Introduction

On 12 September 2020 the Supreme People's Court promulgated two judicial interpretations regarding IP rights disputes that involve internet service providers (ISPs):

  • the Reply to Several Issues Concerning the Application of Law in Online IP Rights Infringement Disputes, which applies to all ISPs; and
  • the Guiding Opinions on the Trial of Civil IP Rights Cases Involving E-Commerce Platforms, which target e-commerce platforms.

This article summarises the key points of these two judicial interpretations.

Points which apply to all ISPs

Rights holders may apply for court injunctions to order ISPs to take measures to remove, block or disconnect any infringing links. However, ISPs may terminate such measures where:

  • an online service user submits a non-infringement statement in response to the rights holder's notice; and
  • the rights holder files no civil litigation or administrative complaints against the infringing links within a reasonable period.

The reasonable period may be extended where delays are caused by exceptional circumstances beyond the rights holder's control (eg, notarisation and legalisation procedures). However, it must not exceed 20 working days.

Where an online service user files a non-infringement statement in bad faith, the rights holder may claim punitive damages. Further, the rights holder may be exempt from any liability resulting from filing its complaint where it can prove that:

  • its initial complaint was based on factual flaws; and
  • it filed its complaint in good faith.

Points which apply to e-commerce platforms

A seller which operates on an e-commerce platform may also apply for a court injunction to order such platform to restore any links removed at the request of a rights holder where the seller's legitimate interests are likely to be irreparably damaged in the near future.

For complaints or non-infringement statements which involve patents, e-commerce platforms may require the submission of a comparison of the technical or design features. Where a design or utility patent is involved, e-commerce platforms may further request the submission of a National Intellectual Property Administration appraisal report regarding such patent's novelty.

Examinations will consider:

  • whether it is possible to ascertain bad faith;
  • whether e-commerce platforms have taken reasonable measures; and
  • whether e-commerce platforms knew or should have known about the infringement.

Comment

These two judicial interpretations will benefit rights holders and help to prevent infringement of IP rights online – for example, by:

  • allowing court injunctions;
  • providing rights holders with a longer grace period in which to take legal action;
  • enabling rights holders to claim punitive damages based on bad-faith non-infringement statements; and
  • waiving rights holders' liability where their complaints are based on factual flaws and filed in good faith.