Supreme People’s Court consults on interpretation of well-known marks

On 11th November 2008 the Supreme People’s Court of China published for consultation the draft Interpretation of Certain Questions on Application of Law Relating to the Recognition and Protection of Well-Known Marks in the Adjudication of Civil Disputes such as Trademark Infringements.

Following the formal recognition of well-known marks by the Trademark Law of 2001, on 17th April 2003 the State Administration of Industry and Commerce (SAIC) issued the Rules on Recognition and Protection of Well-Known Marks, which laid down detailed operational rules for SAICs. The rules are not binding on the courts.

Consistent with current SAIC practice, in order to qualify as a well-known mark the interpretation requires the mark to be extensively known to the relevant public in China. The interpretation also expressly allows the people’s courts to consider evidence of foreign reputation without detracting from the importance of evidence of local reputation.

Marks not yet registered in China may qualify as well-known marks under the interpretation; this stipulation is absent from the rules.

Jurisdiction for recognising well-known marks is restricted to the people’s courts at a certain level (eg, intermediate people’s court level, certain district courts). Such courts should make no such recognition if the success of the case is not dependent on whether the mark is well known. Although not expressly stated in the interpretation, it is thought this could happen in situations where, for example, the plaintiff has a valid cause of action by relying on an identical or similar mark that is already registered in respect of the same or similar goods or services.

Whereas well-known marks are recognised on a case-by-case basis, a mark previously recognised as well known by a people’s court or SAIC would be accepted by another people’s court unless challenged by the counterparty or evidence to the contrary is supplied available.

The people’s court has discretion to lower the burden on the rights owner to produce evidence of reputation if the mark is well known in China. Once prima facie evidence of reputation is produced, the mark may be recognised as well known by the people’s court unless challenged by the counterparty.

The law prohibits the registration or use of a mark which is a reproduction, imitation or translation of a well-known mark and is registered in China if this misleads consumers, likely causing damage to the interests of the registered owner. The interpretation deems the following acts to be covered by this provision, provided that the relevant public believes that there is considerable association between the respective goods or their trader:

• trading on the reputation of the mark under recognition; 
• dilution of distinctiveness of the mark; and 
• debasing of the reputation of the mark.

The consultation period ended on 12th December 2008.