As a significant embodiment of an enterprise’s brand value and market influence, the recognition of a well-known trademark is crucial in the course of trademark protection and rights enforcement. However, in practice, the recognition of well-known trademarks faces numerous difficulties and challenges. This article provides an in-depth analysis of the difficult issues in the recognition of well-known trademarks, with a view to clarifying the path of trademark recognition for right holders, avoiding infringement risks, and enabling steady progress in a complex and ever-changing market landscape.
Against this backdrop, by focusing on such difficult issues as the principle of recognition of well-known trademarks on an as-needed basis, the use of the wording “well-known trademark”, and the assessment of a “considerable degree of association”, we have selected the following three popular Q&As from Chapter 8: Practical Difficulties in the Recognition of Well-known Trademarks of the Practical Q&A Handbook on Cutting-edge Issues in Intellectual Property, jointly compiled with Rouse, a strategic partner of Wolters Kluwer and Lusheng, to share with you.
Selected Practical Q&As
Q1 [Principle of Recognition of Well-known Trademarks on an As-needed Basis] How should the “principle of recognition on an as-needed basis” in the recognition of well-known trademarks be understood? In routine examination by the China National Intellectual Property Administration (CNIPA, Trademark Office), into what situations is the “principle of recognition on an as-needed basis” generally divided?
The three fundamental principles for the recognition of well-known trademarks include case-by-case recognition, recognition on an as-needed basis, and the principle of good faith. The “principle of recognition on an as-needed basis” means that where a party’s trademark indeed needs to be protected as a well-known trademark pursuant to Article 13 of the Trademark Law, the trademark registration authority may determine whether the trademark is well known. If, based on the evidence on file, the party’s trademark can be protected by applying other provisions of the Trademark Law, or if the registration and use of the disputed trademark will not cause confusion or mislead the public so that the interests of the party may be harmed, the trademark registration authority does not need to determine whether the party’s trademark is well known. In other words, the recognition of a well-known trademark shall be necessitated by the “handling of a case” rather than for any other purpose.
With the continuous standardisation of the practice of recognition and protection of well-known trademarks, the understanding of the principle of “recognition on an as-needed basis” has become more in-depth, and the concept of “necessitated by the circumstances of the case” or “necessitated by the handling of the case” has been continuously strengthened. The understanding of “need” has also become more consistent with the original purpose of the system for the recognition of well-known trademarks. In the practice of trademark authorisation and confirmation, a consensus has been formed that the implementation of the “recognition on an as-needed basis” principle should adhere to both a protection-oriented and result-oriented approach. In the recognition of well-known trademarks, it is necessary not only to adhere to the premises of “necessitated by the handling of the case” and “meeting the statutory requirements”, but also to follow the premise that “no other remedies are available”.
In the examination of trademark opposition cases, review of refusal cases and invalidation cases, where a party claims both that the disputed trademark is similar to its prior registered/applied-for trademark on identical or similar goods, or that the disputed trademark was obtained by improper means, and that the disputed trademark is a reproduction, imitation or translation of its well-known trademark already registered in China, the examiner of the Trademark Office will first consider whether the evidence on file is sufficient to protect the party’s trademark by applying other provisions of the Trademark Law. If the evidence on file is sufficient to protect the party’s trademark by applying other provisions of the Trademark Law, the examiner does not need to determine whether the party’s trademark is well known.
Q2 [Use of the Wording “Well-known Trademark”] Once a trademark has been recognised as well known, may the wording be used in advertising? What constitutes a factual statement regarding a well-known trademark?
Article 14(5) of the Trademark Law provides: “Producers and business operators shall not use the wording ‘well-known trademark’ on goods, or on the packaging or containers of goods, or in advertising, exhibitions or other commercial activities.” At the same time, Article 53 of the Trademark Law provides: “Where Article 14(5) of this Law is violated, the local administration for industry and commerce shall order rectification and impose a fine of RMB 100,000.” It is clear that the wording “well-known trademark” shall not be used in advertising or other commercial activities of an enterprise, which should also include the act of entrusting a third party to carry out corresponding publicity; otherwise, such act constitutes a “general trademark violation”. However, this does not mean that the wording “well-known trademark” cannot be used at all.
In 2016, in its Reply on Issues Concerning the Use of the Wording “Well-known Trademark” on Enterprises’ Self-built Websites and Other Matters, the former State Administration for Industry and Commerce, Trademark Office, pointed out that “where an enterprise makes factual statements on its website or in other business activities regarding the record of its trademark having obtained extended protection as a well-known trademark, without highlighting the wording ‘well-known trademark’, such conduct does not fall within the illegal acts as described in Article 14(5) of the Trademark Law.” In 2019, the China National Intellectual Property Administration issued the Notice on Strengthening Work Related to the Investigation and Handling of Well-known Trademark Protection in Trademark Violation Cases, stating that in order to effectively regulate the application for recognition and use of well-known trademarks, “enterprises may, in their business activities, make factual statements regarding the record of their trademarks having obtained protection as well-known trademarks.”
However, there is still no clear definition of factual statements regarding well-known trademarks, and in practice the boundaries are difficult to delineate. A relatively less controversial approach is to make truthful statements regarding the facts of the well-known trademark recognition case and the contents of the judgment or decision, without highlighting or emphasising the wording “well-known trademark”. If, however, the wording “well-known trademark” is treated as an honorary title and used in a prominent manner to promote the enterprise or to market the goods or services operated by the enterprise, or if it misleads consumers into forming an incorrect perception of the quality or other characteristics of the products, such conduct clearly goes beyond the scope of factual statements/proper use.
Q3 [Consideration of “a Considerable Degree of Association” in the Recognition of Well-known Trademarks] In recognising well-known trademarks, what factors should be considered in determining whether there is “a considerable degree of association” between goods and services?
Article 13(3) of the Trademark Law provides: “Where a trademark applied for registration in respect of goods that are not identical or dissimilar to those in respect of which another person’s well-known trademark has been registered in China is a reproduction, imitation or translation of that well-known trademark and is likely to cause confusion, such trademark shall not be registered and its use shall be prohibited.” This provision is the most frequently invoked in practice when seeking protection for well-known trademarks. Pursuant to this provision, the application for registration of the disputed trademark must be such as to “mislead the public and the interests of the registrant of the well-known trademark are likely to be harmed.”
The main circumstances of confusion and misleading include: (1) the relevant public mistakenly believes that the goods or services bearing the disputed trademark are produced or provided by the owner of the well-known trademark; (2) the relevant public is led to associate the producer of the goods or the provider of the services bearing the disputed trademark with the owner of the well-known trademark as having some connection, such as an investment relationship, a licensing relationship or a cooperative relationship; (3) it is sufficient to lead the relevant public to believe that the disputed trademark has a considerable degree of association with another’s well-known trademark, thereby weakening the distinctiveness of the well-known trademark; (4) the registration and use of the disputed trademark may tarnish the market reputation of the well-known trademark; and (5) the registration and use of the disputed trademark may improperly exploit the market reputation of the well-known trademark. Among these, (1) and (2) are the main manifestations of a “considerable degree of association”, while (3), (4) and (5) are the possible consequences of a “considerable degree of association”.
In determining whether the use of the disputed trademark is sufficient to lead the relevant public to believe that it has a considerable degree of association with the well-known trademark, thereby misleading the public and causing the interests of the registrant of the well-known trademark to be likely harmed, the following factors shall be comprehensively considered: (1) the degree of similarity between the disputed trademark and the other party’s well-known trademark; (2) the originality of the other party’s well-known trademark; (3) the degree of reputation of the other party’s well-known trademark; (4) the degree of association between the respective goods or services on which the disputed trademark and the other party’s well-known trademark are used; and (5) other factors that may cause confusion or misleading.
From the above provisions, it can be seen that the recognition of well-known trademarks involves multiple factors. The two most important factors are: one concerns the determination of the reputation of the cited trademark, namely whether it has reached the level of being well known; the other is that the disputed trademark must have “a considerable degree of association” with the well-known trademark involved in the case, thereby misleading the public and causing the interests of the registrant of the well-known trademark to be likely harmed.
Generally speaking, the assessment of reputation is mainly reflected through evidence. “A considerable degree of association” does not mean that once the evidence submitted by another party is sufficient to prove that its trademark enjoys a high degree of social reputation as a well-known trademark, it will enjoy cross-class protection against the disputed trademark in all classes. Only where the goods or services designated by the disputed trademark have “a considerable degree of association” with the goods or services designated by the other party’s trademark can the other party’s trademark possibly enjoy cross-class protection. If, based on the general perception of the relevant public and daily life experience, the goods or services designated by the disputed trademark are far removed from those designated by the other party’s trademark, and there is little overlap in terms of function and use, sales channels, target consumers, etc., it will be difficult for the other party’s trademark to be recognised as a well-known trademark and enjoy cross-class protection.
Moreover, the scope and intensity of cross-class protection for well-known trademarks need to be commensurate with their distinctiveness and reputation. Article 9(2) of the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Civil Dispute Cases Involving the Protection of Well-known Trademarks provides clear guidance on this requirement. In judicial practice, there are objectively varying degrees of fame among registered well-known trademarks, and it is not appropriate to grant the same scope of cross-class protection to registered trademarks with different degrees of fame. The scope of cross-class protection for well-known trademarks should be commensurate with their degree of fame, and in general the two are positively correlated. That is to say, the recognition of well-known trademarks does not require an identical and uniform level of reputation, but the scope and intensity of protection for well-known trademarks must be commensurate with their distinctiveness and reputation. Well-known trademarks with stronger distinctiveness and higher reputation should be granted a broader scope of cross-class protection and stronger protection.
Other Excellent Q&As Covered in this Chapter:
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[Requirements on Trademark Registration Status and Duration of Use] Where a trademark has not been applied for, has just been applied for, or has just been registered, can protection as a well-known trademark be sought?
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[Routes for Recognition] Through what routes can protection as a well-known trademark be sought?
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[Evidence Requirements for First-time Recognition of a Well-known Trademark] When seeking recognition of a well-known trademark, how far back in time must the evidence of trademark use extend? How should evidence of use in respect of promotion and sales be provided?
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[Evidence Requirements after Recognition as a Well-known Trademark] Where a registered trademark has already been recognised as a well-known trademark, how should the continued well-known status be proven in a new case involving recognition?
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[Recognition of Well-known Trademarks for Identical or Similar Goods or Services] If the allegedly infringing/disputed goods/services are identical or similar to the goods/services on which the prior registered trademark relies for its well-known status, can protection be obtained through the recognition of a well-known trademark?
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[Relationship between Distinctiveness and Reputation of Well-known Trademarks] What is the relationship between “reputation” and “distinctiveness” of a trademark in the recognition of a well-known trademark?
Authors of this Chapter
Yang Yi Partner
Rouse Beijing
Email: ayang@rouse.com
Wang Hui Senior Lawyer, Head of Administrative Litigation
Lusheng Law Firm Beijing
Email: mwang3@lushenglawyers.com
Zhang Bo Senior Trademark Attorney
Rouse Guangzhou
Email: fzhang2@rouse.com
Wang Jing Trademark Attorney
Rouse Beijing
Email: mwang@rouse.com
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About the Report:
The Practical Q&A Handbook on Cutting-edge Issues in Intellectual Property was jointly and meticulously prepared by Wolters Kluwer, Lusheng Law Firm and its strategic partner Rouse, and was officially released online in November 2024. The handbook was compiled by more than 30 senior intellectual property experts, and selects 108 intellectual property questions divided into 11 chapters, comprising 100,000 words of detailed analysis. It focuses on the most cutting-edge issues of greatest concern in the industry, and comprehensively covers key areas such as patents, trademarks, copyright, trade secrets, unfair competition on the internet, intellectual property capital contribution, and punitive damages for intellectual property. In a “question-and-answer” format, it distils the hot topics of concern to intellectual property practitioners and provides readers with the latest legal interpretations, case analyses and practical guidance.
Since its release, the report has attracted wide attention and high praise in the industry. In order to better share its excellent content, we will continue to select key Q&As from each chapter and publish them in a series of articles.
