How do you get well-known status in China?
Principles of recognition (new changes of 2014 Trademark Law)
Well-known trademarks are recognized on a case-by-case basis, and are subject to the principle of passive protection. This is explained in Article 4 of the Provisions on the Recognition and Protection of Well-Known Trademarks).
Passive recognition occurs “if the holder is of the opinion that its rights have been infringed upon;” (Article 13) “upon request by the party concerned” (Article 14).
Case by Case basis is when “a well-known trademark shall be recognized as a fact that needs to be ascertained in the handling of trademark-related cases” Article 14).
Approaches and authorities of recognition (new changes as a result of the 2014 Trademark Law)
Generally there are two approaches to obtain recognition of well-known status in China. This chart below explains:
According to Article 14, there are specific situations in which the recognition of well-known trademarks by Chinese authorities can occur:
1) The Trademark Office may recognize such well-known status as may be necessary for examination or case handling during trademark registration examination or during the process whereby an administration for industry and commerce (AIC) investigates and takes action on a case involving trademark-related illegalities;
2) The Trademark Review and Adjudication Board may recognize well-known status as may be necessary during the handling of a trademark dispute;
3) The People’s Court designated by the Supreme People’s Court may recognize well-known status as may be necessary during the hearing of a trademark-related civil or administrative case.
Evidence Requirements for Recognition of Well-Known Trademark
Article 14 states that the following factors shall be taken into consideration in the recognition of a well-known trademark:
1) The degree of recognition of the trademark by the relevant public;
2) The duration of the use of the trademark;
3) The duration, extent and geographical scope of all promotional activity carried out for the trademark by the trademark owner;
4) The enforcement history of the trademark when recognized as a well-known trademark; and
5) Other factors relating to the trademark’s well-known status.
What tips do you have for foreign rights holders who are trying to get well-known status for their marks in China?
Brand owners should pay attention to the preservation of evidence supporting well-known status, which include:
a) Materials proving the extent of the relevant public’s awareness of the trademark;
b) Materials proving the duration of the continuous use of the trademark, such as materials on the history and scope of the use and registration of the trademark. If the trademark is unregistered, materials proving that the trademark has been in continuous use for not less than five years shall be submitted. If the trademark is registered, materials proving that the trademark is registered at least three years ago or that the trademark has been in continuous use for not less than five years shall be submitted;
c) Materials proving the duration, degree and geographical scope of all publicity campaigns carried out for the trademark, such as the models and geographical scope of advertising and promotional activities, the type of promotional media, advertising volume, etc. in the past three years;
d) Materials proving the past protection of the trademark as a well-known trademark in China or other countries and regions; and
e) Other materials proving that the trademark is well-known, such as sales revenue, market share, net profit, tax payment, geographical scope of sales, etc. in the past three years of the main products bearing the trademark.
For instance, in the recent successful recognition of the well-known status of “TIFFANY” and “TIFFANY & CO.” for jewelry and precious stones products handled by Chang Tsi & Partners before the Trademark Review and Adjudication Board (TRAB), we assisted Tiffany & Co., owner of the subject trademarks. In that matter, we submitted abundant evidence to prove the registration and use of the subject trademarks in a number of countries including China, the publicity campaigns carried out for the subject trademarks, and the protection of the subject trademarks in China. Meanwhile, based on the well-known status of “TIFFANY,” the TRAB disapproved the registration of the “蒂芙尼”(TIFFANY in Chinese) by a third party in Class 12 for vehicles and tires that was opposed by Tiffany & Co.
It is also important to understand that the well-known status of a trademark is viewed as an existing fact to be recognized rather than a specific goal to be achieved. Before applying for the recognition of a well-known trademark, foreign right holders should evaluate whether their trademarks are in fact well-known in the market. The attorneys of Chang Tsi can provide an analysis prior to the submission of such a claim.
Did the revised Trademark Law bring about any changes to the area of well-known marks?
Yes, the revised Trademark Law provided much clarity and process to this area of the law. The revised Trademark Law made changes in respect of the Principles of Recognition, Approaches and Authorities of Recognition as well as Use and Protection of Well-Known Trademark.
Apart from above mentioned Principle of Recognition and Approaches and Authorities of Recognition, the changes to the Use and Protection of Well-Known Trademark are as follows：
a) Article 13 clarifies the definition of “well known trademark” as “a trademark that is well-known by the relevant public”.
The relevant public shall include the consumers relevant to the goods or services bearing the trademarks concerned, manufacturers of the said goods or other business operators that provide said services, salespersons and other relevant persons in the distribution channels, etc. This is laid out in Article 2 of the Provisions on the Recognition and Protection of Well-Known Trademarks.
b) Article 14 prohibits the commercial use of the words “well known trademarks” in advertising or promotion, such as on goods and the packaging or containers of goods. This article specifically prohibits the use of the words “well-known trademark” as a title of honor to sell products. In other words, a trademark is recognized as well-known for the specific purposes of enhancing the scope of trademark rights held by the trademark owner, as a means of legal relief. This right was not designed to further the commercial use of the trademark.
c) Article 45 grants a longer protection period for well-known trademarks in matters involving a declaration of invalidation. Where a third party registration is obtained in bad faith, the owner of a well-known trademark, when requesting the TRAB to declare the registered trademark invalid, is not bound by the five-year restriction, but can challenge the third party’s registration at any time.
d) Article 58 protects unregistered well-known trademarks through the Anti-Unfair Competition Law where such trademark is being used by another party as a trade name to mislead the public.
In the past there have been concerns about too many companies getting well-known marks and using them for improper purposes. Is this still the case?
Indeed, in the past there were companies who made up evidence and created non-existent situations in order to obtain well-known status and used such status for commercial gain.
However, even before the promulgation of the new Trademark Law in 2014, the judicial interpretation issued by the Supreme Court in 2009 had already limited the recognition of well-known trademarks to certain specific situations. Therefore, in the past several years, the threshold has been raised such that even eligible trademarks would be denied recognition, which we believe was an overcorrection. The new Trademark Law has thus provided much needed clarity in this field.
After the passage of the new Trademark Law, the popularity associated with well-known status recognition has weakened a little. The commercial use of the term “well-known” for trademarks used in the market has been prohibited. It is now understood that well-known mark status can only be used in individual cases. The Courts in China are also aware that well-known trademark recognition should not be overcorrected. Thus, in the cases where well-known status is necessary for trial, the Courts have started to recognize the same.
What would you recommend for a trademark owner seeking to have their trademark recognized as well-known in China?
We typically recommend that our clients are focused on the use and enforcement of their respective trademarks in China. Such focus allows us to monitor the scope of enforcement, to enhance the portfolio of rights, and to familiarize ourselves with the use and promotion of the trademark in the marketplace. Such focus then justifies the additional effort and cost needed to support an application for well-known trademark status.
Once a trademark owner has amassed a sufficient volume of evidence to support the claim of well-known trademark status, we counsel our clients to wait for a good case to bring a claim. Claims at the administrative level, namely, before the Chinese Trademark Office (CTMO) are comparatively easier to win; however, such decisions are less influential to use as evidence in future cases. In contrast, claims brought before the People’s Court are more difficult to win; however, a Court decision recognizing a trademark as well-known is a significant victory for a trademark owner. Since multiple claims can be brought, for a client with a strong focus on building a strong brand in China, we counsel clients to bring successive and incremental claims for well-known trademark recognition. For example, recognition of a trademark as well-known by the CTMO can later be used to support an application for well-known trademark status by the TRAB or the People’s Court.
