Confusion Regarding the Protection of Well-known Trademarks in China

Two recent cases suggest that those intent on riding the goodwill of well-known trademarks are involved the trademark registration process in China.

Recently, the owner of the trademark logo representing Mercedes-Benz filed an application to oppose a registration containing a similar logo together with the Chinese characters '???'(Sichuan Wine Feel), which was registered in April 2003 by a company in Sichuan province in class 33 (covering wines). Reportedly, the application for registration almost got through the preliminary registration process because the registration contains words built into the brand logo and covers goods of a class dissimilar to the goods covered by the registration of the brand logo of Mercedes-Benz.

In another case, it was reported in the China Trademark Gazette of 2005 (Vol. 22 - for marks that were preliminarily approved on June 14, 2005) that an individual from Wenzhou, Zhejiang province applied for the registration of the trademark 'MICROSOFT TV' in Class 11 covering electrical goods. The application was filed on July 30 2003 and actually passed the preliminary registration process before the PRC Trademark Office.

The above two examples raise questions as to the scope of protection granted to well-known trademark owners in the process of registering trademarks in China. In other words, whether the trademark examination officers have a duty to avoid confusion with well-known trademarks and to reject confusing applications from registration by persons other than their owners in classes other than where the marks are well known.

The PRC Trademark Law (中华人民共和国商标法)(as amended on October 27, 2001) provides protection for well-known trademarks in two situations under Article 13:

i) Where, in relation to identical or similar goods, a trademark that is a reproduction, an imitation or translation of another party's well-known trademark that is not registered in China, and that is liable to cause confusion, shall not be registered or put into use.

ii) Where, in relation to different or dissimilar goods, a trademark that is a reproduction, an imitation, or translation of another's well-known trademark that is registered in China, and that so misleads the public that it results in damage to the interest of the owner of the well-known trademark, shall not be registered or put into use.

Accordingly, unregistered well-known trademarks are protected in China in relation to identical or similar goods. On the other hand, protection of registered well-known trademarks extends to different or dissimilar goods provided that the registration or use of identical or similar marks misleads the public and results in damage to the interest of the well-known trademark owner.

The Paris Convention for the Protection of Industrial Property provides in Article 6^bis that the countries of the Union undertake - ex officio if their legislation so permits, or at the request of an interested party - to refuse or to cancel a registration, and to prohibit the use of a trademark which constitutes a reproduction, an imitation, or a translation liable to create confusion of a mark considered by the competent authority of the country of registration or use to be well known in that country. Registration cancellation or refusal can also be granted if the mark is already registered with a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions apply, furthermore, when the essential part of the mark constitutes a reproduction, or an imitation liable to create confusion.

The above examples, however, show that protection of well-known trademarks remains a problem in the registration process. This is partly because determination of well-known foreign trademarks in China is conducted upon request by the parties and on a case-by-case basis; and partly because there seems to be a lack of specific requirements for trademark examiners to assume a duty of care to avoid confusion with well-known trademarks in the process of approving trademark applications. So long as the application conforms to the requirements for registration under the PRC Trademark Law (中华人民共和国商标法), the Trademark Office will grant preliminary approval and have the mark published in the China Trademark Gazette. It is then left up to the trademark owner to oppose or cancel confusingly similar applications. Following the preliminary approval of an application, a period of three months is available for the public to file oppositions. There is also a subsequent procedure available for the Trademark Office to cancel a registered trademark, ex officio, or for the Trademark Review and Adjudication Board (TRAB) to cancel the registration, upon request by any person, if the registration violates the relevant provisions of the PRC Trademark Law (中华人民共和国商标法), or if the registration was obtained by undue means.

Under law, a trademark owner is given the opportunity to monitor the applications and seek to oppose or cancel the registration of a confusingly similar trademark. However, in order to save time and costs, it is suggested that the trademark examiners exercise a duty of care in examining trademark applications and refrain from approving confusingly similar applications. Take the example of 'MICROSOFT TV' - the essential component of the mark is a reproduction of the mark 'MICROSOFT'. Such an application should have been rejected in the first place, even though it was filed in a different class, given the fame of the mark 'MICROSOFT' in China. Had the trademark officer exercised a duty of care to avoid confusion, no doubt would there be fewer opposition and cancellation actions, and ultimately less confusion in practice.