Civil disputes involving well-known trademarks

The Supreme People’s Court recently issued an Interpretation on Issues of Laws Applicable to Civil Proceedings involving Well-Known Trademarks following a public consultation which ended last year.

According to the interpretation, the court can recognise that a particular trademark has acquired the status of a well-known trademark only where it is absolutely necessary and in the following cases: 

• where legal proceedings are brought by the owner of an unregistered mark against another for using a mark which is a reproduction, imitation or translation of the unregistered mark in relation to identical or similar goods or services; 
• where legal proceedings are taken by the owner of a registered mark against another for using a mark which is a reproduction, imitation or translation of the registered mark in relation to dissimilar goods or services, thereby causing confusion among the public; 
• where legal proceedings are taken by a trademark owner against another for using an enterprise name that is identical or similar to its trademark; or 
• where, in defending a trademark infringement action, the plaintiff’s mark is a reproduction, imitation or translation of the prior unregistered mark of the defendant.

In the previous draft interpretation which was published for consultation purposes, it was suggested that the court should consider evidence of foreign reputation aside from local reputation. This provision has been deleted from the final interpretation. As such, it seems that foreign reputation of a mark is of little evidential value when proving whether the claimed trademark is widely known to the relevant public within China.

If the situation mentioned in the second bullet point above is brought before the court, according to the interpretation, when making a decision the court should take into account factors including the following: 

• the distinctiveness of the trademark; 
• how widely known the trademark is among the consumer public purchasing the goods or using the services of the defendant; and 
• how close the association is between those goods or services covered under the claimed trademark and the goods or services of the defendant.