Shufang He

 

RayYin & Partners P.R.C. Lawyers
Room 02 15/F, Office Tower15, 39 Dongsanhuan Zhonglu Chaoyang District, Beijing 100022, P.R.CHINA
Tel: 0086-10-58693072   0086-10-58691455

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Website: www.rayyinlawyer.com

 

In 2008, above 200 trademarks were recognized as well-known trademarks by PRC Trademark Office of the State Administration of Industry and Commerce (“Trademark Office of SAIC”) and Trademark Review and Adjudication Board (hereinafter “TRAB”) through trademark management and trademark oppositions. Well-known trademarks refer to trademarks that are known to 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 compared with a common trademark. For the owner, a well-known trademark is a valuable and intangible asset with significant commercial value.

Due to the traditional conception, many enterprises are not aware of the criterions of being approved as well-known trademarks; they lost the opportunities to be considered as well-known trademarks. After China entered into WTO, China amended relevant laws and regulations such as PRC Trademark Law and its implementing regulations so as to perform relevant undertakings. 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 is to address the criterions of a well-known trademark and the processes for recognizing a well-known trademark so as to protect the trademark right of the applicant.

 

1. Accreditation Criterion of Well-known Trademarks

In accordance with P.R.C. Trademark Law, when recognizing a well-known trademark, the following factors shall be 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) the record of protection of the trademark as a well-known trademark; 5) and other factors associated with the trademark's being well known

 

2. How to Make Your Trademark Well-known

In general, trademarks can be recognized as well-known through administrative and judicial means. Recognition by administrative means refers to recognition made by Trademark Office of SAIC and TRAB and recognition by judicial means mainly refers to the passive recognition made by the people’s court.

 

1) Trademark can be recognized as Well-known by Trademark Office of SAIC

In accordance with Recognition and Protection of Well-known Trademarks Provisions, if a party believes that a third party's preliminarily approved and gazetted trademark violates the Trademark Law, such party may file an opposition with the Trademark Office of SAIC in accordance with Trademark Law and its Implementing Regulations and submit relevant materials substantiating that its trademark is well-known; if a party requests protection for its well-known trademark because such party believes that a trademark being used by a third party constitutes a reproduction, an imitation, or a translation of a well-known trademark that has not been registered in China and, it may submit written request to prohibit the use of the trademark and submit relevant materials substantiating that its trademark is well-known to the municipal (district, prefectural) level or higher administration of industry and commerce of the place where such case arises. At the same time, the party shall send a copy of such request and materials to the AIC of provincial level in the place where the party locates. That is to say, Trademark Office of SAIC has the right to recognize a well-known trademark during the trademark opposition and trademark administration.

 

2) 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 Trademark Law, it may apply to the TRAB  to cancel the registered trademark and submit relevant materials substantiating that its trademark is well-known. Accordingly, both the Chinese applicants and foreign applicants who have not registered a trademark in China can apply the protection of well-known trademark with TRAB in light of the foresaid provisions.

3) Trademark can be Recognized as Well-known by the Court

If a case related to the trademark dispute arises, the parties can apply for recognition of well-known trademarks with the People’s court. According to the application of the party, the court shall make a decision whether the trademark is well-known or not under the circumstance of the dispute case and as per the international principle of “passive protection and determination in 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 is well-known or not according to law and based on a party's requests and the facts of the case. However, it should be noted that the recognition of well-known trademarks made by the judgment of the court will only have binding force on the single case and is not necessarily influence other cases.

Compared with common trademarks, well-known trademarks have good reputation and have strong marketing competitive strength. Also, owners of well-known trademarks may obtain wider legal protection. Thus, trademark owners shall attach importance to its trademarks so as to enhance their market share.