China is stepping up its protection of well-known marks. As an indication, the Supreme People’s Court of China has recently drafted the Interpretation of Several Legal Issues Regarding the Recognition and Protection of Well-Known Marks in Trademark Infringement and Other Civil Cases. The Court sought public comments on the Draft between November 11 and December 12, 2008.  

Under the Draft, a well-known mark is defined as a mark that is commonly recognized by the relevant public in China. According to current laws and regulations, a trademark owner may request the Trademark Office or a people’s court to recognize its trademark as a well-known mark in any trademark dispute, but there are no detailed regulations that specify the cases in which such decisions should be made by a court or the Trademark Office. The Draft, however, lays out the situations in which a court may or may not rule on whether a trademark is a well-known mark.  

According to the Draft, a court may rule on the famousness of a mark in cases when the recognition of its well-known status is due to the existence of trademark infringement or unfair competition because the plaintiff has accused the defendant of: (1) a breach of Article 13 of the Trademark Law, namely a breach of the prohibition on trademarks that copy, imitate, or translate other famous trademarks; (2) registering and/or using a domain name that is identical or similar to the plaintiff’s well-known mark; (3) using text that is similar or identical to the plaintiff’s well-known mark in the defendant’s company name; or (4) using a trademark in the infringement of exclusive rights of the plaintiff’s registered trademark, and defending or counter claiming that its trademark is a previously used unregistered well-known mark.  

In addition, the Draft has a catch-all provision, which provides that a court may rule on the famousness of a trademark in a civil case if such a decision is necessary according to laws and administrative regulations, or if it is required by the specific circumstances of the case.  

According to the Draft, the burden of proof to show that a trademark is well-known falls on the claiming party. A court should base its relevant ruling on the actual famousness of the mark, rather than on whether the trademark was ever recognized as a well-known mark. In making its decision, the court may take into consideration some or all of the following factors as necessary in determining the famousness of the trademark: (1) the degree of the relevant public’s awareness of the trademark; (2) the duration of the use of the trademark; (3) the duration, extent, and geographic scope of any publicity activities for the trademark; (4) the record of protection of the trademark as a well-known trademark; and (5) other factors for which that trademark is well-known.  

The decision regarding whether a trademark is famous should be based on the fame of the trademark in China. Where necessary, the fame of the trademark outside China may also be considered. If a trademark is widely known to the public in China, a court will mitigate the burden of proof on the trademark owner in its discretion, and will recognize the trademark as a well-known mark if the owner successfully produces prima facie evidence or if the defendant does not dispute that the mark is well-known.