390 marks recognized as well known

In April 2009 390 marks were recognized as well known in China by the State Administration for Industry and Commerce (SAIC). Such marks include SHARP, NISSAN, JVC, GOOGLE, MINOLTA and CHIVAS, as well as many other Chinese marks.

The legal basis for the protection and recognition of well-known marks stems from the Trademark Law. Both the SAIC and the Supreme People’s Court have issued their own guidelines and rules, which are binding only on the trademark authorities and the courts. On April 17 2003 the SAIC issued the Regulation for the Recognition and Protection of Well-Known Trademarks, which became effective on June 1 2003. The Supreme People’s Court's Interpretation of Certain Questions on Application of Law Relating to the Protection of Well-Known Marks in the Adjudication of Civil Disputes was approved on April 23 2009 and came into effect on May 1 2009 (for further details please see "Opinion on protection of well-known marks in civil disputes issued").

The proprietor of a mark which has been recognized as well known enjoys the following rights:

If the well-known mark is not registered in China, the owner may stop the use and prevent the registration of an identical or similar mark in respect of identical or similar goods and/or services if such use or registration is likely to cause confusion.
If the well-known mark is registered in China, the owner may stop the use and prevent the registration of an identical or similar mark in respect of dissimilar goods and/or services if such use or registration is likely to mislead the public and prejudice the interests of the owner.
The owner may prevent the use and registration of a company name which is identical or similar to its well-known mark if such use may mislead or confuse the public.

Well-known marks are recognized on a case-by-case basis - and only when a trademark dispute arises - by:

the Trademark Office or Trademark Review and Adjudication Board (TRAB) (during opposition or cancellation proceedings);
the people’s courts (in an appeal against a decision of the TRAB on trademark infringement and/or unfair competition); and
the local Administration for Industry and Commerce (in an administrative action for trademark infringement), but the ultimate decision is made by the Trademark Office.

The authorities will recognize the well-known status of a mark only if, absent such status, the trademark owner would not have a valid cause of action.

To qualify as a well-known mark, a trademark must be extremely well known in China. Foreign reputation is not deemed to be very relevant. Once a mark has been recognized as well known in particular proceedings, it will benefit from broader protection in subsequent cases, unless its well-known status is successfully challenged.

Howard Tsang, Wilkinson & Grist, Beijing

390 marks recognized as well known

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