On 3 August 2014, the revised Provisions on the Recognition and Protection of Well-Known Trademarks (“Provisions”) entered into force. This revision is aimed at providing detailed guidelines to the Chinese Trademark Office (“CTMO”), the Trademark Review and Adjudication Board (“TRAB”) and the Administration for Industry and Commerce ("AIC") in assessing and recognizing well-known trademarks. The highlights are as follows:
Principles of Recognition
The Provisions explicitly provide for two principles of recognition:
- The passive protection principle: this means that the authorities can only 'passively' recognize a well-known trademark, they cannot do it on their own initiative. Trade mark owners will thus always have to explicitly ask the authorities for recognition of their mark as a well-known trade mark.
- The case-by-case analysis principle: this means that a full assessment of whether a mark is well-known will always need to be conducted, independently of any earlier recognition. Therefore, each time trade mark owners want to invoke the well-known status of a trade mark, they will need to submit all relevant evidence supporting such status. The principles are not new but this codifies existing practice.
The Provisions details materials that can be submitted as evidence in support of the well-known mark recognition.
- Materials proving the duration of the continuous use of the trademark:
- In case the mark is registered in China, the owner can choose to either prove that the mark is registered for at least three years, or that the mark has been continuously used in China for at least five years.
- In case the mark is not registered in China, the owner must prove that the mark has been continuously used in China for at least five years.
- Materials regarding the sales revenue, market share, net profit, tax payments and geographical scope of the sales of the products bearing the trademark during the past three years;
- Materials proving the duration, extent and geographical scope of all advertisement campaigns carried out for the trademark;
- Materials proving previous protection of the trademark as a well-known trademark in China or in other countries and regions.
The Provisions define the thresholds of “three years” and “five years” for the first time. These thresholds refer to the time prior to (1) the filing date of the opposed mark; (2) the filing date of the registration to be invalidated; and/or (3) the filing date of recognition as a well-known trademark in the AIC enforcement cases.
Principle of Good Faith Reiterated
Consistent with the new Trademark Law, the Provisions stipulate that applicants must act honestly and in good faith when requesting protection for a well-known trademark. Consequently, the mark owners are liable for the evidence submitted. This means that in case of fraud of false evidence, the applicant may face a revocation of the recognition as a well-known trade mark by the CTMO.
AIC Recognition Procedure Specified
Another novelty of the Provisions is that they clearly specify the procedure and time frame for the AIC on different levels to handle and report the requests for recognition. Local AICs should report requests which pass the preliminary examination stage to their higher level AIC within 30 days. Once the request is escalated to the provincial level AIC, it will be submitted to the CTMO, which will carry out the final assessment whether the mark can be recognized as a well-known trademark.
Under the Provisions, the CTMO, AIC and TRAB will continue to have a wide discretion in recognizing the well-known status of trademarks. However, the Provisions are welcomed as a noted improvement, codifying previous unspoken rules.