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
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