Provisions for the Recognition and Protection of Well-known Trademarks (Revised)

(Promulgated by the State Administration for Industry and Commerce on July 3 2014 and effective 30 days from the date of promulgation.)

Order of the SAIC No.66

Article 1: These Provisions have been formulated pursuant to the PRC Trademark Law (the Trademark Law) and the Implementing Regulations for the PRC Trademark Law (the Implementing Regulations) in order to regulate the recognition of well-known trademarks and protect the lawful rights and interests of well-known trademark holders.

Article 2: A well-known trademark is a trademark that is familiar to the relevant public in China.

The relevant public includes the consumers that use a certain class of goods or services for which the trademark is used, business operators that produce the aforementioned goods or provide the services and the sellers and relevant persons involved in the distribution channel.

Article 3: The Trademark Office and Trademark Review and Adjudication Board shall, according to the request of a concerned party and as required by the examination and handling of a case, be responsible for recognising and protecting well-known trademarks in the course of examination for the registration of trademarks, handling of trademark disputes and the investigation and handling by administrations for industry and commerce of trademark law violations.

Article 4: The recognition of well-known trademarks shall adhere to the principles of recognition in individual cases and passive protection.

Article 5: If a party files an opposition with the Trademark Office in accordance with Article 33 of the Trademark Law and wishes to request well-known trademark protection pursuant to Article 13 of the Trademark Law, he/she/it may submit a written request for well-known trademark protection to the Trademark Office together with the evidence showing that his/her/its trademark constitutes a well-known trademark.

Article 6: If a party wishes to request well-known trademark protection pursuant to Article 13 of the Trademark Law in the course of a re-examination of the denial of registration of a trademark or a trademark invalidation case, he/she/it may submit a written request for well-known trademark protection to the Trademark Review and Adjudication Board together with the evidence showing that his/her/its trademark constitutes a well-known trademark.

Article 7: Jurisdiction over a trademark law violation case involving the well-known trademark protection shall be exercised by the administration for industry and commerce at the municipal (prefectural) level and above. When a party petitions the administration for industry and commerce to investigate and handle a trademark law violation and wishes to request well-known trademark protection pursuant to Article 13 of the Trademark Law, he/she/it may lodge a complaint with the administration for industry and commerce at the municipal (prefectural) level or above of the place where the violation occurred, and submit a written request for well-known trademark protection together with the evidence showing that his/her/its trademark constitutes a well-known trademark.

Article 8: When a party requests well-known trademark protection, he/she/it shall comply with the principle of good faith and be liable for the truthfulness of the facts and evidence he/she/it submits.

Article 9: The following materials may serve as evidence proving compliance with the first paragraph of Article 14 of the Trademark Law:

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

(2) materials evidencing the continuous period for which the trademark has been used, for example, materials evidencing the history and scope of use and registration of the trademark; if the trademark is not registered, materials evidencing that it has been continuously used for not less than five years shall be submitted; if it is registered, materials evidencing that it has been registered for not less than three years or continuously used for not less than five years shall be submitted;

(3) materials evidencing the continuous period, extent and geographical scope of any publicity for the trademark, for example, the method of advertising, publicity and promotional activities during the last three years, their geographical scope, the types of publicity media and the advertising expenditure;

(4) materials proving that the trademark has previously been protected as a well-known trademark in China or other country or region; and

(5) other evidence proving that the trademark is well known, for example, the sales revenue, market share, net profit, amount of taxes paid and sales territory of or on the main goods for which the trademark is used during the last three years.

For the purposes of the preceding paragraph, the terms “three years” and “five years” mean the three years or five years before the filing date for the registration of the trademark against which the opposition has been filed, the filing date for the registration of the trademark against which a petition for invalidation has been filed or the three years or five years before the date of requesting protection as a well-known trademark in the course of the investigation and handling of a trademark law violation case.

Article 10: When a party makes a request for well-known trademark protection in accordance with Article 5 or 6 hereof, the Trademark Office or Trademark Review and Adjudication Board shall handle the same in a timely manner by the deadline set forth in Article 35, 37 or 45 of the Trademark Law.

Article 11: Where a party petitions the administration for industry and commerce to investigate and handle a trademark law violation in accordance with Article 7 hereof, the administration for industry and commerce shall review the complaint materials and decide on whether to open a case in accordance with relevant provisions of the Provisions for the Procedure for the Imposition of Administrative Penalties by Administrations for Industry and Commerce. If it decides to open a case, the administration for industry and commerce shall conduct a preliminary verification and review of the request for well-known trademark protection and the related evidence submitted by the party to determine whether they comply with Articles 13 and 14 of the Trademark Law, Article 3 of the Implementing Regulations and Article 9 hereof. If, after preliminary verification and review, they are found to comply with the provisions, it shall forward the request for instructions on recognising a well-known trademark and a copy of the case materials to the administration for industry and commerce at a higher level within 30 days from the date of opening the case. If they are found not to comply with the provisions after review, the matter shall be handled in a timely manner in accordance with the Provisions for the Procedure for the Imposition of Administrative Penalties by Administrations for Industry and Commerce.

Article 12: The administration for industry and commerce of the province, autonomous region or municipality directly under the central government shall conduct a verification and review of the materials relating to the recognition of a well-known trademark forwarded by the municipal (prefectural) level administration for industry and commerce in its jurisdiction to determine whether they comply with Articles 13 and 14 of the Trademark Law, Article 3 of the Implementing Regulations and Article 9 hereof. If, after verification and review, they are found to comply with the provisions, it shall forward the request for instructions on recognising a well-known trademark and a copy of the case materials to the Trademark Office within 30 days from the date of receipt of the materials relating to the recognition of a well-known trademark. If they are found not to comply with the provisions after review, the relevant materials shall be returned to the original case opening authority, which shall handle the matter in a timely manner in accordance with the Provisions for the Procedure for the Imposition of Administrative Penalties by Administrations for Industry and Commerce.

Article 13: When recognising a well-known trademark, the Trademark Office or Trademark Review and Adjudication Board shall comprehensively consider the factors set forth in the first paragraph of Article 14 of the Trademark Law and in Article 9 hereof, but shall not set satisfaction of all of the factors as the precondition for such recognition.

If the Trademark Office or Trademark Review and Adjudication Board requires verification of relevant matters by the local administration for industry and commerce when recognising a well-known trademark, the relevant local administration for industry and commerce shall offer its assistance.

Article 14: Where the Trademark Office conducts a review of the materials relating to the recognition of a well-known trademark forwarded by the administration for industry and commerce of the province, autonomous region or municipality directly under the central government and determines that the trademark in question constitutes a well-known trademark, it shall issue an official reply to the administration for industry and commerce of the province, autonomous region or municipality directly under the central government that forwarded the request for instructions.

The administration for industry and commerce that opened the case shall handle the matter in accordance with the law within 60 days after the issuance of the official reply for recognition by the Trademark Office and forward a copy of the administrative penalty decision to the administration for industry and commerce of the province, autonomous region or municipality directly under the central government. The administration for industry and commerce of the province, autonomous region or municipality directly under the central government shall forward the details of the handling of the case and a copy of the administrative penalty decision to the Trademark Office within 30 days from the date of receipt of such decision.

Article 15: Administrations for industry and commerce at every level shall strengthen the protection of well-known trademarks and safeguard the lawful rights and interests of rights holders and consumers in the course of their trademark registration and administration work. Where there is suspicion that a trademark law violation constitutes a criminal offence, the case shall be transferred to the judicial authority in a timely manner.

Article 16: When a party requests well-known trademark protection pursuant to Article 13 of the Trademark Law in the course of an examination for the registration of a trademark, the handling of a trademark dispute or the investigation and handling by the administration for industry and commerce of a trademark law violation, he/she/it may provide a record of the trademark having been protected as a well-known trademark in China.

Where the scope of protection of a well-known trademark as requested by the party is essentially identical to the scope of protection accorded such trademark upon its previous treatment as a well-known trademark, and the other party has no objection as to the fact of the trademark being well-known or, although he/she/it has an objection, the grounds for the objection and the evidence provided are clearly insufficient to back up the objection, the Trademark Office, Trademark Review and Adjudication Board or the authority that opened the trademark law violation case may accord protection to the trademark in question as a well-known trademark based on the record of protection and while taking into account the relevant evidence.

Article 17: If a party fraudulently secures well-known trademark protection in a trademark law violation case through improper means, such as fraud or the provision of fraudulent evidence, the Trademark Office shall revoke the recognition of the trademark in question and notify the administration for industry and commerce of the province, autonomous region or municipality directly under the central government that forwarded the request for instructions on recognition of the well-known trademark.

Article 18: If a local administration for industry and commerce violates Article 11 or 12 hereof by failing to perform its duty of verifying and reviewing the materials relating to the recognition of a well-known trademark, or the second paragraph of Article 13 hereof by refusing to give its assistance or failing to perform its duty of verification, or the second paragraph of Article 14 hereof by failing to handle a trademark law violation case by the deadline or failing to forward the details on the handling of the case by the deadline, the administration for industry and commerce at the next higher level shall give it notice and order it to rectify the matter.

Article 19: Administrations for industry and commerce at each level shall establish and improve a system of monitoring and inspection of well-known trademark recognition work.

Article 20: If an official participating in the work of recognition or protection of well-known trademarks is derelict in his/her duties, abuses his/her authority, practises favouritism, by committing fraud, handles matters relating to the recognition of well-known trademarks in a manner that violates the law, accepts property from a concerned party or seeks illegitimate gains, he/she shall be dealt with in accordance with relevant provisions.

Article 21: These Provisions shall be effective 30 days after the date of promulgation. The Provisions for the Recognition and Protection of Well-known Trademarks promulgated by the State Administration for Industry and Commerce on April 17 2003 shall be repealed simultaneously.