China: Famous Trademarks And The Protections Offered Under Chinese IP Law To Such Marks

Last Updated: 5 January 2018
Article by John Tan

China is a "first registration " jurisdiction when it comes to trademark protections, meaning that the first individual or corporate entity to register a trademark will generally take priority over subsequent applicants. This can give significant leverage to a "squatter" who applies for a trademark in the name of a famous or well-known person or company. For instance, a Chinese company in 2006 applied for trademark protection for the name "Trump" in China, while U.S. President Donald Trump also applied for trademark protection to his same name. After waiting for years to make a decision, the Chinese government recently granted Donald Trump trademark protection to most uses of the name "Trump" in China, while former basketball player Michael Jordan was recently granted the trademark protection for the Chinese version of his name.

One of the most important question presented in Chinese intellectual property (or IP) law is what protections are offered to those with famous names and how someone who possesses a famous name can protect his or her name (and thus the value of that person's or company's brand) under Chinese law.

However, despite these recent court decisions, qualifying as a famous mark under Chinese IP law is very different than qualifying as "well-known" mark for purposes of the standard that must be met to register the mark, the protections offered to the mark, and even the government agency that regulates whether trademark protection is given to the mark. While in some foreign jurisdictions, the concepts of "famous" and "well-known" marks are virtually synonymous, the situation is quite different in China. In China, the designation of marks as "famous" is handled on a provincial basis, whereas obtaining "well-known" status is a country-wide designation. Nevertheless, obtaining famous name designation is an important step for many brands, as it can reflect the quality of the brand and assist in future sales and marketing efforts.

What is Defined as a Well-known Mark under China Trademark Law?

Surprisingly, there is no single definition of what constitutes a Well-known Mark under any applicable Chinese law or regulation. Instead, the designation as to what is a famous mark is left to the discretion of regulators at the applicable local Administration of Commerce and Industry (AIC). A related concept are what are known under Chinese IP law as "well-known" trademarks. A "well-known" mark is a mark which is known widely by the relevant public and which enjoys a relatively high reputation throughout China. A mark owned by any party from any country can be recognized as well known in China – regardless of whether it is registered or unregistered – provided that the relevant requirements are met. However, there is no official registry of well-known trademarks, and recognition of the well-known status of a trade mark is made on a case-by-case basis. Once an administrative or judicial decision has been made, stating that the trade mark is well-known, a record is kept and the owner may use such decision(s) in future cases in order to enjoy additional advantages, such as receiving higher levels of damages and more easily preventing the registration of similar trademarks. Although well-known status exists, in practice it can be very difficult to gain, especially for foreign brands. For example, while cosmetics company L'Oreal and consumer productions company Gillette have been given well-known mark designation, fashion brand Louis Vuitton was unsuccessful in its application for a well-known trademark in China. Nevertheless, obtaining famous name status can be an important stepping-stone to achieving well-known status under China Trademark Law, and should be an important part of any brand's marketing plans.

What PRC Government Agency or Body Grants the Designation of a Particular Trademark as a Famous Mark?

The China Trademark Office, the China Trademark Review and Adjudication Board, the state AIC and the courts are responsible for recognizing well-known trademarks, while famous marks in China are governed and identified by the local AIC of each province. Recognition that a mark is famous applies only to trademarks registered by local companies or individuals; foreign applicants cannot apply to certify their marks as 'Well-known Mark' in China. For example, the Beijing AIC can only recognize and govern the certification of famous trademarks registered by individuals or companies in Beijing. The same would be true for Shenzhen City in Guangdong Province; any designation made by that province's AIC would only apply in that province. Therefore, it is important to register for well-known mark protection in as many provinces as possible, given that a famous name designation is not nationwide.

What Showing Must Be Made to Obtain Trademark Protection under China Trademark Law for a Famous Name

In order to obtain trademark protection under Chinese law for a well-known mark, a successful applicant must be able to demonstrate the mark's reputation in the applicable geographical area as well as that the mark has been in use for at least three years. Economic indicators supported by audit reports or certificates issued by the relevant tax authority; any industry rankings at the provincial level that are enjoyed by the applicant; awards granted by the authorities at provincial level; and any evidence of the publicity supported by evidence, such as advertising contracts, copies of advertisements and invoices. If an applicant is successful in an application for designation of a famous name mark, the trademark protection lasts for up to three years

Why Is it Important to Register for Well-known Mark Protection

It is crucial for Chinese trademark registrants to apply to have their marks certified as famous. Doing so not only protects the value of the applicant's brand but can also serve as a defensive measure to prevent squatters from attempting to register for the mark. As detailed above, the criteria to be designated as a famous mark under Chinese law can be stringent and difficult to meet. Nevertheless, obtaining such a designation can be extremely beneficial for a business, as not only can it assist the business in promoting the strength, quality, and reputation of its brand, but obtaining famous name designation from a provincial AIC could also assist the applicant in obtaining nationwide well-known status in the future if it wishes to obtain this level of protection under China Trademark Law.

Originally published March 1, 2017

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 Mondaq.com.

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

Authors
Similar Articles
Relevancy Powered by MondaqAI
HFG Law & Intellectual Property
Kangxin
 
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
HFG Law & Intellectual Property
Kangxin
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
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
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
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

Mondaq.com (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 www.mondaq.com

To Use Mondaq.com 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.

Disclaimer

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.

General

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