1. What special protection can be granted to a well-known mark?
Well-known marks that have been recognized in China can enjoy special protection in the following aspects:
a. The owner of a well-known mark that has not been registered in China has the right to prevent other parties from registering or using marks identical with or similar thereto in connection with same or similar goods.
b. The owner of a well-known mark that has been registered in China has the right to prevent other parties from registering or using marks identical with or similar thereto in connection with dissimilar goods.
c. The owner of a well-known mark that has been registered has the right to prevent other parties from using words identical with or similar to the well-known mark as trade name or a domain name.
d. The infringer will bear much heavier liabilities for infringing the rights of a well-known mark.
2. When and where to file a request for recognition of a well-known mark?
Currently, China adopts the principle of passive recognition of well-known marks. This means that a request for recognition of a well-known mark can only be filed when there is legal dispute. If there is no legal dispute, no authority will accept a request for recognition of a well-known mark.
According to Article 5 of the Regulations for the Implementation of the Trademark Law, where a dispute arises in the procedures of trademark registration or trademark review and adjudication, the interested party may file a request for recognition of a well-known mark with the CTMO in an opposition procedure, or with TRAB in a review or cancellation procedure.
According to Article 45 of the Regulations, if the use of a trademark is in violation of the provisions of Article 13 of the Trademark Law, an interested party may request recognition of a well-known mark with the local AIC, and also file a request to stop the use of a trademark which is in violation of Article 13 of the Trademark Law.
If an interested party lodges a law suit with a court, it is possible to make a request for the recognition of a well-known mark at that time.
3. What evidence is required for recognition of a well-known mark?
According to the Provisions for the Recognition and Protection of Well-known Marks, an applicant for recognition of a well-known mark should provide the following kinds of evidence to prove that the mark is well-known:
a. Materials showing awareness of the trademark among the relevant public in China.
b. Evidence showing the continuous use of the trademark, including those relating to the use, registration history, and areas.
c. Evidence showing the duration of time, degree and geographical range of any publicity of the mark, including, for example, how and where the advertising and promotion have been carried out, the type of media for such promotion, and advertising expenditures.
d. Any record indicating that the applied-for mark has been protected as a well-known mark, including evidence proving that the mark has been protected as well-known in any region in China or other countries/regions.
e. Any other evidence indicating that the mark is well-known, including the sales revenue, output, profits, taxes and distributing area for the goods bearing the marks for the last three years in China.
4. If my trademark is very well-known in my country, and also in many other countries, can it be recognized as a well-known mark in China?
One of the most important factors considered by the Chinese Court of competent trademark authorities is whether the mark is well-known worldwide. It is not, however, the sole factor in making the determination of whether the mark will be recognized as a well-known mark in China.
The time of use, reputation and promotion of the trade mark in China are all very important factors in deciding whether a trademark is well-known or not. If a trademark is well-known in many countries outside China, but has never been promoted in China and is not familiar to the Chinese public, it is unlikely that the trademark will be recognized as a well-known mark.
5. How long is the validity period if a trademark is recognized as a well-known mark?
In China, the recognition of a well-known mark is determined on a case by case basis. If a mark is recognized as well-known in one case, it is only valid for that particular case. In future cases, the record can be used as a references, but cannot be used as the basis for making a determination of whether there will be recognition of well-known mark by the administrative organs or courts. However, in a legal suit, if there is no challenge to the recognition of the mark as well-known, the court may accept the fact that the mark is well-known.
