China: RITZ-CARLTON: Well-Known Mark In China

Last Updated: 5 June 2014
Article by Jason Wang

As a famous luxury hotel band around the world, the RITZ-CARLTON mark owned by Ritz-Carlton hotel was recognized by China court recently. Both the trial court (Beijing First Intermediate Court) and the appellate court (Beijing High Court) overruled the decision of the Trademark Review and Adjudication Board (TRAB), and recognized the RITZ-CARLTON mark on hotel services and restaurant services as a well-known mark. The presiding judge from the appellate court for this case cited this typical case (cited this as a typical case) and posted comments and analysis on China Intellectual Property News on November 8, 2013.

The RITZ-CARLTON case covers at least the following four issues:

1. Rules for well-known mark recognition

According to the statistics, the Beijing First Intermediate Court only recognized well-known marks in some 100 cases from 2001 to 2012. Then, are there any particular rules to recognize a mark as well-known?

According to practices in China, there are three basic rules for well-known mark recognition: 1) recognition based on a case by case situation, 2) recognition based on the party's request, and 3) recognition based on necessity. The newly added Article 14(1) of the Chinese Trademark Lawas amended on August 30, 2013, which shall come into effect as of May 1, 2014, prescribes that the well-known status of a trademark shall be recognized based on the request of the party concerned and as a factual determination for the necessity of the trademark case.

The above provision of the new Chinese Trademark Law has expressly affirmed by the legislation as the rules to recognize well-known marks. In this case, according to the court decisions and the handling judge's analysis, the hotel services and restaurant services provided by Ritz-Carlton hotel are not identical or similar to those under the Disputed Mark, thus the only remedy to protect Ritz-Carlton hotel's rights and interests is the well-known mark argument. Therefore, the recognition of well-known mark for RITZ-CARLTON is consistent with the rule of recognition based on necessity and other rules mentioned above.

2. Cross-Class protection or All-Class protection

The courts hold that the Disputed Mark's designated services for "Residential houses sales services; Real estate agencies" in Class 36 shall be cancelled, while other designated services, like "Brokerage, Guarantees, etc.," in Class 36 shall remain as registered.

The presiding judge's comments and analyzes are as follows: Well-known mark protection is a stronger cross-Class protection, but it is not an all-Class protection. Even if a mark is recognized as well-known, such stronger protection shall be entitled only within the corresponding scope. In this specific case of RITZ-CARLTON, the Cited Mark on "Hotel services, Restaurant services, etc." is recognized as a well-known mark. The Court held that services for "Residential houses sales services; Real estate agencies" designated under the Disputed Mark are related to the hotel services and restaurant services. Therefore, the Court ruled that the registration of the Disputed Mark on "Residential houses sales services; Real estate agencies" is likely to mislead relevant public and prejudice Ritz-Carlton's rights and interests accordingly. However, with respect to other services under the Disputed Mark, they are not incorporated into the protection scope of well-known mark.

The court ruling as well as the presiding judge's comments and analysis comply with the Chinese Trademark Law. According to Article 13(2) of the current Chinese Trademark Law and Article 13(3) of the new Chinese Trademark Law, one of the prerequisites for a registered well-known mark is that it "tends to mislead the public and prejudice the interests of the well-known mark owner". This has been interpreted as that well-known mark recognition will not cover all Classes of goods/services. Instead, it merely covers those Classes which may "tends to mislead the public and prejudice the interests of the well-known mark owner".

3. English mark protects Chinese equivalent

The Courts held that a close association has been established between the mark LI SI KA ER DUN in Chinese and RITZ-CARLTON via Ritz-Carlton's use and promotion. Thus, the Disputed Mark LI SI KA ER DUN in Chinese is the translation of RITZ-CARLTON.

According to Article 13(2) of the current Chinese Trademark Law and Article 13(3) of the new Chinese Trademark Law, a mere "translation" of a well-known mark is forbidden. However, the key issue is to establish the close or corresponding association between an English mark and its Chinese equivalent. In this case, the Courts held that Chinese media has adopted LI SI KA ER DUN in Chinese as the major translation for the RITZ-CARLTON mark, and Ritz-Carlton has been using and filed the trademark application for LI SI KA ER DUN in Chinese as the Chinese equivalent of RITZ-CARLTON. Thus, LI SI KA ER DUN in Chinese shall be deemed as the translation of RITZ-CARLTON.

4. New evidence accepted by courts

The Courts held that new evidence subsequently submitted by Ritz-Carlton hotel in the litigation is admissible. For practice in China, this issue is hotly debated and whether the Court will admit the new evidence varies from case to case. In this case, the court ruling and the presiding judge's comments point out the essence and key factor to be considered.

The presiding judge comments and analyzes are as follows: There are different views between the TRAB and the Court as to whether the Cited Mark RITZ-CARLTON should be recognized as a well-known mark. The direct reason for this issue is the large amount of evidence supplemented by Ritz-Carlton hotel during the administrative litigation proceeding. Usually, in the administrative litigation proceeding, the Court does not necessarily admits all the evidence subsequently supplemented by the parties during the litigation proceeding. In this case, however, the evidence supplemented by Ritz-Carlton hotel is to strengthen the evidence submitted during the TRAB proceeding. It would seriously affect Ritz-Carlton hotel's rights and interests if these evidence were not to be admitted, especially when comprehensively considering the evidence submitted during the TRAB proceeding and litigation proceeding, the RITZ-CARLTON mark may be recognized as a well-known mark. It would probably violate the principle of fairness and justice if the supplemented evidence were not admitted.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Jason Wang
Similar Articles
Relevancy Powered by MondaqAI
China Sinda Intellectual Property Ltd
King & Wood Mallesons
King & Wood Mallesons
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Similar Articles
Relevancy Powered by MondaqAI
China Sinda Intellectual Property Ltd
King & Wood Mallesons
King & Wood Mallesons
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions