Recognition and Protection of Well-known Trademarks Provisions

Repealed on July 03 2014: 
http://www.chinalawandpractice.com/Article/3377005/Provisions-for-the-Recognition-and-Protection-of-Well-known.html

(Issued by the State Administration for Industry and Commerce on April 17 2003 and effective as of June 1 2003.)

Article 1: These Provisions are formulated pursuant to the PRC Trademark Law (the Trademark Law) and the PRC Trademark Law Implementing Regulations (the Implementing Regulations).

Article 2: For the purposes of these Provisions, the term "well-known trademark" means a trademark that is widely known and has a relatively good reputation among the relevant public in China.

The relevant public includes consumers of a certain good or service branded with the trademark, business operators that produce the aforementioned good or provide the aforementioned service (other than the business operator that produces the good or provides the service in question) and sellers and related persons that are involved in the distribution channels for such good or service.

Article 3: The following materials may serve as evidence that a trademark is well-known:

(1) relevant materials that substantiate the notoriety of the trademark among the relevant public;

(2) relevant materials that substantiate the trademark's length of use, including materials relating to the history and scope of the trademark's use and registration;

(3) relevant materials that substantiate the length of time, extent and geographical scope of any publicity for the trademark, including relevant materials on the means and geographical scope of advertising, publicity and promotion activities, the type of advertising media, the amount invested in advertising, etc.;

(4) relevant materials that substantiate the record of protection of the trademark as a well-known trademark, including relevant materials showing that the trademark has been protected as a well-known trademark in China or in other countries or regions; and

(5) other evidentiary materials that substantiate that the trademark is well-known, including relevant materials that substantiate the levels of production, sales volumes, sales revenues, pre-tax profits, sales territories, etc., during the last three years for the main goods on which the trademark is used.

Article 4: If a party believes that a third party's preliminarily approved and gazetted trademark violates Article 13 of the Trademark Law, it may file an opposition with the Trademark Office in accordance with the Trademark Law and its Implementing Regulations and submit relevant materials substantiating that its trademark is well-known.

If a party believes that a third party's registered trademark violates Article 13 of the Trademark Law, it may apply to the Trademark Review and Adjudication Board for a ruling to cancel the registered trademark and submit relevant materials substantiating that its trademark is well-known.

Article 5: If a party believes, in the course of trademark administration work, that a trademark being used by a third party falls under the circumstances set forth in Article 13 of the Trademark Law and requests protection for its well-known trademark, it may submit a written request for a prohibition against the use of the trademark and relevant materials substantiating that its trademark is well-known to the municipal (prefectural) level or higher administration for industry and commerce of the place where the case arose. Additionally, it shall send a copy of such request and materials to the provincial level administration for industry and commerce of the place where it is located.

Article 6: After receiving an application for protection of a well-known trademark in the course of its trademark administration work, the administration for industry and commerce shall examine whether the case falls under either of the following circumstances specified in Article 13 of the Trademark Law:

(1) a third party has made unauthorized use, on identical or similar goods, of a trademark that is identical or similar to the concerned party's well-known trademark that has not been registered in China, and this is liable to create confusion;

(2) a third party has made unauthorized use, on non-identical or dissimilar goods, of a trademark that is identical or similar to the concerned party's well-known trademark that has been registered in China, and this is liable to mislead the public and thus possibly prejudice the interests of the registrant of the well-known trademark.

If the municipal (prefectural) level administration for industry and commerce considers that the case falls under either of the foregoing circumstances, it shall forward the complete set of case materials to the administration for industry and commerce of its province (autonomous region, municipality directly under the central government) within 15 working days after the date of its acceptance of the party's request and issue a notice of acceptance of the case to the party. The administration for industry and commerce of the province (autonomous region, municipality directly under the central government) shall forward the complete set of case materials to the Trademark Office within 15 working days after the date of its acceptance of the party's request. If the provincial level administration for industry and commerce of the place where the party is located believes that the case falls under the aforementioned circumstances, it may also forward the same to the Trademark Office.

If the administration for industry and commerce does not consider that the case falls under either of the aforementioned circumstances, it shall timely handle the case in accordance with the relevant provisions of the Trademark Law and the Implementing Regulations.

Article 7: The administrations for industry and commerce of provinces (autonomous regions, municipalities directly under the central government) shall examine the case materials relating to the protection of well-known trademarks forwarded to them by the municipal (prefectural) administrations for industry and commerce within their jurisdictions.

For cases that they consider as falling under either of the circumstances set forth in the first paragraph of Article 6 hereof, they shall forward the case materials to the Trademark Office within 15 working days after the date of receipt thereof from the municipal (prefectural) administrations for industry and commerce in their jurisdictions.

For cases that they do not consider as falling under either of the circumstances set forth in the first paragraph of Article 6 hereof, they shall return the relevant materials to the authority that originally accepted the case for timely handling in accordance with the relevant provisions of the Trademark Law and the Implementing Regulations.

Article 8: Within six months after the date of receipt of the relevant case materials, the Trademark Office shall make a determination, notify the administration for industry and commerce of the province (autonomous region, municipality directly under the central government) in which the case arose of its determination and send a copy thereof to the administration for industry and commerce of the province (autonomous region, municipality directly under the central government) in which the concerned party is located.

With the exception of the materials that substantiate the trademark's being well-known, the Trademark Office shall return the case materials to the administration for industry and commerce of the province (autonomous region, municipality directly under the central government) in which the case arose.

Article 9: If a trademark is not recognized as a well-known trademark, the concerned party may not submit another application for recognition of the same trademark on the basis of the same facts and grounds for a period of one year after the date on which the determination was made.

Article 10: When the Trademark Office or the Trademark Review and Adjudication Board is determining whether to recognize a trademark as well-known, it shall comprehensively consider each of the factors set forth in Article 14 of the Trademark Law. However, there shall be no presumption that the trademark must satisfy all of the factors under the said Article.

Article 11: When protecting a well-known trademark, the Trademark Office, the Trademark Review and Adjudication Board or the local administration for industry and commerce shall consider the distinctiveness and the fame of the trademark.

Article 12: When a party requests protection for its trademark in accordance with Article 13 of the Trademark Law, it may submit records showing that its trademark has previously been protected as a well-known trademark by the relevant responsible authorities in China.

If the scope of protection in a case that has been accepted is basically identical to that in a previous case where a trademark has been protected as a well-known trademark and the opposing party does not dispute the trademark's being well-known or, although it does dispute its being well-known, it fails to submit evidentiary materials showing that it is not well-known, the administration for industry and commerce that accepted the case may render a ruling, or handle the case, on the basis of the conclusion stated in such record of protection.

If the scope of protection in a case that has been accepted is different from that in a previous case where a trademark has been protected as a well-known trademark, or if the opposing party disputes that the trademark is well-known and submits evidentiary materials showing that it is not well-known, the Trademark Office or the Trademark Review and Adjudication Board shall carry out a fresh examination of the materials for that well-known trademark and make a determination.

Article 13: If a party believes that a third party has registered its well-known trademark as an enterprise name and this may deceive the public or give rise to misunderstanding among the public, it may apply to the enterprise name registrar for cancellation of the enterprise name registration. The enterprise name registrar shall handle the case in accordance with the Administration of the Registration of Enterprise Names Provisions.

Article 14: Administrations for industry and commerce at every level shall strengthen their protection of well-known trademarks and transfer suspected crimes of passing off of a trademark to the relevant authorities in a timely manner.

Article 15: The administration for industry and commerce of the province (autonomous region, municipality directly under the central government) in which the authority that handled a case is located shall forward to the Trademark Office a copy of the decision on the handling of the protection of the well-known trademark.

Article 16: Administrations for industry and commerce at all levels shall establish appropriate supervisory mechanisms, formulate appropriate supervisory and control measures and strengthen their supervision and examination of the entire well-known trademark recognition process.

If a member of the relevant personnel involved in the work of recognizing well-known trademarks abuses his powers of office, practises favouritism, commits irregularities, seeks illicit gains or handles matters related to the recognition of well-known trademarks in a manner that violates the law, he shall be subjected to administrative penalties in accordance with the law; if a crime is constituted, his criminal liability shall be pursued in accordance with the law.

Article 17: These Provisions shall be implemented as of June 1 2003. The Recognition and Administration of well-known trademarks Tentative Provisions promulgated by the State Administration for Industry and Commerce on August 14 1996 shall be repealed simultaneously.