Many companies, either domestic or overseas, would like to have their brands being recognised as well-known trade marks in China. The obvious benefits are a) stronger protection of the trade mark, especially for opposing similar trade marks in other classes; b) strengthening anti-counterfeiting and infringement actions; and c) commercial promotion.
Once a trademark is recognised as a well-known mark, its protection scope would cover the following.
- To prevent the malicious registration and use of the unregistered mark by others in respect of the same goods or services;
- To prevent the application for or registration of a trade mark, which is identical to its well-known trade mark in respect of non-similar goods or services;
- To prevent another’s registration of the trade mark as a business name;
- To prevent the registration of the trade mark as a domain name;
- To have a better chance of acquiring satisfactory compensation.
There are currently four authorities that can grant well-known trade mark recognition in China.
- The China Trademark Office (CTO) can recognise well-known trade marks in the trade mark opposition procedure.
- The Trademark Review and Adjudication Board (TRAB) can recognise well-known trade marks in the trade mark cancellation or review procedure.
- The Administration of Industry and Commerce (AIC) can recognise well-known trade marks in a raid against someone using a well-known trademark, which is not registered in China.
- The Chinese court can recognise well-known trade marks in a lawsuit regarding trade mark infringement.
However, the evidential requirements for establishing the status of well-known trade marks are high. Below is a list of examples of evidence that can be used for well-known trade mark recognition in China.
- reports about the applicant in newspaper, magazines and/or the Internet;
- official decisions, such as successful infringement actions, trade mark oppositions, etc. ;
- applicant’s Chinese website and distributed materials in China;
- any accounting or audit report showing the applicant's business scale, income, profit, , contribution to local revenue, number of employees, etc. - statistics to show that the applicant is a leader in the field;
- any analysis report or materials presented by a third party (e.g. think tank, consultancy company, governmental body) to show market share, prospects, etc. of the applicant;
- list of notable market players or programs that the applicant has worked for to show the applicant's leading status in the industry;
- photos of the applicant's offices and affiliates around China to show its wide development in China;
- any awards from Chinese institutions or awards to the applicant for its business in China;
- any ranking list or industrial comments about the applicant for its business in China or by Chinese institutions;
- advertising materials with the applicant's name, e.g. brochures, videos, the applicant’s trade mark shown in any road shows or publishing materials it did for the big market players in China;
- trade mark registration history of the applicant in other parts of the world to show the applicant's recognition in other area;
- any agreements or contracts that the applicant authorises its affiliates or third parties to use its trade mark, showing the extensive use of the applicant’s trade mark;
- statements from a third party (famous market players that the applicant work with) stating its knowledge of the applicant: when did it know the applicant, how does it rate the applicant in the industry, how well does it recognise the trade mark and if anyone uses the trade mark, how they find it may cause them confusion.
