1. an administrative proceeding, when a formal request is made to the China Trademark Office during an administrative enforcement action (following a raid) or an opposition, or the review of a recognition request arising from an opposition or cancellation proceeding before the Trademark Review and Adjudication Board, or

2. through judicial proceedings, during a civil trademark infringement action before certain People's Courts.

An established principle is that recognition is sequential in nature depending upon the particular circumstances of a specific case. There is no presumption that a mark remains well known forever. If the owner needs to use the mark's well-known status in a future situation, they must prove that it is still eligible for recognition all over again. However, the previous recognition weighs heavily in favour and the burden of proof is lighter. Lists of marks that have achieved well-known status continue to circulate, but they are a historical record; they are not a register for the future.

It is hard to say whether a judicial or administrative procedure is easier for recognition. You have to consider in what context the well-known mark will be used. Is it an opposition or cancellation of another party's trademark application or registration? Perhaps a squatter or competitor registering a mark in a dissimilar category of goods or services? Or is it an infringement scenario?

Evidentiary submissions will be similar whichever route you choose and usually include:

1. certificates of trademark registrations in China and abroad;

2. sales volumes and geographical range of the commercialisation of goods or services under the trademark;

3. the duration, extent, geographical scope and medium of any publicity or advertising activities for the trademark;

4. revenues generated from the goods or services under the trademark in at least the last three years;

5. the duration of continuous use of the trademark; and

6. records of how the trademark has historically been protected.

It is fair to say that under current practices and procedures in China, the conditions for well-known trademark recognition are narrowly interpreted and the threshold is often quite high. Many commentators, both domestic and international, are calling for a relaxation of the conditions during the next round of revisions to the PRC Trademark Law (中华人民共和国商标法).

Justin Davidson

Norton Rose, Hong Kong

The domestic perspective

Recognition of a well-known trademark allows the owner a wider range of exclusive rights. Protection is no longer limited to identical or similar goods or services as it extends to non-identical or dissimilar goods and services. The company and domain name are also protected. A well-known trademark is a relative concept, however, and the protection afforded possesses boundaries. Recognition of a well-known trademark does not guarantee special protection under any circumstances.

Recognition can occur through both administrative and judicial systems. The administrative system includes the Trademark Office or the Trademark Review and Adjunction Board. Administrative proceedings recognise the majority of well-known trademarks. However, this involves multiple authorities and is a time-consuming process. If a trademark is under dispute, it is possible to ask the court to recognise the well-known status of the mark during proceedings. Compared with the administrative system, it is not only time efficient, but also simple. The judicial route does have drawbacks as it involves judges, who are cautious. Previous cases mean they are sceptical of entertaining enterprises committing fraud through well-known trademark recognition.

In the administrative system, if a trademark is found or suspected to be in violation of the law, the mark owner can request protection by asking to be recognised as a well-known trademark. This involves filing a written application to the relevant Department of Administration for Industry and Commerce at the regional level. Simultaneously, an application to the same department, but at the provincial level, is also required. In addition, the owner has to submit supporting documentation proving that the mark is well known. The departments of administration at both the regional and provincial level refer the case to the China Trademark Office. The office decides whether the mark is worthy of well-known status. This is a comprehensive effort, but given the statistics, the chances of recognition are higher.

When attempting to get well-known status for a trademark, especially through the judicial system, the owner should follow article 14 of the PRC Trademark Law. Its guidelines are narrow and there is little information to explain to what extent each of these criteria must be met. It states, “when recognising a well-known trademark, the following factors shall be considered:

(1) the degree of notoriety of the trademark among the relevant public;

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

(3) the continuous length, degree and geographical scope of the publicity for the trademark;

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

(5) other factors associated with the trademark's being well known.”

If a trademark under dispute already has well-known status from the court and the other party does not raise an opposition, the court will not review the recognition again. If an opposition is raised, the court will start the well-known trademark recognition proceeding again. This means that a well-known trademark can be disputed and forced to be recognised all over again.

The same is also true of administrative proceedings. If a trademark is under dispute and the other party raises objections, the China Trademark Office or the Trademark Review and Adjunction Board has to start the process from the beginning. However, under the administrative system, the protection scope of the case has to fall along the lines of well-known trademarks. In addition, the plaintiff must submit evidence that justifies why the mark is no longer well-known. An opposition can be raised and rejected if the evidence fails to invalidate the well-known status.

A trademark owner has to consider which route is best for not only initial recognition, but also whether recognition from the court or administrative system will stand up if the status comes under dispute.

David W Cheng

Ge Cheng & Co