Recently, a store A was found selling counterfeit spare parts of a well-known brand. The rights holder B owns the registered trademark for this brand in China, and the designated goods under the trademark includes the spare parts sold by store A. Due to the high sales volume of store A, rights holder B reported the case to the local police. During the case evaluation, the police requested that rights holder B confirm whether it separately supplies the spare parts to the market or only provides complete products. If the rights holder only supplies complete products and does not offer the spare parts separately, this may constitute a case of "no actual original goods bearing registered trademarks," making it difficult to establish the crimes of "counterfeiting a registered trademark" or "selling goods with counterfeit registered trademarks."

Judicial Dilemmas

Article 213 of the Criminal Law stipulates that, whoever, without permission from the owner of a registered trademark, uses a trademark which is identical to the registered trademark on the same kind of goods or services shall, if the circumstances are serious, be sentenced to fixed-term imprisonment of not more than three years and shall also, or shall only, be fined; or if the circumstances are especially serious, such person shall be sentenced to fixed-term imprisonment of not less than three years but not more than ten years and shall also be fined.

In practice, there is considerable controversy over the determination and comparison of "the same goods." One key issue is whether the allegedly infringing goods must not only fall within the scope of the designated goods under the registered trademark but also should be compared with the goods on which the registered trademark is actually used by the rights holder. If the rights holder has not actually used the registered trademark on the designated goods—that is, there are no actual original goods—can the alleged infringement still constitute a crime? In practice, there are both "pro-guilty" and "pro-innocence" viewpoints.

Pro-Guilty Viewpoint

The pro-guilty argument holds that whether such behavior constitutes the crime of counterfeiting a registered trademark should be analyzed based on the elements of the crime. The wording of Article 213 of the Criminal Law does not limit "the same goods" to goods actually used by the rights holder. Moreover, the Circular of the Supreme People's Court, the Supreme People's Procuratorate and the Ministry of Public Security on Issuing the Opinions on Some Issues Concerning Application of Law in Handling Criminal Cases of Intellectual Property Right Infringement, as well as the Interpretation of the Supreme People's Court and the Supreme People's Procuratorate on Several Issues Relating to the Application of Law in the Handling of Criminal Cases of the Intellectual Property Rights Infringement which just came into effect on April 26, 2025, clearly define the scope of comparison for "the same goods": the determination of "the same goods" should be made by comparing the goods approved for the registered trademark with the goods actually produced and sold by the alleged infringer. In short, regardless of the actual use of the trademark by the registrant, the benchmark for determining "the same goods" should always be the goods approved for the registered trademark. The following case adopted this viewpoint.

Burberry "Black Label" Case: From March 2021 to April 2023, Gong purchased raw materials and trademark labels without the permission of the trademark owner and instructed others to produce and sell various counterfeit "Burberry" branded clothing. Gong argued that the text trademark involved was the brand's "Black Label," which had not been actually used in the Chinese market. The first-instance court held that the claim that registered trademarks not in actual use should not be protected by criminal law lacks legal basis. The second-instance procuratorial authority stated that whether a registered trademark is actually used is not a requirement for trademark-related criminal cases, nor is it an element of the crime of counterfeiting a registered trademark, and thus recommended upholding the original decision.

Pro-Innocence Viewpoint

The pro-innocence argument holds that if there is no actual original goods bearing registered trademarks, the counterfeit goods do not compete with actual original goods for market share or cause economic losses to the trademark owner. A literal interpretation of "counterfeiting" implies passing off fake goods as genuine, which requires the existence of genuine goods as a reference. To determine whether the crime of counterfeiting a registered trademark has been committed, it is necessary to compare the goods sold/produced by the accused with those actually used by the trademark owner to confirm whether they are "the same goods." The following two cases adopted this viewpoint.

Gree Bath Heater Case: From 2009 to March 2012, Xue knowingly purchased a large quantity of counterfeit "Gree" bath heaters from Qiu and sold them. Investigations revealed that Zhuhai Gree Electric Appliances Co., Ltd. owned the registered trademark "Gree (graphic + text)," approved for use in Class 11 goods, including bath heaters. However, Gree Electric Appliances Co., Ltd. confirmed that it had never produced bath heaters. The court ruled that since Gree had not produced bath heaters, the sale of such goods could not be considered a crime of selling goods with counterfeit registered trademarks. The manufacturer Qiu was acquitted due to insufficient evidence, and Xue's sales of "Gree" bath heaters were also deemed non-criminal.

Merlin Gerin Socket Case: From May 2013 to September 2014, suspect Chen was investigated for selling "Merlin Gerin" sockets. After the case was transferred to the procuratorate for review, it was found that the trademark owner, Schneider Electric Investment Co., Ltd., had never used the "Merlin Gerin" text trademark on the goods sold by Chen nor authorized its use on such goods. The procuratorate ultimately decided not to prosecute the case.

Legislative Appeals

Research indicates that the debate between the pro-guilty and pro-innocence viewpoints has persisted for a long time, with the pro-guilty stance once dominating. Regarding whether cases without actual original goods bearing registered trademarks should be criminalized, we deem it is necessary to consider from the following aspects:

1：From the perspective of the legal interests protected by criminal law, this crime safeguards the exclusive rights of registered trademarks rather than directly protecting specific property interests. China's trademark registration system serves a dual function: it delineates clear boundaries for investment and operation for rights holders while providing identification criteria for the public and potential competitors, helping to distinguish genuine from fake goods and avoid infringement risks. If the scope of this crime is limited to goods actually used by the rights holder, the institutional value of trademark exclusivity cannot be fully realized. Even if the trademark owner has not yet engaged in business activities within the approved scope, the possibility of future market entry remains. In such cases, the infringer's preemptive actions essentially constitute an encroachment on potential market share, posing a clear danger to legal interests and thus warranting criminal regulation. Additionally, this crime aims to maintain normal market order. Trademarks often carry corporate reputation and product quality, and unauthorized use of registered trademarks exploits this reputation. Moreover, if counterfeit goods have quality issues, they harm corporate credibility and consumer interests, disrupting fair and orderly market competition.

2：In the case mentioned at the beginning of this article, even if rights holder B does not supply the spare parts separately, these parts are essential components of its complete products. The allegedly infringing spare parts not only bear the registered trademark of rights holder B but have also entered the market in large quantities, causing consumer confusion. If such behavior is not strictly regulated by criminal law, it may lead to infringers producing or selling individual components separately to evade legal consequences and seek illegal profits. Civil remedies for infringement are often insufficient to deter infringers effectively.

3：Article 64 of the Trademark Law states that if the owner of a registered trademark cannot prove actual use of the trademark within the past three years or losses due to infringement, the alleged infringer shall not be liable for compensation. To maintain legal consistency and the "modesty" of criminal law, if cases without actual original goods bearing registered trademarks are to be criminalized, registered trademarks that have not been used on approved goods for three consecutive years should also be excluded from protection under this crime.

In conclusion, such cases should not adopt a one-size-fits-all approach of guilt or innocence but should instead be adjudicated based on specific circumstances. To fully protect the rights and interests of registered trademarks and promote the healthy and orderly development of the market economy, it is imperative to improve legislation and establish a more scientific and reasonable regulatory system, thereby effectively resolving the current dilemmas in judicial practice.