Well-known trademark status was first defined in the original version of the Paris Convention for the Protection of Intellectual Property published on 20th March, 1883. Well-known trademark owners around the world benefit from relative advantages such as protection over classes of dissimilar goods or services for which the Mark is registered or used and third-party enterprise names. The company and domain name are also protected.
Well-known trademark status makes it easier for the owner to prove other infringements. Since 2001, revisions of the PRC Trademark Law have included many provisions clarifying the well-known Trademark recognition process, while there are two processes for recognizing and protecting these Marks in China.
Administrative proceeding: A formal request made to the China Trademark Office (CTO) during an administrative enforcement action, an opposition, or cancellation proceeding before the Trademark Review and Adjudication Board (TRAB).
Court proceedings: Those that occur during a civil trademark infringement action before People’s Courts. According to article 13 of the PRC Trademark law, factors to be considered in determining a well-known trademark include reputation in the relevant public sector, duration of use, geographical scope of advertising and its history of protection as a well-known Trademark.
The question is, are these rules enough?
It seems that recent trademark cases in China show how difficult it is to claim this right.
The Beijing No. 1 Intermediate People’s Court rejected a request from Chivas Brothers, maker of Chivas Regal Scotch whisky, to stop a Chinese company from using a similar brand name for another business which produces garments, hats and shoes. In this case, Chivas Regal did not have enough evidence to prove that the whisky brand was already “well-known” in China before the registration of “Chivas Regal 88” in a Nice classification, of products other than beverage.
According to the judge, the company was also unable to prove that the design of its whisky brand was completed and unveiled prior to the time the Chinese company registered Chivas Regal 88.
To prevent trademark infringements, some companies pursue a multi-class registration strategy that involves the extension of the business and the scope of a company. Chivas Regal did not register their brand across multiple classes in order to protect the misuse of the brand in association with other types of products. Ferrari, on the other hand, prevents this problem by producing product lines other than cars, such as shoes and clothes.
Trademark protection strategy is a matter that any company should address both before and after entering in the Chinese market. Help is at hand with the Shanghai Municipal Measures for the Recognition and Protection of Famous Trademarks legislation that came into effect on 1st May, 2012, with the intention of guarding against the copying of well-known trademarks.
This article is intended solely for informational purposes and does not constitute legal advice. Although the information in this article was obtained from reliable official sources, no guarantee is made with regard to its accuracy and completeness. For more information please visit dandreapartners.com or WeChat: dandreapartners.
