China’s Supreme People’s Court (Supreme Court) promulgated the Interpretation on Hearing Civil Disputes with Respect to a Well-Known Trade Mark (Interpretation) on 22 April 2009, which entered into effect on 1 May 2009. The Interpretation indicates that judicial recognition of well-known trade marks will be strictly examined to prevent companies from deliberately creating trade mark disputes as a means to boost the profile of their products.
Courts Will Only Recognise Well-Known Trade Marks When Absolutely Necessary
According to the Interpretation, recognition of well-known trade marks would likely be made only in the following three types of situations:
- The rightful owner of an unregistered trade mark sues other parties for using its trade mark (or the Chinese translation or imitation) in identical or similar goods or services, or the rightful owner of an unregistered trade mark is defending itself when another party holding a same or confusingly similar registered trade mark claims trade mark infringement against such rightful owner.
- The rightful owner of a registered trade mark sues other parties for using its trade mark (or the Chinese translation or the imitation) on dissimilar goods or services.
- The rightful owner of a registered trade mark sues other parties for using its trade mark (or the Chinese translation or the imitation) as a trade name or company name.
Even in the above three examples, the competent courts can only examine whether the claimed marks are well known when absolutely necessary. In general, the courts consider it an absolutely necessary circumstance only when the well-known status is the single way of determining an infringement.
Cross-Category Protection Should Not Be Exaggerated Blindly
According to the Interpretation, when the rightful owner of a registered trade mark sues other parties for using its trade mark on dissimilar goods or services, the court must consider the relevance between the goods or services of both parties and consider the extent to which the relevant public purchasing or using the dissimilar goods or services knows the well-known trade mark.
Furthermore, the level of protection afforded to a well-known mark shall be in compliance with the distinctiveness and the degree of the well-known status. In other words, the more distinctive and famous the trade mark, the broader the protection given, with respect to dissimilar goods and services. However, cross-category protection should not be exaggerated blindly in categories that are obviously unrelated.
Jurisdiction on the Recognition of Well-Known Trade Marks
Prior to the promulgation of the Interpretation, the Supreme Court issued a notice requiring that all civil cases involving examination of well-known trade marks shall be heard by the intermediate courts in limited cities. Also, courts must immediately report to the Supreme Court for supervision and recordation once a well-known trade mark is recognised and the verdict takes effect. These procedural regulations are expected to push judges to examine more cautiously the evidence supporting well-known trade marks.
For purpose of this article, “China” only refers to the mainland of China, excluding Hong Kong, Macao and Taiwan. “Trade mark” refers to either a trade mark or service mark.
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