Regulations for recognition and protection of well-known marks in force

The Regulations for Recognition and Protection of Well-Known Marks 2003 will come into force in the People's Republic of China this weekend. The regulations replace the 1996 version and further clarify the implementation of the Trademark Law.

The most important aspects of the new regulations are the following:

• A 'well-known mark' is defined as "a mark known to the relevant public of China and enjoying a relatively high degree of fame". The mark need not be registered in China.
  
  
• The body responsible for granting a mark with well-known mark status is the Trademark Office. Provisions under the Trademark Law, stating that a trademark owner involved in an infringement dispute may apply to the Administration for Industry and Commerce (AIC) handling the dispute to accord well-known mark status to its mark, are further clarified. Material supporting the application for well-known mark status should be submitted to the local AIC for onward transmission to the provincial AIC and from there to the Trademark Office of the national AIC. The Trademark Office will then issue a decision within six months. Although the regulations are silent on this issue, it is thought that the underlying dispute will be stayed until the Trademark Office decides whether to grant well-known mark status.
  
  
• The criteria for granting well-known mark status are set out in Article 14 of the Trademark Law. The regulations state that it is not necessary to satisfy all of the criteria and the Trademark Office will consider any relevant circumstances.
  
  
• Once a mark has been granted well-known mark status, it may be afforded the same protection in subsequent cases involving similar issues, provided that such status is unchallenged, or if challenged, no evidence disproving the reputation of the mark is submitted. Where a mark has been refused well-known mark status, applicants may not file a new application using the same material within one year of the refusal.

Yvonne Chua and Howard Tsang, Wilkinson & Grist, Hong Kong