Legal Protection of Well-known Trademarks in China

Publish Time:2015-10-30Source: Click:
Legal Protection of Well-known Trademarks in China

Yi Zhou

March 2011

 

The PRC Trademark Office of the State Administration of Industry and Commerce ("Trademark Office of SAIC") and the Trademark Review and Adjudication Board (hereinafter "TRAB") have administratively recognized more than 1600 well-known trademarks through trademark registration, opposition, and cancellation proceedings. In addition, more than 400 trademarks have been recognized by the People;s Court during the resolution of litigated disputes. Well-known trademarks are defined as trademarks that are known to the relevant public and have a good reputation. With its renowned, good reputation and distinctive characteristics, a well-known trademark can bring its owner economic interest and competitive advantages as compared with a common trademark. For the owner, a well-known trademark is a valuable and intangible asset with significant commercial value.

Previously, many enterprises lost the opportunity to have their trademarks recognized as well-known trademarks because they were not aware of the criteria for judging whether a trademark merits the designation "well-known trademark" or of the process through which approval of this designation is obtained. However, China has amended relevant laws and regulations such as PRC Trademark Law and its implementing regulations to fulfill promises that it had to make in order to be permitted to join the World Trade Organization . The Supreme People's Court promulgated Several Issues Concerning the Application of Law to the Trial of Civil Dispute Cases Involving Computer Network Domain Names Interpretation and Several Issue on the Application of Law in Trail of Trademark Civil Dispute Cases Interpretation in 2001 and State Administration for Industry and Commerce issued Recognition and Protection of Well-known Trademarks Provisions in 2003. Trademark applicants both in China and from abroad can apply for recognition of well-known trademarks in accordance with the aforesaid laws, regulations, and interpretations. This article will address the criteria that a trademark must meet in order to be recognized as a well-known trademark and explain the process for getting a trademark recognized as a well-known trademark.

 

1. Accreditation Criteria of Well-known Trademarks

In accordance with P.R.C. trademark law, when recognizing a well-known trademark, the following factors are considered: 1) the degree of awareness of the trademark among the relevant public; 2) the length of continuous use of the trademark; 3) the continuous length, degree and geographical scope of the publicity for the trademark; 4) efforts that the owner has made to protect the trademark ; and 5) other factors associated with the trademark's being well known. 

 

2. How a Trademark Gets Recognized as "Well-known"

In general, trademarks can be recognized as well-known through administrative and judicial procedures. Recognition by administrative procedures refers to recognition by Trademark Office of SAIC and TRAB, while recognition by judicial procedure refers to passive recognition by the People's Court.  

A) The Trademark Office of SAIC has the right to recognize a well-known trademark during trademark opposition proceedings. In accordance with the Recognition and Protection of Well-known Trademarks Provisions, if a party believes that a third party's preliminarily approved and published or registered trademark violates Chinese trademark law because the applied-for mark is identical or confusingly similar to its own well-known trademark, then such party may apply to the Trademark Office of SAIC for rescission of its approval of the registration. In connection with its application, the objecting third party must submit relevant materials to prove that its trademark is well-known.

 

B) Trademark can be Recognized as Well-known by TRAB

Under the Recognition and Protection of Well-known Trademarks Provisions, if a party believes that a third party's registered trademark violates the Chinese trademark is identical or confusingly similar to its own well-known trademark, then it may apply to the TRAB to cancel the registered trademark and submit relevant materials substantiating that its trademark is well-known. This procedure enables both Chinese applicants and foreign applicants who have not registered their trademarks in China to apply for the protection of well-known trademarks with TRAB.

C) Trademark Can be Recognized as Well-known by the Court

If a trademark dispute leads to a lawsuit, then one of the parties to the dispute can apply to the People’s Court for recognition of a well-known trademark. The Court will decide whether the trademark is well-known under the circumstances of the lawsuit and as per the international principle of “passive protection and determination on a case by case basis”.

In accordance with Several Issues Concerning the Application of Law to the Trial of Civil Dispute Cases Involving Computer Network Domain Names Interpretation, when trying a Domain Name Dispute Case, the People's Court may decide whether a registered trademark involved in the case is well-known according to law and based on a party's request and the facts of the case., It is noteworthy, however, that the recognition of well-known trademarks made by the judgment of the Court will only be binding on the specific case at issue and will not necessarily influence other cases.

 

3 How to Protect a Well-known Trademark  

If a party objects to another party's trademark because it believes that the applied-for trademark constitutes a reproduction, an imitation, or a translation  of its own trademark, which has been recognized as being well-known, or is confusingly similar thereto, then such party may submit a written request to prohibit registration of the trademark to which it objects. The objecting party must submit relevant materials proving that his trademark is well-known to the local AIC and make a record to the province AIC.

In conclusion, there are several different ways for a trademark owner to enhance the protection to which it is entitled by having a trademark acknowledged as a "well-known trademark".

RayYin and Partners provides a full array of intellectual property services including counseling, procurement, monitoring and enforcement. To find out how we can assist you with trademark or other intellectual property matters, please contact Yi Zhou at zy@rayyinlawyer.com.

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