Opinion on Certain Issues Concerning the Protection of Well-Known Marks in Civil Disputes in the PRC

As part of its continuing efforts to protect the exclusivity of well-known marks, an Opinion on Certain Issues Concerning the Protection of Well-Known Marks in Civil Disputes in the PRC was passed by the Adjudication Committee of the Supreme People's Court of the PRC on 22 April 2009 and came into effect on 1 May 2009.

Well-known marks in the Opinion refer to those trade marks which are widely known to, and recognised by, the public within China. The Opinion specifies that under the following circumstances, the court will determine if the mark involved is a well-known mark:

1. The litigation relies on the claim that the infringing mark is a reproduction, imitation or translation of a well-known mark and use of such mark leads to confusion;
2. The dispute involves the identity or similarity of the mark with an enterprise name constituting trademark infringement or unfair competition;
3. If the defendant claims that the trademark relied upon by the plaintiff is a reproduction, imitation or translation of another's well-known mark.

If, in a trademark infringement case, unfair competition case or domain name complaint, there is no need to determine if the mark involved is a well-known mark or if those complaints are not founded, the court should not make a determination if a mark is well-known. Even after the court has determined that the mark is well-known, this should only be used as the factual basis and reasons for judgment and should not be included into the substantive finding of the court judgement. If the matter is resolved by mediation, the mediation decision should not include an adjudication whether the mark is well-known.

If prior to a trademark infringement or unfair competition complaint, the mark has been recognised by the court or by the State Administration for Industry & Commerce as a well-known mark, unless the defendant disputes or does not admit that the mark is well-known, the subsequent court shall confirm the adjudication.

Unless the facts are so obvious, in determining if a mark is well-known, the court should consider the degree of fame and history of use of the mark, the duration, extent and geographical scope of any advertising activities, the record of any enforcement action and other factors as may be appropriate. Typically, the owner of the mark will have to provide proof such as information about market share of products bearing the well-known mark, sales territories, profits tax, ranking within the industry, market survey reports, market evaluation analysis etc. to ensure the court can objectively and thoroughly make an assessment. If the mark is already widely known in China and the owner has provided the basic evidence, the court should confirm the well-known status of the mark unless the defendant disputes.

If the court is asked to restrain a defendant from using a mark which is identical or similar to a well-known mark on dissimilar goods or in enterprise names, the court shall take into consideration the degree of fame of the well-known mark, the degree of recognition of the well-known mark amongst the relevant consumer or public of products offered under the objected mark or enterprise name, the degree of association between the goods offered under the well-known mark and those offered under the objected mark or enterprise name and other relevant factors.

If a registered trade mark is a reproduction, imitation or translation of a well-known mark and is alleged to constitute an infringement of the well-known mark, the court should not order the defendant to cease use of that mark: (a) unless the case is brought within five years from the date of registration of the mark or unless the registration is proven to be in bad faith if the case is brought beyond five years; or (b) if the well-known mark was not well-known at the time the defendant filed the mark for registration.

The Opinion also explains what constitutes "confusion" for trademark infringement purposes. Confusion occurs when the public may be confused if the products using the well-known mark or mark under complaint are from the same source of origin or when the public may be confused if there is any licensing, association or relationship between the owners of the two marks. Further, such confusion will "prejudice the interest" of the registrant of the well-known mark if the public may be so confused to believe there may be a certain degree of association between the two and when such belief will dilute the distinctiveness or disparage the reputation of the well-known mark or if there was unlawful exploitation of the market reputation of the well-known mark.

For more information, please contact:

Kenny Wong (kenny.wong@mayerbrown.com)

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