Judicial Interpretation on Protection of Well-Known Marks

On April 23, 2009, the Supreme People's Court of China issued a judicial interpretation on protection of well-known marks, which provides a legally binding guideline for courts in hearing trademark related civil disputes. The judicial interpretation, entitled “Interpretation on Issues Concerning the Protection of Well-Known Marks in Civil Disputes”, came into effect on May 1, 2009.

1. Background

According to Article 13 of the China Trademark Law, which provides framework for protection of well-known marks, an unregistered well-known mark blocks registration and use of a mark that is a reproduction, imitation or translation of the mark in respect of identical or similar goods/services, where use of such mark is likely to cause confusion; and a registered well-known mark blocks registration and use of a mark that is a reproduction, imitation or translation of the mark in respect of dissimilar goods/services, where use of such mark is likely to mislead the public and prejudice the interests of the registrant of the well-known mark.

When a mark is in conflict with other one, the mark owner may request a competent authority to recognize and protect his mark as a well-known mark. Specifically, in case of conflict over registration, the Trademark Office and the Trademark Review and Adjudication Board may recognize a mark as a well-known mark in opposition or cancellation procedures. In case of conflict over use, a recognition request may be submitted with a local office of administration for industry and commerce and the request then be transferred to the Trademark Office, which makes a decision. A court of law may also recognize a mark as a well-known mark when it is involved in infringement or unfair competition litigation.

2. Recognition of well-known marks

According to the Interpretation, well-known marks are defined as marks which are widely known to the relevant sector of the public in China.

The Interpretation establishes a doctrine of necessity, as it clearly states that only when necessary, a mark will be recognized as a well-known mark. The Interpretation specifies that necessity requirement is satisfied when a business uses a trade name which is identical with or similar to a well-known mark.

Evidences such as those showing market share or sales territories of, profits made or tax paid for the products bearing the mark; duration of use of the mark; the way, duration, extent, budget and geographical area of any promotion of the mark; and the reputation of the mark are acceptable to prove a mark is well known. If the same mark was recognized and protected as a well-known mark in other cases, it is helpful for the recognition.

The owner of a well-known mark shall assume the burden of proof. However, if a mark is widely known to the public in China, the burden of proof shall be eased, even released if the other party has no objection to the recognition. In case the same mark was recognized as a well-known mark in other cases, the owner of the mark shall not be released from the burden of proof unless the other party has no objection to the recognition.

The Interpretation emphasizes the doctrine of case-by-case recognition. Trying to avoid misuse of the recognition in product promotion campaigns, recognition of a well-known mark, as a part of factual discovery, shall be written in the reasoning part of a court judgment, instead of the holding part.

3. Protection of well-known marks

Obviously, the owner of a well-known mark may attack a trademark application or registration, or prohibit use of a mark, if the mark is a reproduction, imitation or translation of his well-known mark. The Interpretation goes further by providing a defense to the owner of an unregistered well-known mark. If sued by a registrant of a registered mark for infringement, the owner may defend himself arguing that the registered mark is a reproduction, imitation or translation of his unregistered well-known mark. Furthermore, the owner may counterclaim infringement of the registrant.

An injunctive relief may be granted against a registrant of a registered mark, prohibiting him from using his registered mark in case the mark is a reproduction, imitation or translation of a well-known mark, if the use constitutes infringement. However, such injunctive relief may not be granted after the mark has been registered for five years.

When a registered well-known mark is protected from being used in dissimilar goods, the degree of distinctiveness of the mark, the degree of recognition of the mark amongst the relevant sector of the public who uses the goods, and the degree of relevancy between the goods and those designated by the mark should be considered. Same factors should be taken into consideration when a registered well-known mark is in conflict with a trade name of a business engaged in non-competing goods.