30 September 2014Jurisdiction reportsXiang Gao

New rules for the protection of well-known trademarks

They came into effect 30 days from the date of publication and are intended to standardise well-known trademark recognition and better protect the legal rights of well-known trademark holders.

Article 14 of the new China Trademark Law stipulates the factors to be considered in affirming the well-known status of a mark, and also provides clarification on the venues for asserting well-known mark rights, including the China Trademark Office (CTMO), the China Trademark Review and Adjudication Board (TRAB), and the relevant courts designated by the Supreme Court of the People’s Republic of China (PRC).

The regulations are interpreted in respect of administrative recognition made by the CTMO and the TRAB, under the SAIC. Some important contents are summarised below.

Definition

The well-known trademark will refer to a mark that is widely known to the relevant public in China.

The relevant public will include consumers in connection with a certain class of goods or services on which the mark is used, other operators who manufacture the goods or provide the services, and the marketing people and related personnel in distribution channels.

Venues for administrative recognition

Concerning opposition cases, a party can submit a request for well-known recognition of its mark to the CTMO together with evidence to prove its mark has become well-known.

"a party can submit a request for well-known recognition of its mark to the CTMO together with evidence to prove its mark has become well-known."

Concerning cases of appeal against disapproval of a registration or a request for an announcement of invalidation, a party can submit a request for well-known recognition of its mark to the TRAB together with evidence to prove its own mark has become well-known.

This is a principle of case-by-case recognition and passive protection, ie, recognition of the well-known status of a trademark shall be based on the trademark holder’s request when it thinks its right is infringed, and it is to affirm a matter of fact necessary to be affirmed in a trademark case.

Evidential materials

In compliance with Article 14 of the new China Trademark Law, the regulations state more specifically what could be evidential materials:

1. Evidence proving the degree of knowledge of the relative public to a mark;

2. Evidence indicating the duration of use of the mark, such as evidence regarding the use of the mark or the history and territorial scope of the mark registration. If the mark is unregistered in China, materials proving its lasting use for no less than five years must be provided; if the mark is registered in China, materials proving registration for no less than three years or lasting use for no less than five years must be provided;

3. Evidence proving the duration, extent and geographical scope of any advertisement of the mark, such as the mode or geographical scope of its advertisement, the types of promotional media, and advertising volume, etc in the last three years;

4. Records proving the mark was ever protected as a well-known mark in China or other countries or regions; and

5. Other evidence proving that the mark is well-known, eg, proving sales revenue, market share, retained profits, amount of tax payment, etc, in the last three years.

The above-mentioned three years or five years refer to the specific period prior to the date of application for registration of the opposed mark, or that prior to the date of application for invalidation of the registered mark.

The standard for evidence requirement is still high. It is important for the trademark holders to consistently maintain enough evidence. In our experience, the chances of success decrease if a party provides insufficient evidence of use in China or is reluctant to provide some key evidence in China because of trade-secret concerns.

Other IP news

On June 6, 2014, the Office of Legislative Affairs of the State Council of the PRC released online the Copyright Law of the PRC for public comment by July 5, 2014.

On July 10, 2014, the Word IP Organization opened its China office in Beijing, its fifth external office.

On July 16, 2014, the Supreme People’s Court of China published the Decision on Amendments to Several Provisions of the Court on Issues Concerning the Application of Law in the Trial of Patent Dispute Cases, for public comment by August 15, 2014.

Xiang Gao is a partner at Peksung Intellectual Property Ltd and head of its trademarks department. He can be contacted at: gxiang@peksung.com

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