New Chinese Provisions on Well-Known Trademarks Become Effective

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Examining the new Chinese regulations that deal with the determination of well-known trademarks. The new regulations are a welcome development and brings China into line with many more developed nations.

On August 3, 2014, the latest amended Provisions on the Determination and Protection of Well-Known Trademarks (“the 2014 Provisions”) became effective. This is another amendment issued by the SAIC following the amendments to the Implementations of the Trademark Law and the TRAB Rules in order to cooperate with the implementation of the new Trademark Law since this May.

The 2014 Provisions
has 21 articles and some major changes are summarized as followings:

Changes in defining the well-known trademark

According to the 2014 Provisions, “well-known trademark” refers to a trademark that is familiarly known by the relevant public in China. By comparing it with the definition of the previous version, there are two points worth of attention:

1) It adopts the expression of “familiarly known” instead of “widely known” and deletes the expression of “enjoy a relatively high reputation” in order to keep consistency with the new Trademark Law.
2) Although many institutions suggested deleting expression “in China” from the definition during the period of soliciting opinions for the draft thereof, the 2014 Provision still maintains the expression “in China” in the definition which means that a well-known trademark recognized outside China will not be necessarily recognized and protected as a well-known trademark in China.

Principle for dealing with the “well-known” trademark cases

The 2014 Provisions adds a new article to specify the principle of “case-by-case identification and passive protection” to guide the well-known trademarks cases. It means that being identified as well-known trademark by the empowered authorities is not a kind of administrative approval or award/honor initiated by the said authorities. Instead, it reflects that such authorities are only determining facts of well-known necessary to deal with a trademark case upon request of the party concerned in accordance with relevant laws and regulations, and such facts are the premises for the trademark to be protected from being duplicated, imitated or translated in accordance with Article 13 of the Trademark Law. Furthermore, there is no so-called “valid period” for an identified well-known trademark since it is only for a specific individual case. However, the identification as “well-known” trademark by the empowered authorities may be used as a reference of protection record for the subsequent similar cases.

Evidence for proving the “well-known” trademark

In accordance with Article 9 of the 2014 Provisions, it specifies materials that can be used as proving the “well-known” factors, including:

1) the relevant materials proving the degree to which the trademark is known among the relevant public;
2) the relevant materials proving the length of continuous use of the trademark, such as materials related to the use,history of registration and scope of the trademark. In case of an unregistered trademark, it shall provide materials that proving continuous use of the trademark no less than five years. In case it is a registered trademark, it shall provide materials that proving registration no less than three years or continuous use of the trademark no less than five years;
3) the relevant materials proving the continuous length, degree and geographical scope of any publicity work for the trademark, such as materials in the recent three years related to the form of advertising and publicity, and sales promotion activities, geographical scope, types of advertising media and amount of investment in advertising etc.;
4) the relevant materials proving the records of protection of the trademark as a well-known trademark in China or in other countries or regions;
5) other evidence proving that the trademark is well-known, such as materials related to the output, ratio of market share, net profit, ratal and sales regions of the main commodities that use the trademark in the recent three years.

The newly added “three years” and ”five years” abovementioned, means the three/five years prior to the registration date of a trademark that is opposed or applied to be declared of invalidity, as well as the date of applying for well-known trademark protection in trademark violation cases.

According to the official from the CTO/TRAB, during identifying a well-known trademark by the CTO or the TRAB, the said authorities will take all factors listed in the Article 14.1 of the Trademark Law and those mentioned above into consideration; however, it is not mandatory to fulfill all the said factors to be identified as well-known trademark.

Fei Dang is an Associate in the MMLC Group.

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Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.

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