On July 3 2014 the State Administration for Industry and Commerce (SAIC) issued the new Regulations for the Recognition and Protection of Well-Known Trademarks 2014. The 2014 regulations take effect in August 2014, superseding the 2003 version.
The 2014 regulations include the following amendments compared to the 2003 regulations:
- The 2014 regulations expressly state that recognition of a well-known mark will be considered on a case-by-case basis and following a separate request in writing to:
- the Trademark Office (TMO) or the Trademark Review and Adjudication Board in trademark opposition or invalidation proceedings; or
- the Local Administration for Industry and Commerce (AIC) in an administrative action based on trademark infringement (the municipal AIC (or the authority above it) will report the request through the provincial level AIC to the TMO for a decision to be made).
- While the scope of evidence required remains about the same, the 2014 regulations have differentiated the extent of evidence of use required as follows:
- If the mark seeking recognition as well known is registered, the mark must have been registered for more than three years or used continuously for more than five years before the filing date of the disputed mark in opposition/ invalidation proceedings, or the filing date of the request for recognition as well known in administrative actions before the AIC.
- If the mark seeking recognition as well known is not registered, the mark must have been used continuously for more than five years before the filing date of the disputed mark in opposition/invalidation proceedings, or the filing date of the request for recognition as well known in administrative actions before the AIC.
- Under the 2003 regulations, the owner of a well-known trademark based on such recognition was entitled to apply to the authorities to deregister a registered company name containing a well-known trademark that was likely cause confusion. In line with the changes to the Implementation Regulations of the Trademark Law, this is no longer possible under the 2014 regulations. The proper remedy for company name deregistration is now covered by the Anti-unfair Competition Law.
- Under the 2003 regulations, if a trademark owner’s request for recognition as well known was refused, it was prohibited from re-submitting that request within 12 months based on the same grounds and facts. This prohibition is no longer expressly provided under the 2014 regulations. It is hoped that this will give trademark owners flexibility when seeking recognition of well-known status.
This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com.
Annie Tsoi & Jean Wang