• Professional News
  • 02 October 2014

New guidelines: Recognition and protection of well-known trademarks in China

New Chinese guidelines on the recognition and protection of well-known trademarks to give a general idea of Chinese requirements for obtaining status as a well-known trademark

The new Chinese Provisions for the Recognition and Protection of Well-known Trademarks were issued on 3 July 2014 following the amended Chinese trademarks act, which came into force on 1 May 2014.

The new guidelines replace the previous guidelines with effect from 3 August 2014 and list the requirements for obtaining status as a well-known trademark in China.

Definition of well-known trademarks
A well-known trademark is defined as a trademark which is well-known by the relevant sector/public in China.

The relevant sector must be construed as meaning the general public engaging in the goods or services for which the trademark is used and registered.

Consequently, well-known status may now be obtained within a niche, which is a considerable improvement of the requirements for obtaining status as a well-known trademark.

Competent authority
The China Trademark Office under State Administration for Industry and Commerce (CTMO) as well as specific courts are the competent authorities to recognise a trademark's well-known status.

Proof of trademark's well-known status
As proof of a trademark's well-known status within the relevant sector, the following is important: 

  • Documents showing the extent of the relevant sector's knowledge of the trademark.
  • Documents showing the duration and extent of the trademark use.

As for trademarks not registered in China, the documentation must show use of the trademark for a period of no less than five consecutive years. Such trademarks are, however, generally not likely to obtain well-known status in practice.

As for trademarks registered in China, the documentation must show use of the trademark within three years of registration of the trademark or for five consecutive years. In this respect, the following is of importance: 

  • Documents showing the duration, extent and the geographical area of any form of marketing and sales promotion of the trademark, including the type of marketing, the geographical scope, the media used as well as the extent of marketing for the past three years.
  • Documentation showing that the trademark is protected as a well-known trademark in China or other countries, the latter, however, being of less importance.
  • Other documentation showing the reputation of the trademark, including documentation of earnings, market shares, tax information and the geographical area where goods provided with the trademark have been sold for the past three years.

Even though a trademark is recognised as well-known in connection with opposition proceedings, it will not necessarily be deemed to be well-known in a similar case concerning the same trademark.

The trademark should, however, be protected as a well-known trademark if the opponent does not object to it obtaining status as well-known in subsequent proceedings or if there is not sufficient proof that the trademark is no longer well-known.

Protection and use
Well-known trademarks not registered in China are protected against identical and similar goods. Whereas well-known trademarks registered in China are also protected against non-identical or non-similar goods.

In the event of non-identical or non-similar goods, it must be considered whether the infringing mark is a copy, imitation or translation of the earlier well-known trademark which may mislead the public and have a detrimental effect on the owner of the well-known trademark.

For further information, please contact Claus Barrett Christiansen, partner and member of Bech-Bruun's Chinese Desk, at clb@bechbruun.com

Tags
  • Copenhagen

    Langelinie Allé 35
    2100 Copenhagen

  • Aarhus

    Værkmestergade 2
    8000 Aarhus C

  • Shanghai Representative Office

    No.1440 Yan'an Middle Road, Suite 2H08
    Jing'an District, 200040 Shanghai, P.R. China

  • Bech-Bruun Law Firm P/S

    P +45 72270000
    F +45 72270027
    E info@bechbruun.com
    VAT number 38 53 80 71
    Cookie policy
    Legal Notice and Disclaimer
    Privacy Policy