Interpretation on Several Issues Concerning the Application of the Law to Trials of Civil Disputes Involving the Protection of Well-known Trademarks

(Promulgated by the Supreme People's Court on April 23 2009 and effective as of May 1 2009.)

SPC Interpretation [2009] No.3

The Interpretation has been formulated pursuant to relevant laws such as the PRC Trademark Law, the PRC Anti-unfair Competition Law and the PRC Civil Procedure Law (2nd Revision), and taking into consideration trial realities in order to protect in accordance with the law well-known trademarks in the course of the trial of trademark infringement and other such civil disputes.

Article 1: For the purposes of the Interpretation, the term “well-known trademark” means a trademark that is widely known by the relevant public in China.

Article 2: If, in any of the following types of civil disputes, a concerned party presents as a factual basis its trademark being well-known, the people's court shall, if it genuinely deems it necessary based on the actual circumstances of the case, determine whether the concerned trademark is well-known or not:

(1) a trademark infringement action instituted on the grounds of violation of Article 13 of the Trademark Law;

(2) a trademark infringement action or unfair competition action instituted on the grounds of an enterprise name being identical or similar to its well-known trademark; or

(3) a plea or counterclaim action that satisfies Article 6 hereof.

Article 3: A people's court will not examine whether the concerned trademark is well-known or not in either of the following types of civil disputes:

(1) one where presentation of the trademark as being well-known is not the factual basis for establishment of the alleged trademark infringement or unfair competition; or

(2) one where the alleged trademark infringement or unfair competition is not established due to the fact that it does not satisfy the crucial conditions specified in law.

Where a plaintiff institutes an infringement action on the grounds that the domain name registered and used by the defendant is identical or similar to the plaintiff's registered trademark and the defendant engages in the e-commerce of trading relevant goods through such domain name, thereby being able to cause mistaken recognition among the relevant public, the case shall be handled in accordance with Item (1) of the preceding paragraph.

Article 4: When a people's court determines whether a trademark is well-known, it shall do so based on the facts evidencing its being well-known and by comprehensively considering all of the factors set forth in Article 14 of the Trademark Law, unless, based on the actual circumstances of the case, there is no need to consider all of the factors set forth in said Article in order to determine that the trademark is well-known.

Article 5: Where a party asserts that its trademark is well-known, it shall, based on the actual circumstances of the case, provide the following evidence to establish that its trademark was well-known at the time of the occurrence of the alleged trademark infringement or unfair competition:

(1) the market share, sales territory, and profit and taxes of the goods for which the trademark is used;

(2) the period of continuous use of the trademark;

(3) the method, continuous period and degree of publicity or promotional activities for the trademark, and the funds injected therein and the geographical scope thereof;

(4) the record of protection of the trademark as a well-known trademark;

(5) the market reputation of the trademark; and

(6) other facts that evidence that the trademark was well-known.

The period, scope, method, etc. of use of the trademark as mentioned in the preceding paragraph includes the continuous use thereof before registration thereof was granted.

With respect to evidence such as the period of use of the trademark, ranking in the industry, market survey reports, market value appraisal reports, and whether the trademark has previously been recognised as a famous trademark, the people's court shall objectively and comprehensively examine them together with the other evidence submitted for recognition of the trademark as well-known.

Article 6: If a plaintiff institutes a civil action on the grounds that use of the alleged infringing trademark infringes its exclusive right to use the registered trademark and the defendant makes a plea or institutes a counterclaim on the grounds that the plaintiff's registered trademark reproduces, copies or translates its earlier unregistered well-known trademark, the defendant shall bear the burden of proving the fact that its earlier unregistered trademark is well-known.

Article 7: If a trademark was previously recognised as well-known by a people's court or the State Council's administration for industry and commerce before the occurrence of the alleged trademark infringement or unfair competition and the defendant does not dispute the fact that the trademark is well-known, the people's court shall give such recognition. If the defendant disputes such fact, the plaintiff shall still bear the burden of proving the fact that its trademark is well-known.

Unless otherwise specified herein, a people's court shall not apply the self-admission rule for evidence in civil procedures to the fact of whether a trademark is well-known.

Article 8: If a plaintiff, with respect to a trademark that is widely known to the public in China, provides basic evidence of its trademark being well-known, or if the defendant does not dispute such fact, the people's court shall recognise the fact of the trademark being well-known.

Article 9: If mistaken recognition of the sources of the goods for which a well-known trademark and the alleged infringing trademark are used may be caused among the relevant public, or if a belief may be caused among the relevant public that a specific relationship, such as a licensing arrangement and affiliation, exists between the business operators that use the well-known trademark and the alleged infringing trademark, such circumstance is deemed to fall under “liable to create confusion” as specified in the first paragraph of Article 13 of the Trademark Law.

If a belief that there exists a substantial connection between the alleged infringing trademark and the well-known trademark may be caused among the relevant public, thereby weakening the distinctiveness of the well-known Trademark or damaging the market reputation of the well-known Trademark, or if the market reputation of the well-known trademark is used illegitimately, such circumstance is deemed to fall under “would confuse the public and possibly prejudice the interests of the registrant of the well-known trademark” as specified in the second paragraph of Article 13 of the Trademark Law.

Article 10: Where a plaintiff requests that the defendant be prohibited from using a trademark or enterprise name identical or similar to its well-known registered trademark for dissimilar goods, the people's court shall render its judgment or ruling based on the specific circumstances of the case after comprehensively considering the following factors:

(1) the degree of distinctiveness of the well-known trademark;

(2) the degree to which the well-known trademark is known to the relevant public of the goods for which the alleged infringing trademark or enterprise name is used;

(3) the degree of association between the goods for which the well-known trademark is used and the goods for which the alleged infringing trademark or enterprise name is used; and

(4) other relevant factors.

Article 11: If the registered trademark used by a defendant violates Article 13 of the Trademark Law by reproducing, copying or translating the well-known trademark of the plaintiff, and such reproduction, copying or translation constitutes trademark infringement, the people's court shall, as requested by the plaintiff, render a judgment in accordance with the law prohibiting the defendant from using said trademark; however, the people's court shall not uphold the plaintiff's request if either of the following circumstances applies to the defendant's registered trademark:

(1) the time limit for requesting cancellation as specified in the second paragraph of Article 41 of the Trademark Law has expired; or

(2) the plaintiff's trademark was not well-known at the time the defendant submitted its application for registration.

Article 12: If the circumstances specified in Article 10, 11 or 12 of the Trademark Law under which a mark is prohibited from being used or registered as a trademark applies to an unregistered well-known trademark for which a party has requested protection, the people's court shall not uphold such request.

Article 13: In a civil dispute case involving the protection of a well-known trademark, the people's court shall treat recognition of the well-known trademark solely as a fact in the case and grounds for its judgment, and shall not include the same in the main body of its judgment. If the trial is concluded through mediation, the fact of the trademark being well-known shall not be recognised in the settlement agreement.

Article 14: In the event of a discrepancy between previous relevant judicial interpretations of this court and the Interpretation, the Interpretation shall prevail.