Another 26 marks gain well-known status

China

The Trademark Office (TO) of the State Administration of Industry and Commerce has published a list of 26 trademarks recognized as well-known marks pursuant to the Rules on the Recognition and Protection of Well-Known Trademarks, which came into force on June 1 2003 (see Regulations for recognition and protection of well-known marks in force). This adds to a previous list published in February (see Forty-three marks receive well-known status under new rules).

Of the 26 trademarks in the new list, 11 - all foreign - were granted well-known status in opposition proceedings. They include DUPONT, FERRARI, JAGUAR and MCDONALD'S in Latin characters, and DISNEY in Chinese characters. The remaining 15 trademarks, which belong to Chinese companies, were granted the status in the course of trademark enforcement proceedings.

Since the enactment of the Rules on the Recognition and Protection of Well-Known Trademarks, the TO has received a large number of applications for recognition of well-known status. So far, 14 applications have been rejected for failure to fulfil the criteria set out in Article 13 of the Trademark Law. Another 33 marks were refused recognition because of insufficient evidence proving that the marks (i) were commonly known by the relevant public, and (ii) enjoyed substantial reputation in China.

It is worth noting that if a mark has been refused well-known status, no application for recognition can be made for the same mark based on the same facts for one year after the TO has refused to grant well-known status.

For a more detailed discussion of the protection of well-known marks in China, see Well-known mark protection in China, Hong Kong, Macau and Taiwan.

Rubya Ramjahn, Johnson Stokes & Master, Hong Kong

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