Before filing a trademark infringement lawsuit, the rights holder generally needs to make some preparations. We believe that in order to achieve success in litigation, one should first carefully study and establish a litigation strategy. Litigation strategies generally involve the following aspects: where to fight (Where); when to fight (When); whom to fight (Whom); and what kind of trademark to choose (Which Trademark).

1. The choice of the place of prosecution (Where)

This is equally important not only for foreign parties, but also for domestic parties. Because according to the "Civil Procedure Law", the lawsuit is generally filed at the defendant's domicile. However, because it is difficult to identify infringement in this type of intellectual property case, if you choose the defendant’s domicile to prosecute, you will often be interfered by local protectionism. Local protectionism is a common phenomenon not only in foreign-related cases, but also in cases involving only domestic parties. Therefore, in trademark infringement litigation, how to choose the jurisdiction for litigation is very important. According to the judicial interpretation of the Supreme People's Court, making full use of the place where the infringement occurred is a good option for changing the place of jurisdiction. In previous cases, through investigation and evidence collection of infringements, lawyers have chosen to file lawsuits in courts other than the place where the defendant is domiciled. By doing so, the case will be much less likely to be subject to outside interference.

2. Choice of timing for litigation (When)

What time to choose to sue, whether to issue a warning letter before suing, and whether to negotiate first and then litigate, or to litigate first and then negotiate. These issues should also be considered before starting litigation. The choice of timing is different in different cases. After completing the preliminary work of fixing evidence, lawyers can selectively issue legal letters to communicate and warn infringers whose infringements are not serious, and the main targets of litigation and claims should be attacked with all their might. For other secondary targets, "negotiation" and "fighting" plans are adopted at appropriate times during the litigation process.

3. Selection of prosecution target (Whom)

This is also a key issue. This type of trademark infringement occurs in groups. However, it is impossible to bring all infringers to court in infringement litigation, which is unbearable in terms of time, money, and energy. If they all sue, the other party will form a powerful alliance, which will have influence on the entire industry and even national institutions. So, how to choose? The commonly used selection method here is to generally use medium-sized and private enterprises as the objects of litigation, and try to avoid choosing large state-owned enterprises. Who you choose to sue can have a subtle impact on your case. At the same time, it is also necessary to consider the selection of appropriate co-defendants for the court to accept the case.

4. Selection of protection topics (WhichTrademark)

This aspect was originally mainly aimed at patent infringement litigation. Choose a patent that is easy to fight, easy to obtain evidence, and has strong stability. De-litigation is an issue to consider in your litigation strategy. We also apply this to thinking about trademark cases. However, since the plaintiff in a trademark infringement case is likely to have more than one registered trademark, and the multiple registered trademarks belong to different categories, and the trademark images may be different, it is necessary to write more about the more powerful trademarks among them. Only in this way can the plaintiff's point of view be strongly supported and the outcome of the litigation will be more favorable. This judgment can be made based on my country's trademark law and the relevant norms used by the Trademark Office/Trademark Review and Adjudication Board of the State Administration for Industry and Commerce when handling trademark objections, trademark disputes, etc.

In addition to the choice of pre-litigation litigation strategy, there are still things that need to be paid attention to during litigation. Litigation mainly involves the application of litigation skills. Different agents have different preferences and different routines when handling cases, but there are some basic litigation skills:

1. Expert opinion

In intellectual property litigation, There is a clear difference in the degree to which Beijing courts and foreign courts rely on expert opinions.

In foreign-related intellectual property infringement litigation, foreign courts generally designate expert appraisal institutions to compare and identify the rights involved; while Beijing courts pay more attention to the self-statements of the parties. If the parties can clearly explain the case, the basis for their rights, evidence, etc., Usually there is no need for experts to provide opinions, which is closer to adversarialism.

2. Pre-litigation injunction

Almost all intellectual property right holders are very concerned about the issue of pre-litigation injunction, because the effect of pre-litigation injunction is very strong, and almost all rights holders hope that A pre-litigation injunction is used to enable the infringer to stop the infringement before filing a lawsuit.

To apply for a pre-litigation injunction, two conditions must be met. First, the evidence of infringement must be conclusive and clear; the determination of infringement must also be obvious and convincing. In addition, there must be evidence to prove that there will be irreparable losses if a pre-litigation injunction is not taken. The latter condition is difficult to meet in most cases.

3. Damages

It is not recommended that the parties raise their damages requirements too high in the lawsuit. Judging from the current practice of trademark trials in China, raising high damages does not bring any further benefit to the parties other than news hype. Because it is too difficult to prove according to the provisions of China's current Trademark Law and the compensation calculation method, most of the compensation in trademark infringement cases is the court's discretionary compensation, that is, statutory compensation, but the upper limit of statutory compensation is 500,000 yuan, so tens of millions of damages have to be claimed. In addition to paying high legal fees, the actual compensation received in the end will be far from the proposed figure. Furthermore, it may not be in the plaintiff's favor to seek high damages, as such a case would put unnecessary pressure on the court. In many trademark infringement cases, it is more appropriate to propose appropriate damages.

Trademark rights holders will consider the effectiveness and cost of safeguarding their rights. The overall situation of trademark litigation in China in terms of effectiveness and cost should be said to be relatively good.

Under China’s current legal system, it is firstly possible for foreign trademark owners to obtain trademark protection in China, and secondly, it is relatively timely. In terms of damages, as long as the amount of compensation is appropriate, the court will generally support it. The costs invested by the parties in trademark infringement litigation include attorney fees and the investment of the company's personnel. At this stage, it is impossible to make up for these through damages awarded by the court, and the difference between the two is relatively large. However, by filing infringement lawsuits, foreign rights holders will undoubtedly increase their market share in commercial competition. For infringing companies, losing the lawsuit will be a disaster for them, and their market reputation will be greatly reduced. Infringement litigation is a means of commercial competition, and it is relatively successful to use trademark litigation to protect rights.