In a recent case, the Beijing High Court applied Articles 13.1 and 31 of the Trademark Law 2001 to grant full protection to an unregistered trademark, and clarified the assessment criteria of well-known status in the internet industry.

When a trademark, which is unregistered in China, is confronted with the obstacle of a prior application or registration and the holder wishes to overcome this obstacle, Articles 13.1 and 31 of the Trademark Law (revised in 2014 and renumbered 13.2 and 32) can be cited.(1) Under Article 13.1 it is necessary to prove:

  • the well-known status of the unregistered trademark; and
  • that the junior trademark is likely to cause confusion.

Under Article 31, it is necessary to prove that the unregistered trademark has already been used and has acquired an 'influence' in China at the time when the junior trademark was filed, and that such a filing was 'improper'. In a recent case, the Beijing High Court applied both articles to grant full protection over an unregistered trademark.


Guangzhou KuGou Networks Ltd is a leading supplier of an interactive digital music service in China. KuGou Networks has been offering free music-streaming services to the public since 2004.

In July 2009, Shantou Lifeng Electric Appliances Ltd applied for the trademark '酷狗 & KUGOU' (KuGou in Chinese characters and pinyin) for the following services under Class 41:

"arrangement and organization of concerts, program production, providing karaoke services; night club and entertainment, fitness club, mobile library, training; book publishing; modeling for artists etc."

This trademark was registered in December 2011.

In November 2014, KuGou Networks filed an invalidation application with the Trademark Review and Adjudication Board (TRAB).

On February 18 2016 the TRAB ruled in favour of KuGou Networks, invalidating the disputed mark on all designated services. The board found that:

  • the '酷狗' mark (Chinese characters of KuGou) constituted a well-known trademark for "providing online music service (not for downloading)";
  • the registration of the disputed mark for "entertainment, providing karaoke services, etc" was likely to cause confusion with the unregistered well-known trademark and violated Article 13.1 of the law; and
  • KuGou Networks had been using '酷狗' as its trade name before the application date of the disputed mark and had acquired a reputation in the online music industry and therefore, the registration and use of the disputed mark violated Article 31 of the law.

Lifeng filed an administrative suit with the Beijing Intellectual Property Court. The court confirmed the invalidation of the disputed mark on the basis of Article 31, covering the "arrangement and organization of concerts, program production, providing karaoke services; night club and entertainment", but maintained the registration for the other services "fitness club, mobile library, training; book publishing; modeling for artists". The court held that such other services, even though categorised in the same class, were not similar and that it was not possible to apply Article 13.1 as it only protects unregistered well-known trademarks against identical or similar goods or services.

Both KuGou Networks and Lifeng appealed to the Beijing High Court.


On March 13 2017 the Beijing High Court made a decision overruling the Beijing Intellectual Property Court and upholding the TRAB's decision, granting the invalidation for all designated services.

In its judgment, the Beijing High Court adopted the method defined by the Supreme People's Court in its recent provisions providing an interpretation of the Trademark Law. In Article 12 of the provisions concerning the interpretation of Article 13.1 of the law, the Supreme People's Court provides that in order to determine the likelihood of confusion, the court should take into account:

"the extent of reputation of the trademark (seeking protection), the extent of similarity between the goods/services designated by the trademarks, the extent of similarity between the trademarks etc."

Therefore, the higher the level of reputation of the prior mark, the lower the threshold of similarity between the trademarks and between the goods or services.

The court opined that the difference between Article 13.1 and Article 31 lies in the extent of the reputation of the unregistered mark and the object of the prior rights seeking protection. Article 31 intends to protect the prior trademark owner's interests generated by its trademark use while Article 13.1 focuses on preventing confusion in the market. The court supported KuGou's argument that for the services (eg, fitness clubs) for which Article 31 could not be applied, Article 13.1 should apply because in view of the trademark reputation and the similarity of such services, there was a risk of confusion.

The court found that the evidence submitted by KuGou Networks – including the certificates issued by industrial associations, the amount of tax paid, advertising and promotional materials, contracts and invoices and media coverage – was sufficient to prove that the '酷狗' mark had reached well-known status before the application date of the disputed mark.

The KuGou trademark obtained protection under both articles: under Article 31 for the services through which it had acquired influence through its prior use and Article 13.1 for the other services for which, due to the "extent of its reputation" and to the "degree of similarity between the services", there was a risk of confusion.


This judgment is notable for two reasons. Even though the case was adjudicated under the previous law, the court adopted the method recommended by the Supreme People's Court in its most recent interpretation.

This highlights the evolution of the market with regard to the determination of the well-known status of a trademark, based on Article 14 of the law, which enumerates the factors to be considered, in principle. Such factors usually refer to the duration of the use of the trademark, the level of sales and the amount of advertising. However, in the internet industry, most of these criteria do not apply. The internet industry is fast moving; money and reputation can be acquired extremely fast. Advertising is made through websites and through totally different channels and methods. Therefore, the well-known status of a trademark cannot be assessed by using the usual standards and requesting the proof of revenue, advertising cost and the duration of trademark use.

For further information on this topic please contact Xingnan Ming or Xue Lu at WAN HUI DA by telephone (+86 10 6892 1000) or email ([email protected] or [email protected]). The WAN HUI DA website can be accessed at


(1) Provisions on Several Issues Concerning the Hearing of Administrative Cases Involving the Granting and Affirmation of Trademark Rights (March 1 2017).