Newsletter_Corner Stone & Partners

05-11 2023

Comparison of the current Trademark Law and Draft Amendments concerning “Well-known” mark protection...
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05-11 2023

Protection of Well-known Trademarks in the Draft Amendments...
MORE+

04-10 2023

Some New Changes - Tea Time Discussions on the 2023 Draft Amendments to Trademark Law of the People's Republic of China...
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Comparison of the current Trademark Law and Draft Amendments concerning “Well-known” mark protection

Date：2023-05-11

Current Trademark Law

Draft Amendments

Article13.1 A holder of a trademark that is well known by the relevant public may, if he holds that his rights have been infringed on, request for well-known trademark protection in accordance with this Law.

Article 10 A holder of a trademark that is well known by the relevant public may, if he holds that his rights have been infringed on, request for well-known trademark protection in accordance with this Law.

The protection of a well-known trademark follows the principles of case-by-case examination, passive protection, and confirmation upon application.

The scope and strength of protection of a well-known trademark shall be appropriate to the distinctive features and reputation of the trademark.

The well-known status of a trademark shall be confirmed as a fact that needs to be ascertainedin dealing with a trademark-related case upon request by the party concerned. The following factors shall be taken into consideration comprehensively in the recognition of thewell-known status of a trademark:

(1)the recognition degree of the trademark among the relevant public;

(2)the duration, manner, and geographical scope in which the trademark has been in use;

(3)the duration, extent and geographical scope of all publicity operations carried out for the trademark;

(4)the status of the trademark’s domestic and foreign applications and registrations;

(5)the records of protection of the trademark, especially its protection as a well-known trademark;

(6)the value of the trademark; and other factors making the trademark well-known.

~~Article 14.1~~ A well-known trademark shall be recognized as a fact that needs to be ascertained in dealing with a trademark-related case upon request by the party concerned. The following factors shall be taken into consideration in the recognition of a well-known trademark:

(1)the recognition degree of the trademark among the relevant public;

(2)the duration in which the trademark has been in use;

(3)the duration, extent and geographical scope of all publicity operations carried out for the trademark;

(4)the records of protection of a well-known trademark provided for the trademark; and

(5)other factors making the trademark well-known.

Article 13.2 and 13.3Where the trademark of an identical or similar goods is a reproduction, imitation, or translation of another person’s well-known trademark not registered in China and is liable to cause the public confusion, no application for its registration may be granted and its use shall be prohibited.

Where the trademark of a ~~different or~~ dissimilar goods is a reproduction, imitation, or translation of another person’s well-known trademark ~~which has been registered in China~~ and it misleads the public so that the interests of the owner of the registered well-known trademarks are likely to be impaired, no application for its registration may be granted and its use shall be prohibited.

Article 18 Where the trademark being used or applied for registration is a reproduction, imitation, or translation of another person’s well-known trademark not registered in China in respect of identical or similar goods, and is liable to cause the public confusion, its use shall be prohibitedand no application for registration may be granted.

Where the trademark being used or applied for registration is a reproduction, imitation, or translation of another person’s well-known trademark not registered in China in respect of dissimilar goods, and it misleads the public so that the interests of the holder of the registered well-known trademark are likely to be impaired, its use shall be prohibited and no application for its registration may be granted.

Where the trademark being used or applied for registration is a reproduction, imitation, or translation of another well-known trademark known to the general public, and is sufficient to cause the relevant public to believe that the trademark is closely connected with the well-known trademark, thus diminishing the distinctive characters of the well-known trademark, damaging the reputation of the well-known trademark, or unfairly exploiting the reputation of the well-known trademark, its use shall be prohibited and no application for its registration may be granted.

Protection of Well-known Trademarks in the Draft Amendments

Date：2023-05-11

In this issue, we will discuss the hot topic of the “well-known” mark protection in the Draft Amendments. The relevant articles are Art. 10 and 18.

To sum up, the Draft Amendments refines the principles for protection of well-known marks and seemingly strengthens the protection.

1. The protection of a well-known trademark should follow the principles of case-by-case examination, passive protection, and confirmation upon application. Actually, these are no new principles but principles provided in the current Guidelines for Examinations and Adjudication of Trademarks, which have been followed by the trademark authorities. They are now clarified in the proposed Amendments. (Art. 10)

2. The Draft Amendments abandons the concept “recognition” and replaces it with “confirmation” when discussing “well-known” mark status. The change of the concepts is to reduce the administrative influence and to correct the perception in understanding “well-knowness”. In essence, “well-knowness” of a trademark is a matter of fact rather than some awards rewarded by the government (Art. 10);

3. The cross-class/anti-dilution protection is no longer limited to registered trademarks. Unregistered well-known trademarks may also have hope in obtaining cross-class/anti-dilution protection, which expands the protection scope to a large extent. As observed, it has been a headache issue that well-known marks are often plagiarized or copied by copycats in unregistered classes. This forces the trademark owners to register a large amount of defensive registrations. And under Art. 4 of the TML (prohibition of bad faith trademark registrations without true intention to use), defensive registrations have often been questioned and challenged by the Trademark Authorities. With the strengthening or expansion of protection of well-known marks to unregistered classes, the paradox in registering or non-registering defensive registrations may hopefully be resolved to some extent.(Art. 18)

4. On the other hand, it is worth noticing that the cross-class/ anti-dilution protection of a trademark requires that the trademark be well known to the "general public" instead of the "relevant public". This appears to indicate that the standards and criteria in confirming the well-known status of a trademark would be higher when it comes to cross-class /anti-dilution protection. (Art. 18)

For an easy comparison, the current and proposed draft amendments are listed as an appendix to the passage.

Some New Changes - Tea Time Discussions on the 2023 Draft Amendments to Trademark Law of the People's Republic of China

Date：2023-04-10

On 13 January 2023, China National Intellectual Property Administration (CNIPA) issued a new Draft Amendments to the China Trademark Law (Draft Amendments) for public comments. The Draft Amendments expand the current trademark Law to 10 chapters and 101 articles, among which there are 23 newly added articles, 6 new articles split from the existing articles, 45 articles with substantive revisions, and 27 articles basically maintained.

In the Draft Amendments, we see a number of adjustments made to the current trademark law, such as submission of statements on trademark use (Articles 5 and 61), special protection of well-known trademarks (Article 18), prohibitions of duplicate registration (Article 21), shortening the publication period for opposition (Article 36), canceling review of disapproval of trademark registration (Article 39), and transfer mechanism in invalidation proceedings (Articles 45 to 47) etc. We will clarify in this issue on the brand new and fundamental changes on the use statements for registered trademarks.

Submission of Statements of Trademark Use

Article 5 provides that any natural person, legal person or unincorporated organization that needs to obtain the exclusive right to use a trademark for the trademark used or committed to use on its goods or services during the production and business operations shall apply for trademark registration with the intellectual property administration department of the State Council.

Article 61 provided that A trademark registrant shall, within 12 months after every five-year period from the date of approval of the registration, provide use statements to the intellectual property administration department of the State Council on the use of the trademark on the approved goods, or provide justified reasons for non-use. The trademark registrant may provide a combined declaration on the use of multiple trademarks within the above period. If the trademark registrant does not provide an explanation prior to the expiration of the above period,the intellectual property administration department of the State Council shall notify the trademark registrant, and if the trademark registrant does not submit an explanation within six months upon its receipt of the notice,the registered trademark shall be deemed abandoned and the intellectual property administration department of the State Council shall cancel the registration. The intellectual property administration department of the State Council shall conduct random checks to confirm the authenticity of such explanations, and if necessary, may require a trademark registrant to provide additional relevant evidence or entrust a local administrative department for intellectual property to verify the authenticity of such evidence. Where, upon random checks, a statement is found to be untrue, the intellectual property administration department of the State Council shall cancel the registered trademark.

Articles 5 and 61 aim to strengthen the obligations of trademark owners to use trademarks, and to clean up zombie trademarks to release idle trademark resources, so that the market players who really need to establish self-owned brands may have better chances in obtaining trademark protection. On the other hand, this also means that the trademark owners are expected to do more to preserve the evidence of use during the business operations. The Draft Amendments have yet provided any specific guidelines on the form, the extent and substantiality of such statement/explanations. It is also not yet clear whether actual use proofs/evidence should be provided along with the statements. It is believed that a statement with prima facie use proofs may suffice. And yet this has to wait to be seen and further updated following public opinions are collected.

We expect to continue to update some key adjustments in the Draft Amendments in the coming issues.