State Ad­min­is­tra­tion for In­dustry and Com­merce re­vised Pro­vi­sions on Re­cog­ni­tion and Pro­tec­tion of Well-known Trade­marks

10/07/2014

More and more companies aim to get their trademarks recognized as well-known trademarks in China. According to Article 13 of the PRC Trademark Law, a well-known trademark in China can enjoy a more extensive protection. I.e. the protection of a well-known trademark can be extended to good and services which are not similar to those covered by such well-know trademark, i.e. also to other classes of goods and services. On 3 July 2014, the State Administration for Industry and Commerce (“SAIC”) promulgated the revised Provisions on the Recognition and Protection of Well-known Trademarks (“Revised Provisions”). The Revised Provisions will take effect on 3 August 2014. The major changes brought about as follows:

  1. The principles of “passive protection” and “case-by-case recognition” are fundamental principles for recognition and protection of well-known trademarks in China. For the first time, these principles have been stipulated in statutory law. “Passive protection” means that no authority is allowed to acknowledge any well-known trademark on its own initiative. “Case-by-case recognition” means that even if a trademark is recognized as a well-known trademark in the course of a dispute by a People’s Court or an authority such as the PRC State Trademark Office or the PRC Trademark Review and Adjudication Board, the trademark will not necessarily also be recognized as a well-known trademark in other cases where the same trademark is involved. These principles were already previously used in practice. Now they are reconfirmed by statutory law.   
  2. The PRC Trademark Law was just revised and took effect on 1 May 2014. In order to reflect the changes of the new law, the Revised Provisions amend the relevant proceedings of recognizing well-known trademarks in China. Now the competent authorities and the relevant proceedings for the well-known trademark recognition are as follows:  

    PRC State Trademark Office

    Proceedings

    PRC State Trademark Office

    Opposition proceedings

    PRC Trademark Review and Adjudication Board

    Review proceedings for not approving registration

    Invalidation proceedings

    Local AIC

    Trademark infringement investigations

  3. The Revised Provisions provide detailed guidance for collecting evidence for recognition of a well-known trademark, especially for evidence reflecting the duration of continuous use of the trademark.   a) Evidence proving the continuous use of the trademark   (1) According to the Revised Provisions, as to those trademarks which have not been registered in China, the applicants shall provide evidence proving the continuous use of the trademark for at least 5 years.   (2) As to trademarks registered in China, the applicants shall either provide evidence proving that the trademarks have already been registered for at least 3 years, or evidence proving the continuous use of the trademark for at least 5 years.   b) Promotional materials and others   As to promotional materials reflecting the duration, extent and geographical scope of any promotion works as well as other evidence such as sales revenue, market share, net profits, tax amount and sales regions, the above evidence shall have been produced in the recent three years.   c) The Revised Provisions also define that the above “three years” and / or “five years” periods refer to the following durations:

    Proceedings

    Duration

    Opposition proceedings

    “three years” and / or “five years” prior to the date of application of the opposed trademark

    Review proceedings for not approving the registration

    “three years” and / or “five years” prior to the date of application of the opposed trademark

    Invalidation proceedings

    “three years” and / or “five years” prior to the date of application of the invalidated trademark

    Trademark infringement investigation proceedings

    “three years” and / or “five years” prior to the date of request for protection of the well-known trademark by applicant

The Revised Provisions reiterate the basic principles for well-known trademark protection. Further, the Revised Provisions specify some procedural issues and the requirements for evidence collection for the well-known trademark protection. With such detailed guidance, now applicants may find it easier to collect adequate evidence in order to prove the well-known status of their trademarks.

Source
China Insight - Intellectual Property
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Authors

Emily Xu
Emily Xu, LL.M.
Senior Associate
Shanghai