Weifeng Li

Nearly thirty years have passed since the well-known trademark protection system was set up in China after China became a member country of the Paris Convention in 1985. During these years, great achievement has been achieved, while accompanied with serious alienation and abuse of well-known trademark out of misunderstanding of well-known trademarks and drive of interests. In recent years, as the well-known trademark system has been further understood, the protection of well-known trademarks has been strengthened, also with more rationality.

I. Reform of the well-known trademark protection system in the new amendment of the Trademark Law of China

The Third amendment of the Trademark Law of the People’s Republic of China was promulgated on August 30, 2013. The newly amended Chinese Trademark Law (“2013 Trademark Law” hereinafter) will take effect on May 1, 2014, in which the well-known trademarks related provisions point out the right direction of the development of well-known trademark protection.

i. Introduction in 2013 Trademark Law the legal principle that the establishment of a well-known trademark is finding of facts that shall be based on the principles of “passive establishment” and “individual establishment”.

Viewed from the 2001 Trademark Law of China and the Implementing Regulations of the Trademark Law of China promulgated in 2002, the establishment of well-known trademarks in China has experienced a transition from “active and massive establishment” to “passive and individual establishment” in both concept and practices.

However, in China, the nature and establishment principle of well-known trademarks fail to be clearly prescribed by the Trademark Law for a long time, and there is a long-term misunderstanding of well-known trademarks. For example, by many companies and people, the well-known trademarks are regarded as honorary titles recognized by government from which great commercial benefits can be gained, and many local governments take the number of well-known trademarks in their administrative areas as their achievements. Under such a condition, although the “passive establishment” and “individual establishment” principles have been established on both the administrative level and the judicial level in China, applications for the establishment of well-known trademarks are still filed in batches, or even well-known trademarks are obtained by unfair means, which goes against the purpose of well-known trademark protection in the Paris Conversion, the Agreement On Trade-related Aspects of Intellectual Property Right (“the TRIPS agreement”) and the trademark laws and regulations in China.

In view of this, Article 13.1 of the 2013 Trademark Law prescribes that “the owner of a trademark that is well known to the relevant public can request the trademark to be protected as a well-known trademark where he considers that his right of over this trademark is infringed”, and Article 14.1 provides that “a well-known trademark shall be established, per the request of the interested party, as a fact that shall be found for handling a case concerning trademarks”.

In this way, the “passive establishment” and “individual establishment” principles concerning well-known trademark protection that have been included in administrative regulations, rules and judicial interpretations are for the first time introduced as a legal principle in the Chinese Trademark Law, i.e., the 2013 Trademark law, which clearly states that the establishment of well-known trademarks is just finding of facts. As such, the 2013 Trademark Law explicitly proclaims that a well-known trademark is just a dynamic fact that is only applicable to individual cases, rather than an honorary title, and it neither represents the reputation of the trademark owner nor has any universal effect. By the stipulation, such information is intended to be conveyed to the society, namely, the basic purpose of the well-known trademark protection system is to protect a well-known trademark from illegal infringement in individual cases rather than to publicize it, or simply, the purpose is protection rather than gaining interests.

ii. Prohibition of publicity of well-known trademarks

As mentioned above, the establishment of well-known trademarks is finding of facts that are constantly changing, which is only applicable to individual cases. However, in practices, alienation and abuse of well-known trademarks prevail. Many enterprises print the term “well-known trademark” on their products or the product packages, or use it in the publicity materials, advertisements and the like, to publicize well-known trademarks as honorary titles granted by the government or the guarantee of product quality, and mislead the consumers. Under such circumstances, well-known trademarks become a tool of the companies for gaining competitive advantages by misleading consumers through commercial publicity and earning profits. This is against the purpose of well-known trademark protection in the Paris Conversion, the TRIPS agreement and the trademark laws and regulations in China.

To restrain abuse of well-known trademarks, Article 14.5 of the 2013 Trademark Law provides that “any manufacturer or business operator shall not print the term “well-known trademark” on the goods, packages or containers of goods, or use it in advertising, exhibition or any other commercial activities”. In fact, the ways of use herein are applicable to trademarks per se pursuant to Article 48 of the 2013 Trademark Law, thus Article 14.5 actually prohibits the use of the term “well-known trademark” in combination with trademarks, thereby to cut the connection between them, forbid the publicity of well-known trademarks, and eliminate the drive of commercial benefits behind well-known trademark establishment.

Nevertheless, the subjects that are prohibited from publicizing well-known trademarks by Article 14.5 just include the manufacturers and business operators, which cover only a relatively small scope. In practices, the local garments, intermediary agencies, and media may help the producers and business operators to publicize well-known trademarks, which can not be effectively prohibited by such provision.

II. The guidance at judicial level of the well-known trademark establishment and protection                                       
i. Well-known trademark establishment and protection in civil actions

Regarding the well-known trademark alienation and abuse, the Interpretations of Certain Issues in Law Application in Trial of Civil disputes Concerning Well-known Trademark Protection (“Interpretations” hereinafter) issued by the Supreme People’s Court of China in 2009 further clarifies the “passive establishment” and “individual establishment” principles of well-known trademark establishment.

At the same time, to prevent a well-known trademark owner from abusing its trademark by utilizing judicial findings, the Interpretations also prescribes that: the establishment of a well-known trademark is just a part of the facts of a case and the judgment grounds, and is not included in the main body of judgment, and where a dispute is concluded by mediation, the mediation document does not recognize the well-known status of the trademark.

In addition, as to the false lawsuits for the purpose of well-known trademark establishment, the Interpretations sets up the general principle of excluding the self-admission rule in evidences of civil actions, except that a trademark has been previously recognized as a well-known trademark and the well-known status thereof is not challenged by the respondent. 


As introduced above, with the promulgation of 2013 Trademark Law, the principles of “passive establishment” and “individual establishment” as well as that the well-known trademark establishment is fact finding of cases are confirmed by the new law.

ii. Well-known trademark establishment in administrative cases involving the grant and determination of trademark rights

The Opinions on Certain Issues Concerning the Trial of Administrative Cases Involving the Grant and Determination of Trademark Rights (“Opinions” hereinafter) issued by the Supreme People’s Court in 2010 stipulates that, reference can be made to the Interpretations during the trial of administrative cases involving the grant and determination of trademark rights concerning well-known trademark protection. Further, regarding the protection scope of dissimilar goods for a well-known trademark that has been registered in China, the Opinions specially prescribes that the protection scope shall be matched with the well-known degree of the trademark, so as to prevent the owner of the trademark from extending protection scope and achieving unreasonable monopoly of the trademark.  

Further, the Beijing Higher People’s Court issued in January 2014 the Guidance for the Trial of Administrative Cases Involving the Grant and Determination of Trademark Rights (“Guidance” hereinafter), for the purpose of the applying the 2013 Trademark Law. Article 1 of the Guidance prescribes that “where the interested party provides evidences that the cited trademark is recognized as a well-known trademark after the filing date of the disputed trademark and the evidences are sufficient to prove that the cited trademark is well-known before the filing date of the disputed trademark, such evidences shall be accepted”. This provision grants the two courts with jurisdiction of administrative cases involving the grant and determination of trademark rights, i.e., Beijing 1st Intermediate People’s Court and Beijing Higher People’s Court, flexibility in the finding of evidences of well-known trademarks in the said cases, and the evidences produced after the filing date of a disputed trademark but able to prove that the cited trademark is well-known before the filing date of the disputed trademark will no longer be mechanically excluded, which is also helpful to the provision of proofs by a trademark owner claiming well-know trademark protection..

Moreover, Article 2 of the Guidance makes provisions on the sequences of identifying whether a trademark falls within the circumstances in which a trademark is in conflict with a well known trademark and is prohibited from registration and use prescribed in Article 13.2 and 13.3 of the 2013 Trademark Law, and sets up the general principle of firstly examining the well-known status of a trademark. In particular, Article 2 provides that “in principle, it shall be firstly determined whether a trademark for which protection is requested is well-known or not, and where determined, it then shall be found out whether a disputed trademark is a reproduction, imitation or translation of the well-known trademark, misleads the pub1ic and is likely to create prejudice to the interests of the well-known mark registrant”. This principle unifies the inconsistent opinions in judicial trial practices, and thus is helpful to the unification and standardization of the flows of facts finding in similar cases. 

To conclude, it is impossible to eliminate the alienation and abuse of well-known trademarks overnight, but from the latest trends of well-known trademark protection it can be seen that the concept of correctly understanding and protecting well-known trademarks is conveyed to the society in either the legislative, judicial or administrative level, striving to pull the well-known trademark protection right on track, and the effect of which is expectable.