Revised Provisions on Well-Known Mark Recognition Issued

Following the recent amendments to the PRC Trademark Law that took effect on May 1 2014, China issued revised Well-Known Mark Recognition and Protection Provisions in early July 2014, with effect from August 2 2014, that supersede the existing provisions from 2003.

The amendments to the Trademark Law did not introduce fundamental changes to the well-known mark (WKM) regime. Nevertheless, the Revised Provisions provide some helpful guidance on the nature and types of evidentiary materials to be submitted in support of an application for recognition of and protection as a WKM.

In respect of trademarks registered in China, well-known mark recognition and protection can be sought where a third party’s mark is (1) a copy, imitation or translation of another’s WKM; (2) is likely to cause confusion; and (3) is being applied for registration or used in respect of dissimilar goods or services.

Where the WKM is not registered in China, protection instead is limited to such third party marks in respect of similar goods or services. What remains uncovered by China’s well-known mark regime is the situation where a third party’s mark is a copy, imitation or translation of another’s unregistered WKM in respect of dissimilar goods or services. Registry pirates regularly exploit this third category and file applications for arguably well-known trademarks not registered in China, but instead only specifying goods or services dissimilar to those for which the target’s trademark is famous.

Traditionally, well-known mark protection has not been easy for foreign brands to obtain in China. For example, in 2012 there were only four foreign brands: Adidas (for its logo), Bosch (in English and Chinese (“博世”)), Gold Taste (in Chinese (“金味牌”)), and Johnson & Johnson (in Chinese (“强生”)).

Strengthening guidance on acceptable evidence

The 2003 Provisions did not provide many details as to what materials would be acceptable as evidence for mark owners seeking WKM protection. The Revised Provisions provide the following clarifications in respect of acceptable evidentiary materials:

• • Evidence of continuous trademark use: where the well-known mark to be protected is unregistered in China, evidence showing at least five years of continuous use; where the well-known mark is registered in China, evidence that the mark has been registered for at least three years or continuously used for at least five years (if registered for less than three years);

• • Evidence of promotional activities for the mark: materials from the last three years; and

• • Other evidence proving the trademark to be well-known mark: materials from within the last three years in respect of sales income, marketing share, net profit, taxes paid, sales territory, etc.

These three- and five-year periods are calculated prior to the relevant date for the case in which the WKM protection request arises. For a trademark opposition or invalidation petition, it is prior to the opposed mark’s application date. For a trademark enforcement matter, it is prior to the filing date of request for protection as a well-known mark.

The 2003 Provisions did not provide much guidance to the authorities in respect of case management issues. The Revised Provisions provide timelines for case processing and incorporate the AIC Administrative Punishment Imposition Procedures Provisions to standardise case management practices and clarify responsibilities of involved authorities.

Added principles and removed conditions

Apart from the guidance above, the Revised Provisions added and removed some principles or requirements, summarised in the chart below.

Removal of the ENRA Provisions makes sense in light of the amended Trademark Law’s Article 58, which provides that incorporation of a well-known mark as part of third-party enterprise names is now to be dealt with under the PRC Anti-Unfair Competition Law.

Impact of Revised Provisions

Some procedural specifics have been clarified, and provisions added or removed to align with recent Trademark Law amendments. Overall, however, the Revised Provisions are not expected to result in a sea change in well-known mark recognition and protection in China, the evidentiary thresholds for which were not lowered as a result of those recent amendments.

In light of the high threshold and cost to obtain well-known mark protection in China, the best strategy for a brand owner remains to register its trademarks in China at the earliest opportunity (particularly as well-known mark protection for unregistered marks is almost certainly a losing proposition), including to file widely and defensively to cover classes of goods/services that are frequently the subject of pirate applications – though perhaps of little interest to the brand owner itself.

Troy Rice