on the practice of trademark registration
Depending on the different marked objects, trademarks are divided into two categories: commodity marks and service marks. In accordance with the Classification of Similar Goods and Services of CTMO and the Nice Classification, goods are categorized into 34 classes and services into 11 classes. An applicant must choose a class and names of goods or service to be registered from the above 45 classes. In the practice of trademark registration in China, an applicant must state clearly the class and name of the goods or service in the columns of “Class” and “Goods/Service Name” respectively when filling the Application Form for Trademark Registration. A trademark is either a commodity mark or a service mark. These two types of trademark fall within the category of “registered trademark”, and cover all the registered trademarks.
Depending on the special functions of the trademarks, commodity marks and service marks are, as set out in the Interpretation and Definition of the P.R.C. Trademark Law by the Trademark Office of the State AIC (China Industry and Commerce Press, 2003), further divided into normal trademarks, certification marks and collective marks. An applicant also needs to select “Normal Trademark”, “Collective Mark” or “Certification Mark” in the column of “Trademark Category” as well as filling in the class and name of the goods or service when filing the Application Form for Trademark Registration. The three types of trademarks also fall within the category of either commodity mark or service mark.
