Perspective | Determining Joint Infringement by the Owners of Trademarks on Infringing Products in Trademark Infringement Cases
Published:
2025-12-05
In trademark infringement cases, it has become increasingly common for rights holders to name the owner of the allegedly infringing mark as a co-defendant and claim that this owner should bear joint and several liability, especially when the infringing products bear the owner’s own registered trademark. This article analyzes such cases from various angles—including factual findings, legal application, practical challenges, and corresponding countermeasures—providing valuable reference for handling similar cases.
In trademark infringement cases, it has become increasingly common for rights holders to name the owner of the allegedly infringing mark as a co-defendant and claim that this owner bears joint and several liability, especially when the infringing products bear the owner’s own registered trademark. This article analyzes such cases from various angles—including factual findings, legal application, practical challenges, and corresponding countermeasures—providing valuable reference for handling similar cases.
I. Fact Finding
From a factual perspective, enterprises engaging in trademark infringement generally possess a certain level of awareness about trademark protection and most of them hold their own registered trademarks. They recognize the influence and commercial value of trademark signs yet still prominently use well-known trademarks belonging to others in the production of goods, hoping thereby to gain higher market recognition and competitiveness, boost sales, and reap greater profits. The main circumstances under which enterprises commit trademark infringement are as follows: First, infringement caused by cognitive misconceptions—specifically, the one-sided belief that only marks bearing the symbols “®” or “TM” constitute trademark usage, leading to the mistaken assumption that once a company’s own trademark is marked, it no longer amounts to trademark infringement. Second, prominently using another party’s word trademarks on packaging and product names, with the mistaken belief that such use is descriptive and therefore does not constitute trademark infringement. Third, deliberate, intentional commercial speculation—where companies deliberately hitch a ride on the popularity of other people’s trademarks, believing that this quick boost in brand awareness can enable them to rapidly capture large shares of regional markets within a short period, yielding substantial profits far exceeding the associated risks, thus driving their speculative business practices.
Among the scenarios mentioned above, the first two are relatively common. Consequently, in many trademark infringement cases, the proprietary registered trademarks displayed on the infringing products often belong to the company itself, its legal representative, or its shareholders. However, there are also instances where the trademark is secretly owned by a business partner. Therefore, determining how to add the owner of the infringing product’s own trademark as a defendant represents a significant and challenging issue in practice.
II. Applicability of Law
From the perspective of legal application, the legal basis for the rights holder to sue the trademark owner of an infringing product as a joint tortfeasor is as follows: First, according to Article 57, Paragraph 6 of the Trademark Law, intentionally providing facilitating conditions for acts that infringe upon another party’s exclusive right to use a trademark, or assisting others in committing such infringing acts, constitutes trademark infringement. Second, in accordance with the Supreme People’s Court’s Reply on Whether Victims of Product Infringement Cases May File Civil Lawsuits Against the Trademark Owner of the Product as Defendant, any enterprise or individual who affixes their name, corporate name, trademark, or other identifiable markings to a product, thereby indicating that they are the manufacturer of the product, shall be deemed a “producer” under the Civil Code of the People’s Republic of China and the Product Quality Law of the People’s Republic of China, thus providing a legal foundation for listing the trademark owner of the infringing product as a joint tortfeasor. Third, pursuant to Article 1168 of the Civil Code, which governs joint torts, when the trademark owner of an infringing product jointly commits an intellectual property infringement resulting in damage to others, they shall bear joint and several liability.
III. Practical Analysis
Although there is a certain factual basis and legal rationale for holding the trademark owner of an infringing product as a joint tortfeasor, judicial practice has increasingly tightened the criteria for identifying such trademark owners as joint tortfeasors. This is particularly true when the trademark owner is not a corporation, its legal representative, or a shareholder, but rather a business partner. On the surface, it may be difficult for rights holders to establish any connection between the trademark owner and the manufacturing enterprise. Especially when the trademark owner argues that they were unaware of the manufacturing enterprise’s use of their trademark, it becomes even more challenging for rights holders to obtain evidence such as cooperation agreements or proof of joint production. As a result, courts typically require rights holders to submit additional supporting evidence in order to establish that the trademark owner of the infringing product is a joint tortfeasor, thereby significantly increasing the rights holder’s burden of proof and the difficulty of protecting their rights. Therefore, it is necessary to provide more diverse and detailed evidence, coupled with arguments from multiple perspectives, to build a comprehensive and systematic chain of evidence and argumentation framework, thereby enhancing the likelihood that the trademark owner of an infringing product will be recognized as a joint tortfeasor.
IV. Countermeasures
According to the “Reply of the Supreme People’s Court on Whether Victims in Product Infringement Cases May File Civil Lawsuits Against the Trademark Owner of the Product,” the trademark owner of the infringing product shall be listed as a co-defendant for infringement. This reply merely clarifies that the trademark owner of the infringing product may file a civil lawsuit. Eligible defendant However, no basis has been provided to establish that the trademark owner of the infringing product would necessarily bear joint liability for damages. Therefore, if the rights holder wishes to hold the trademark owner of the infringing product jointly liable for damages, they will need to provide additional evidence to substantiate the existence of joint infringement. Given that the trademark owner of the infringing product and the manufacturing enterprise do not have a direct relationship—such as being the legal representative or shareholder—and instead maintain a cooperative relationship that is difficult for the rights holder to ascertain, the analysis can be conducted from the following perspectives:
First, comparison Trademark recognition The gap is significant: the trademarks of infringing products generally have much lower recognition—even some have never been used before—resulting in a stark disparity compared to the rights holder’s trademark. The use of an independent trademark on infringing goods does not provide any assistance or boost to their sales; beyond merely identifying the producer and taking the opportunity to enhance the trademark’s visibility, it serves no other purpose or significance.
Second, let’s analyze the reasonableness of use. If a manufacturing enterprise owns its own trademark, it is clearly much more convenient to directly use its own trademark—there is no need to use another party’s trademark. Moreover, since the enterprise already includes its own production information on the products, there is also no need to avoid pointing the infringing products toward itself by using someone else’s trademark. On the contrary, vigorously promoting one’s own trademark is entirely consistent with the normal logic of business operations. Therefore, in the absence of a cooperative agreement between the manufacturing enterprise and the owner of the infringing product’s trademark, there is absolutely no justification for the enterprise to use that trademark.
Third, verify the basis for cooperative relationships. Does the manufacturing enterprise have any history or foundation of cooperation with the trademark owner of the infringing products? Do the two parties have any business or financial transactions?
Fourth, the trademark owner of the infringing products has been negligent in protecting its rights. The trademark owner of the infringing products has long been engaged in the relevant industry and possesses extensive industry experience as well as a well-established network of contacts within the industry. Given that the infringing products are sold in the city where the trademark owner is located or within its business jurisdiction, it should have been aware that its trademark was being “misappropriated.” Even if it was unaware at first, by the time the rights holder initiated legal proceedings, the trademark owner had already obtained specific information about the merchants selling goods bearing its “misappropriated” trademark, including their addresses. Yet, the trademark owner failed to take any measures to stop this infringement—neither filing a complaint with the Administration for Market Regulation nor bringing an infringement lawsuit. This behavior amounts to tacit acceptance that the use of its trademark on the allegedly infringing products is appropriate, meaning the trademark owner acknowledges that its trademark continues to serve its intended function of indicating the source of the goods. Furthermore, the trademark owner also acknowledges that it either co-produced these infringing products or provided assistance in their production. Under such circumstances of neglecting to protect its rights, merely raising the defense that its trademark was “misappropriated” should not be upheld. Fifth, multiple trademarks owned by the infringing product’s trademark owner appear on various products manufactured by different enterprises, providing mutual corroboration. The trademarks displayed on the infringing products are subject to supervision by the Administration for Market Regulation, and their sole purpose is to indicate the source of the goods. In the absence of any other objections or conflicting information, all the available evidence points unequivocally and consistently to the same entity. The rights holder has presented sufficient evidence to establish this fact. Preponderance of evidence 。
V. Attorney’s Recommendations
When handling such cases, if the rights holder can provide more comprehensive and direct evidence to establish the fact of joint infringement, they will be in a stronger litigation position. This requires rights holders, during the initial stage of collecting evidence of infringement, not only to focus on the infringing products themselves but also to pay close attention to gathering evidence related to individuals who may be involved in joint infringement—such as the legal representatives of the manufacturing company, shareholders, and trademark owners. By striving to build a more complete chain of evidence, rights holders can significantly enhance their chances of success in litigation.
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