Recognition of Well-known Trademarks by Administrative Authorities

Furthermore, the 2001 Trademark Law revisions integrate key provisions of the 1996 Tentative Provisions into the stipulations of the Trademark Law. The value of the 1996 Tentative Provisions for well-known trademark rights holders lay in the detailed provisions that allowed them to stop other parties from using well-known trademarks as trade names, block other parties' registration of the same or a similar mark in respect of unrelated goods or services, and prevent other parties from using the same or a similar mark in related goods or services. The Provisions specify the availability of protection in the latter two situations. The SAIC has also promulgated a department rule that deals with the trade name problem and the Well-known Trademark Provisions adopt this point.

Most importantly, the 2001 Trademark Law revisions render the Tentative Provisions largely irrelevant by changing the authority for recognizing well-known trademarks from one dominated by the Trademark Office (TMO) of the SAIC. The 1996 Tentative Provisions stipulated that only the TMO had the power to decide the status of well-known trademarks. The 2001 revision to the Trademark Law provides that the TMO, the Trademark Review and Adjudication Board (TRAB), administrative authorities for industry and commerce (AICs) at all levels, and courts have the power to recognize the status of well-known trademarks.

how have the Rules been revised?

As discussed above, the Well-known Trademark Provisions should revise several aspects of the 1996 Tentative Provisions to confirm to the amendments to the Trademark Law and the Implementing Regulations.

First, the Well-known Trademark Provisions have deleted the provision in the Tentative Provisions that made the Trademark Office the sole authority to determine the status of well-known trademarks. The provision has long been in dispute because the content of the provision is far beyond of the scope of a department rule. Even when the Tentative Provisions were effective, courts delivered decisions on the status of well-known trademarks that effectively transcended the TMO's authority, e.g., in Ikea v. Guo Wang.³ Furthermore, the revision to the Trademark Law in 2001 enabled judicial review to offer an alternative avenue to the existing system for determination of well-known trademarks by the TMO. Decisions on well-known trademarks will face review by judges according to the principles of TRIPS, which state that the parties must have the opportunity to appeal all administrative decisions to the courts.⁴

The second key amendment to the Tentative Provisions is in the documents required for determining the status of well-known trademarks. The Well-known Trademark Provisions list the following required documents for determining whether a mark is well known: (1) extent of knowledge of the trademark in the relevant sector of the public; (2) consistent period of trademark use, including the use of trademark, registration history and scope; (3) period, extent and territory of trademark promotion, including means and territory, advertisement and promotion, types of media and the amount of advertising; (4) records of trademark protection as a well-known trademark, including the relevant materials describing which trademarks are protected as well-known trademark in China or other countries or regions; and (5) other materials, including annual production volume, sales quota, sales income, profit, sales regions and like matters.⁵

In the 1996 Tentative Provisions, the necessary documents for well-known marks include: (1) those concerning sales regions and sales volume in China for the goods or services bearing the trademark; (2) major economic concerns (annual production volume, sales quota, profit, market share and like matters) for the commodities on which the trademark was used for the past three years and a list by rank of others in the same industry in China; (3) sales regions and sales volume in foreign countries (regions); (4) advertisement release status; (5) date of the first use and the period of continuous use of the trademark; (6) status of the registration of the trademark in China and other countries (regions); and (7) other documents that could substantiate the trademark as well-known.⁶

Obviously, the Well-known Trademark Provisions discard the criteria in the 1996 Tentative Provisions that required registration and usage in China and thus the new legislation meets the demands of the amendments to China's Trademark Law. The Well-known Trademark Provisions focus on providing more technical details regarding the required documents for determining whether a mark is well-known.

What is New in the Well-known Trademark Provisions?

The new content in the Well-known Trademark Provisions clarifies how administrative authorities should recognize well-known trademarks, which is the actual legislative intention of the new legislation.

Situations Requiring Determination of Well-known Trademarks

The Well-known Trademark Provisions identify three situations in which it may be necessary to determine the status of well-known marks: trademark opposition; cancellation; and trademark infringement. The parties may request the respective authorities, the TMO, the TRAB and the AICs, to recognize their marks as well known in order to stop the registration and use of suspected marks.⁷

Procedure for Establishing Well-known Trademarks through the AICs

The AICs at the level of municipality, prefecture or autonomous prefecture where trademark infringement has occurred will examine the submitted materials to see if they meet the requirements of Article 13 of China's Trademark Law, i.e., whether using a well-known trademark of another party without permission in respect of the goods in the same or related classes, which has not been registered in China, causes likelihood of confusion; or whether using a well-known trademark of another party without permission in respect of different or unrelated goods, which have been registered in China, causes likelihood of confusion and damages to the trademark owner.⁸ If in their opinion the submitted materials meet the requirements, the AICs will issue a formal notice that they have accepted the case and will submit all materials to the AIC at the provincial level.⁹

AICs at the provincial level should examine the materials and submit them to the TMO within 15 working days from when they receive the materials if they believe the materials meet the requirements.¹⁰ Otherwise they should return all materials to the authority that initially accepted the case.¹¹

AICs at the provincial level where trademark infringement has occurred may directly accept the case at the request of the parties.¹² In addition, the AICs at the provincial level where the parties reside may also directly submit relevant materials to the TMO at the direct request of the parties.¹³

The TMO should make a decision on the status of well-known trademarks within six months of receiving the relevant materials and should send a notice of the decision to the AICs at the provincial level where the trademark infringement has occurred.¹⁴ The TMO also needs to send a copy to the AICs at the provincial level where the parties reside.¹⁵

In the diagram on the previous page, we summarize the three procedural models for determining well-known trademarks through the AICs.

Among the three administrative authorities that determine well-known trademarks under the amendment to the trademark laws and related legislation, the AICs at the level of a province or municipality do not have real decision-making power because they have to submit all materials to the TMO for a final decision. Also, AICs at the county level do not have any real power for the determination of well-known trademarks. That is to say, although the amendments break up the existing TMO-dominated system for determination of well-known trademarks, we can anticipate that the TMO will still play an important role in the determination of well-known trademarks among administrative authorities.

In addition, for the first time, the Well-known Trademark Provisions set a time limit of 6 1/2 or 7 months for the procedure of recognizing well-known trademarks through the AICs. This is undoubtedly a big step forward for China's process of recognizing well-known trademarks. However, the time limit for the AICs path makes it difficult for trademark rights holders to invoke this option because the 6 1/2 or 7-month proceeding may obviate the advantages of using the administrative authorities, which are generally a more efficient resort than courts.

The Effect of Previous Determinations on Well-known Trademarks

The Well-known Trademark Provisions provide that the AICs may rely on previous determinations on well-known trademarks by relevant administrative authorities if the scope of protection of the current case is similar to previous cases and the other party does not challenge the determination or cannot provide contrary evidence.¹⁶ On the other hand, if the scope of protection is basically different from any previous cases or the other party challenges the determination of a well-known trademark and provides relevant evidence, the TRAB or the TMO may review the materials to decide whether the trademark is well known on a case-by-case basis.¹⁷ In fact, central to this article is the interpretation of scope of protection of previous determination. But the Well-known Trademark Provisions themselves do not provide an exact interpretation. It can be anticipated that the ambiguity in this provision may lead to disputes in practice.

Endnotes

1 The second revision to the PRC Trademark Law became effective December 1 2001 ahead of China's WTO membership. For a full text translation see China Law & Practice, December 2001/January 2002, 15(10), pp. 75-89.

2 The implementing regulations became effective September 15 2002. See China Law & Practice, October 2002, 16(8), pp. 85-100 for a translation.

3 Zhongguo Zhishi Chanquan Sifa Baohu [IPR Judicial Protection in China], at http://www.chinaiprlaw.com/flfg/flfg91.htm.

4 TRIPS, Article 41.4.

5 Well-known Trademark Provisions, Article 3.

6 Idem.

7 Well-known Trademark Provisions, Articles 4 and 5.

8 Ibid, Article 6.

9 Idem.

10 Well-known Trademark Provisions, Article 7.

11 Idem.

12 Well-known Trademark Provisions, Article 6.

13 Idem.

14 Well-known Trademark Provisions, Article 8.

15 Idem.

16 Well-known Trademark Provisions, Article 12.

17 Idem.