Well-known trademark recognition is a systematic and challenging project in China. This article will be discussing five important aspects of well-known trademark recognition in China and intends to give foreign companies or practitioners a clear picture of this system.

Importance of Well-known Trademark Recognition

Under Chinese Trademark Law, the first to file principle is mainly followed in trademark examination and protection. Use or intention to use is not a prerequisite to file a trademark registration application in China. In such a situation, trademark squatting has become a serious problem in trademark protection in China for foreign companies.

Despite that Chinese government are taking and to take severe measures to fight against trademark squatting, it would still be difficult to refuse or to cancel the registration and to prohibit the use. One of the reasons is that the applicants are not able to prove the prior use or prior registration of the mark in respect of same or similar goods in China. So, foreign companies would sometimes feel frustrated or embarrassed as to the registrations of marks same or similar to theirs but owned by others in respect of different or dissimilar goods.

The above-mentioned situation changes, if the marks of the opposers or invalidation applicants are recognized as well-known in China. A prior well-known trademark recognition record will have a very important reference value for subsequent cases, which is reflected in relevant rules ( e.g. Judicial Interpretation No. [2009]3 of China Supreme People’s Court stipulates that the People’s court should recognize the well-known mark status, if the mark has been recognized by the peoples’ Courts or SAIC as well-known before the alleged trademark registration infringement acts or unfair completion acts and the defendant has not opposed to the well-known mark status. )

Therefore, in case that foreign companies encounter a reproduction, an imitation or a translation of their reputed marks, they are recommended to take the chance to request a well-known mark status recognition and further to obtain the largest protection on mark right in China. If their marks are on the way to be well-known, we suggest they consider filing defense applications for their marks covering broader specifications of goods/services in China at the first stage.

Principles in Well-known Trademark Recognition

Principle No. 1: on-demand recognition principle.

Under normal circumstances, if the prior filed or registered trademarks of the applicant can grant him the same level of protection as the well-known protection, there is no need to provide the applicant with the protection of the well-known mark. The concept of “same level of protection” can be interpreted according to different scenarios. In trademark validity cases, if the applicants’ prior filed trademark application or registrations will be enough to refuse or cancel the registration of the disputed mark, there is no need to grant a well-known mark protection. In the trademark enforcement cases, if the prior registered trademark right of the applicant on the same or similar goods can prohibit the use and obtain sufficient financial compensation, then it should be deemed that the prior registered trademark right is protected at the same level as the well-known trademarks. On the basis of the principle of on-demand recognition, there is no need to provide trademark registrants with well-known trademark protection.

Principle No. 2: passive recognition principle

The well-known trademark can be recognized by Chinese authorities, only at the request of an interested party. In other words, Chinese authorities cannot ex officio recognize well-known trademarks. In this connection, even if examiners or judges believe that the case can be only solved based on well-known trademark protection, they cannot voluntarily cite the relevant well-known trademark protection laws.

Principle No. 3: case by case recognition principle

If a mark is fortunately recognized as a well-known trademark and granted the concerned protection in one case, this protection only applies to the current case and is not binding to other cases. The theory behind this principle is that the degree of recognition of a mark changes from time to time, and well-known trademark status is dynamic. Nevertheless, the well-known trademark recognition record can serve as a very important reference for future cases.

Three Well-Known Trademark Recognition authorities

According to the provisions of Chinese Trademark Law, well-known trademarks can be recognized by three authorities, namely, the former Trademark Office of SAIC (now the Trademark Examination Division of CNIPA), the former Trademark Review and Adjudication Board of SAIC (now the Trademark Review Division of CNIPA) and several Chinese people's courts designated by China Supreme People’s Court. The first two authorities are administrative agencies, whose decisions will be judicially examined by the last authority, namely several Chinese Courts.

The relevant provisions of Chinese Trademark Law are the supreme basis for all three authorities in well-known trademark recognition in China. But these three authorities have respective detailed regulations or guidelines and pursue different primary value goals in this specific work.

The administrative agencies published and followed several well-known trademark recognition regulations and guidelines, such as Notice of the Trademark Office of the State Administration for Industry and Commerce on Several Issues Concerning the Application for Recognition of Well-Known Trademarks and Well-Known Trademark Recognition and Protection Provisions. China Supreme People’s Court published some judicial interpretations, such as Provisions on Several Issues Concerning the Trial of Administrative Cases for Trademark Validity, and Interpretation of Several Issues Concerning the Application of Law in the Trial of Civil Dispute Cases concerning the Protection of Well-Known Trademarks. The judicial interpretations published by China Supreme People’s Court are strictly followed by Chinese Courts. Hence, it is very important to coordinate the well-known trademark recognition application with the respective rules and guidelines of the responsible authorities.

In addition to different detailed regulations or guidelines, the administrative agencies and Chinese Courts would pursue different primary value goals. The administrative agencies pursue administrative efficiency and administrative order and take care of other value objectives such as justice. Efficiency and order are the primary goals pursued by administrative agencies. While pursuing the primary of justice, the judiciary consider other value objectives such as efficiency. Bring the difference into well-known trademark recognition situation, administrative agencies tend to strictly comply with relevant rules or regulations and set up a high threshold to the well-known trademark applicant. Judiciary in China tend to take a different approach. They are likely to begin with a comprehensive analysis of all the relevant facts and consider the need of a well-known trademark recognition from the justice perspective.

Well-known Trademark Evidence

It is almost same in well-known trademark recognition fundamental factors between China and other jurisdictions. Foreign companies would still find difficult to prove their mark is well-known in China. The following are four tips to facilitate foreign companies in collecting well-known mark evidence.

First, it requires high attention from the company executives. Well-known trademark evidence collection is a time consuming and complicate project. The concerned well-known mark evidence disperses different divisions of the company. Without a high attention from the high level of the company, this would be an impossible mission.

Second, it needs an effective cooperation between headquarters and Chinese affiliates or partners, since only the evidence attesting the reputation of the mark in China is relevant. Therefore, it is very important to have a deep internal communication and obtain full supports from Chinese affiliates or partners.

Third, pay attention to the time of recognition of well-known mark. The applicant needs to prove that the mark has become well-known trademark before the filing of the disputed mark or the alleged use. This sometimes causes a serious problem in evidence collection. Therefore, keep copies of trademark use evidence would be a good practice for a company.

Four, focus on the qualified and persuasive well-known mark evidence. The applicant needs abundant evidence to prove that the mark is widely recognized by the relative public. Because of different legal system and judicial practice, there exists some different opinions between foreign companies and Chinese judges as to which constitutes qualified and persuasive well-known mark evidence. This may be the most troublesome thing for foreign companies. An experienced attorney can play the role in narrowing the gap. Do there exit some types of evidence, which are relatively easy to be collected by foreign companies and have strong weight proof under Chinese legal system?

Let us explain the problem in specific cases. In 2018, on behalf of foreign companies, CCPIT Patent and Trademark Law Office obtained six (6) trademarks well-known trademark recognition before Chinese courts. These foreign companies presented diverse well-known mark evidence, since they are involved in quite different business fields. However, after a deeper analysis and summary, we can find that they have something in common. Specifically, they all submitted the following main evidence:

1) honors, awards and ranking evidence issued by Chinese government, industry associations etc. or published in authoritative newspapers and magazines and other media;

2) sales evidence (including customs declarations, sales contracts, sales invoices, financial statements, audit report, tax certificates, etc.);

3) advertising evidence (including advertising materials for newspapers, magazines and other media, search reports of the National Library of China, advertising contracts concluded and invoices, etc.);

4) reputation recognition rulings or judgments (including counterfeit administrative penalty decision, trademark infringement judgments, trademark oppositions/invitation decisions, etc.)

Along with the success of these cases, the above main evidence can be deemed as qualified and persuasive evidence for foreign applicants in well-known mark recognition in trademark litigation cases.

Someone would say that he cannot provide all the above-mentioned evidence. It is not a prerequisite that all the evidence should be filed. The key issue is to fully demonstrate that it is a leading brand in the relative field in China before the filing of the disputed mark or the alleged use. The foreign companies can use their own unique but reliable way to prove it.

It is true that well-known mark recognition depends on the extent of actual recognition of the mark in China. However, strong evidence preparation and arguments can substantially affect the result.

Well-known Trademark Protection Scope

When a trademark is recognized as a well-known mark in China, it can enjoy the largest protection on mark right by Chinese Trademark Law. For an unregistered well-known trademark, it obtains a protection in respect of same or similar marks, even if the disputed mark has been registered for more than five years. For a registered well-known trademark, it usually can cover cross-class protection on dissimilar goods/services. Yet, please still note that sometimes, it does not refer to all the specifications in full 45 classes, since Chinese Courts shall consider the following factors to determine protection scope.

(1) The degree of distinctiveness and recognition of the well-known mark;

(2) Whether the marks are enough similar; (3) The conditions of the designated goods/services;

(4) The degree of overlap and attention of the relevant public;

(5) The situation in which the mark similar to the well-known mark is legally used by other entity in the market or other relevant factors.

The scope of protection of well-known trademarks will be determined after a comprehensive consideration of the above factors. For example, the “Coca-Cola” trademark has a high degree of popularity. Colas offered under the mark belong to daily consumable products, and therefore, have a broader scope of relative public and would overlap most of other goods/services in the society. In this connection, “Coca-Cola” trademark would be granted a cross-class protection covering all 45 classes of goods/products. If the goods under the well-known mark are specialized products, the case would be different. The specialized products have relatively limited scope of relative pubic. In other words, it would be possible that consumers in other business fields have no idea of the well-known mark in the specialized products field at all. When they see a similar mark, they are not liable to associate the mark they see with the well-known mark in the specialized products field. To obtain protection for this kind of well-known marks as broad as possible, strong arguments should be submitted as to the degree of the relevance of the relevant goods, the degree of distinctiveness of the well-known mark, the degree of recognition of the well-known mark, the degree of similarities of between the disputed mark and the well-known mark, and the intention of the applicant of the disputed mark, etc.