To stop a third party from using or registering a mark for goods or services which are dissimilar from the goods or services for which a trade mark is already registered, the proprietor of this trade mark must demonstrate that his mark is registered and well-known in the PRC. In this respect, the fundamental provision to take into account is Article 13(2) of the PRC Trade Mark Law, which states that:
“……A trademark which is applied for registration in respect of non-identical or dissimilar goods shall not be registered and its use shall be prohibited, if it is a reproduction, an imitation or a translation, of a well-known mark which is registered in China, misleads the public, and the interests of the proprietor of the well-known mark are likely to be damaged by such use.”
A question which trade mark owners frequently ask is what evidence they need to produce in order to show that their marks are well-known in the PRC. An answer to this question may be found in Article 5 of the Interpretation of the Several Issues Concerning the Application of the Law to Civil Proceedings Involving the Protection of Well-Known Trade Marks (“the Interpretation”). Article 5 provides that:
“Where a party asserts that its trade mark is well-known, it shall, subject to the actual circumstances of the case, provide the following evidence to establish that its trade mark was well-known at the time of the occurrence of the alleged trade mark infringement or unfair competition:
- the market share, sales territory, and profit and taxes of the goods for which the trade mark is used;
- the period of continuous use of the trade mark;
- the method, continuous period and degree of publicity or promotional activities for the trade mark, and the funds invested therein and the geographical scope thereof;
- the record of protection of the trade mark as a well-known trade mark;
- the market reputation of the trade mark; and
- other facts which show that the trade mark is well-known.
The period, scope, method, etc. of use of the trade mark as mentioned in the preceding paragraph include the continuous use thereof before registration was granted.
With respect to evidence such as the period of use of the trade mark, ranking in the industry, market survey reports, market value appraisal reports, and whether the trade mark has been previously recognised as a famous trade mark, the People’s Court shall objectively and comprehensively examine them along with other evidence submitted to establish that the trade mark is well-known.”
It is not easy for a trade mark to be recognised as well-known in the PRC. For example, the owners of the trade mark “DUREX” and its Chinese version “杜蕾斯” were unable to obtain such recognition in an action brought before the Beijing No. 1 Intermediate People’s Court. As a result, the Court allowed the mark “durex杜蕾斯 & device” to be registered in Class 25 by a third party.
However, Diageo, the owners of the “JOHNNIE WALKER” trade mark recently succeeded in an action brought before the Shanghai No. 2 Intermediate People’s Court. In 2009, Diageo sued three undertakings which produced and sold cosmetic olive oil under the name of “JOHNNIE WALKER” and a “walking gentleman” device. On 20 May 2011, the Shangai Court ruled in favour of Diageo, holding that “JOHNNIE WALKER” was a well-known trade mark in the PRC. The Court ordered the defendants to stop infringing Diageo’s well-known trade mark and awarded damages to Diageo.
In finding that “JOHNNIE WALKER” was a well-known trade mark, the Shanghai Court took into account the following factors:
- the “JOHNNIE WALKER” brand of whisky was created in 1820;
- the whisky is sold in over 200 countries around the world;
- over 1.2 billion bottles are sold every year;
- market shares in terms of annual sales volume worldwide and in China are, respectively, 14% and 27%;
- marketing of “JOHNNIE WALKER” whisky in China commenced in 1954;
- from 2004 to 2009, the advertising and promotion expenses amounted to nearly 8 billion RMB yuan;
- the whisky has won awards in several competitions;
- “JOHNNIE WALKER” is one of the world’s top 100 brands;
- the “black label” whisky under the mark “JOHNNIE WALKER” has been recognised as a well-known product by administrative and judicial authorities on numerous occasions.
These factors echo those listed in Article 5 of the Interpretation. “JOHNNIE WALKER” is the first well-known trade mark to be recognised as such by the Shanghai Court following the coming into force of “the Interpretation” in 2009.