Hong Kong: New PRC Provisions For Well-Known Trademarks

Effective 1 June 2003, China has new provisions for the protection of well-known trademarks. The "Provisions for the Recognition and Protection of Well-known Trademarks" ("Provisions") were issued in conformity with the PRC Trademark Law and Trademark Regulations revised in 2001 and 2002, respectively. The Provisions provide details on the process for obtaining protection for a well-known trademark and indicate where to apply.

The Provisions state the definition of a well-known trademark as one which the relevant public is very aware of and holds in high esteem. The "relevant public" includes consumers, merchants who produce or furnish the service and sellers and employees in the relevant business channels. To be well-known, it is not required that the mark be registered in China. However, it is necessary that the mark be well-known abroad and in China.

Evidence which may be used to establish that a mark is well-known includes documentation showing the relevant public is aware of the trademark; duration and sphere of use; prior registrations; geographical areas of advertising and sales promotion and budget for promotion; evidence of protection of the mark in China and other countries; sales volume; income, profit and taxes and sales areas; and principal products bearing the trademark.

The procedure for applying for recognition of a mark as a well-known trademark is set forth in the Provisions. The owner of a trademark may receive recognition from either the PRC Trademark Office or the Trademark Review and Adjudication Board ("TRAB"). An opposition by the owner of a well-known mark may be filed with the Trademark Office, and a cancellation proceeding may be filed with TRAB. To stop the use of an infringing mark, application may be made with the administrative authority for industry and commerce at the provincial level, who shall make a determination whether the applicant has established a case for protection of a well-known mark prior to transferring the case within fifteen days to the Trademark Office.