A well-known trademark refers to a trademark that is well-known to the relevant public in a specified field, such as Alibaba, Huawei, Google, etc. Unlike ordinary trademarks, which are confined to protection within the same class of goods or services, a registered well-known trademark boasts not only intraclass protection but also transcends these boundaries, offering cross-class safeguards and resilience against bad faith registrations attempted by third parties. This article delves into the various recognition pathways, underlying principles, and the essential evidentiary materials required for the acknowledgment of a well-known trademark.
Legal basis for well-known trademarks
Article 13, Paragraph 1 of the Trademark Law states that when a trademark is widely recognized by the relevant public and its holder believes that its rights have been infringed, the holder may request protection as a well-known trademark in accordance with the provisions of this Law.
Article 13, Paragraph 3 of the Trademark Law further specifies that where an application for registration of a trademark for goods that are not identical or similar to those of a well-known trademark already registered in China involves a reproduction, imitation, or translation of the said well-known trademark, and such registration is likely to mislead the public and cause harm to the interests of the registrant of the well-known trademark, the application shall be rejected and the use of the trademark shall be prohibited.
Modes and approaches for the recognition of well-known trademarks
The recognition of well-known trademarks is categorized into administrative recognition and judicial recognition. Recognition by the Trademark Office and the Trademark Review and Adjudication Board falls under administrative recognition, while recognition by the people's courts designated by the Supreme People’s Court falls under judicial recognition.
1. Approaches for administrative recognition
1) File a request for protection of a well-known trademark with the Trademark Office in a trademark opposition case;
2) Submit a request for protection of a well-known trademark to the Trademark Review and Adjudication Board in cases of trademark registration refusal review and invalidation requests;
3) Cases of trademark infringement involving the protection of well-known trademarks shall be under the jurisdiction of the administrative department for industry and commerce at or above the municipal (prefecture, state) level. If a party requests the administrative department for industry and commerce to investigate and deal with trademark infringement and, in accordance with Article 13 of the Trademark Law, requests protection for its well-known trademark, it may file a complaint and submit a written request for well-known trademark protection to the administrative department for industry and commerce at or above the municipal (prefecture, state) level where the infringement occurred.
2. Approaches for judicial recognition
1) Trademark infringement lawsuits filed on the grounds of violation of Article 13 of the Trademark Law;
2) Trademark infringement or unfair competition lawsuits filed on the grounds that the enterprise name is the same or similar to its well-known trademark;
3) A lawsuit in which the defendant files a defense or counterclaim on the grounds that the plaintiff’s registered trademark has copied, imitated or translated the defendant’s previously unregistered well-known trademark, and meets the requirements of the burden of proof.
Principles for the recognition of well-known trademarks
According to Article 4 of the Provisions on the Recognition and Protection of Well-known Trademarks, the recognition of well-known trademarks follows the principle of case-by-case identification and passive protection.
Case-by-case recognition refers to the validity of the recognition of a well-known trademark, which is only valid in individual cases. The effect of a well-known trademark recognized by the recognition authority is only valid in the current case in which the dispute arises, and cannot be applied to other disputed cases as a matter of course. In other words, when a new dispute arises, the owner of a well-known trademark must also provide evidence to prove that his/her trademark constitutes a well-known trademark, and the recognition authority will make another determination.
Passive protection, that is, the Trademark Office, the Trademark Review and Adjudication Board, the people’s court and other administrative and judicial authorities do not take the initiative to identify well-known trademarks, but passively determine the well-known status of the trademark according to the request of the parties in the event of infringement of rights, so as to protect the relevant rights and interests of well-known trademarks.
Evidentiary materials for the recognition of well-known trademarks
According to Article 9 of the Provisions on the Recognition and Protection of Well-known Trademarks, the following materials can be used as evidence to prove compliance with the recognition of well-known trademarks:
(1) Materials proving the degree of awareness of the relevant public about the trademark.
(2) Materials proving the duration of use of the trademark, such as materials on the history and scope of use and registration of the trademark.
(3) Materials proving the duration, extent and geographical scope of any publicity work of the trademark, such as the method, geographical scope, type of publicity media and advertising volume of promotional activities in the past three years.
(4) Materials proving that the trademark has been protected as a well-known trademark in China or other countries and regions.
(5) Other evidentiary materials proving that the trademark is well-known, such as sales revenue, market share, net profit, tax payment, sales area and other materials of the main goods using the trademark in the past three years.
Conclusion
The recognition of a well-known trademark requires substantial evidence to prove its popularity, which is a rigorous process. However, once successfully recognized, it will enjoy special legal protection and provide evidentiary support for future trademark infringement cases. To maintain the validity of a well-known trademark, enterprises must continuously improve the quality of their goods or services, expand markets, prioritize their corporate brand image, and safeguard trademark rights through legal means. Even a minor record of rights protection can become “protected material” that significantly contributes to the re-recognition of a well-known trademark.
鄂公网安备 42010402001546号