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What are the benefits of being recognized as a well-known trademark in China? How can a foreign brand apply for well-known trademark recognition in China? And, what legal protections come with well-known trademark status in China?
Many companies, either domestic or overseas, would like to have their brands recognized as well-known trademarks in China. The obvious benefits are a) stronger protection of the trademark, especially for opposing similar trademarks in other classes; b) strengthening anti-counterfeiting and infringement actions; and c) commercial promotion.
Once a trademark is recognized as a well-known mark, its protection scope would cover the following:
- To prevent the malicious registration and use of the unregistered mark by others in respect of the same goods or services;
- To prevent the application for or registration of a trademark, which is identical to its well-known trademark in respect of non-similar goods or services;
- To prevent another's registration of the trademark as a business name;
- To prevent the registration of the trademark as a domain name;
- To have a better chance of acquiring satisfactory compensation.
What is Considered a Well-Known Trademark in China?
The evidential requirements for establishing the status of well-known trademarks are high. Below is a list of examples of evidence that might be used for well-known trademark recognition in China:
- 1. Reports about the applicant in newspapers, magazines, and/or on the internet
- 2. Official decisions, such as successful infringement actions, trademark oppositions, etc.
- 3. Applicant's Chinese website and distributed materials in China
- 4. Accounting or audit reports showing the applicant's business scale, income, profit, contribution to local revenue, number of employees, etc.
- 5. Analysis reports or materials presented by a third party (e.g., think tank, consultancy, government body) to show market share, prospects, etc.
- 6. List of notable market players or programs that the applicant has worked for to show the applicant's leading status in the industry
- 7. Photos of the applicant's offices and affiliates around China to show its wide development in China;
- 8. Any awards from Chinese institutions or awards to the applicant for business in China
- 9. Any ranking list or industrial comments about the applicant for its business in China or by Chinese institutions
- 10. Advertising materials with the applicant's name, e.g., brochures, videos, the applicant's trademark shown in any roadshows or publishing materials produced for the big market players in China
- 11. Trademark registration history of the applicant in other parts of the world to show the applicant's recognition in other areas
- 12. Agreements or contracts that the applicant authorizes its affiliates or third parties to use its trademark, showing the extensive use of the applicant's trademark
- 13. Statements from a third party (famous market players the applicant works with) stating knowledge of the applicant: when it knew the applicant, how it rates the applicant in the industry, how well it recognizes the trademark, and if anyone uses the trademark, how they find it may lead to confusion.
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.
