The Supreme People’s Court promulgated the “Interpretation on the Application of the Law Concerning Several Issues Regarding the Trials of Civil Disputes Relating to the Protection of Famous Trademarks” on April 23, 2009. This Interpretation clarifies what constitutes “famous” trademarks in China.
Xu Jing, Partner, IP Litigation
I. “ Famous” Trademarks Recognized in Three Types of Civil Disputes:
A. Unauthorized use of a mark that is the same as or similar to a non-registered mark in China on same or similar goods/services;
B. Unauthorized use of a mark that is same as or similar to a registered mark in China on dissimilar goods/services; and
C. Unauthorized use of mark that is the same as or similar to a registered mark in China as a trade name on dissimilar goods/services.
The Supreme People’s Court noted that it was not necessary to recognize the “famous” status of the trademark in a dispute concerning the registration and/or use of domain names which are the same as or similar to the registered trademark at issue.
II. The Interpretation further clarifies that the continued use of a mark before its registration in China can be considered when the courts evaluate how famous a mark is. The elements for evaluation of the level of fame of a mark, as stipulated in Article 14 of the Trademark Law, will be examined by the court under the totality of the circumstances and not all elements are required to be present for the mark to be deemed “famous". For a mark which enjoys a high degree of recognition nationwide, the burden of proof regarding the level of fame of the mark is further decreased and the Court is allowed to use its discretion when making its ruling based upon evidence offered by the Plaintiff.
III. The concept of “anti-dilution” was also introduced in the Interpretation. It is noted that the damage to the good will associated with a famous trademark should be recognized as a form of harm to the legitimate interests of the famous trademark owner.
IV. This new Interpretation will take effect on May 1st, 2009 and will be applicable to all cases pending Judgment. It is worth noting that just prior to the issuance of the Interpretation, the Supreme People’s Court limited the courts which have authority to recognize a trademark as “famous” to the Intermediate People’s Courts in the capital cities of the Provinces, in municipalities listed in the state organizational plan, in municipalities directly under the central government and also Intermediate People’s Courts approved by the Supreme People’s Court.
With now two consecutive opinions rendered by the Supreme People’s Court on the recognition of “famous” trademarks, a clear signal is being sent to the public that the Supreme People’s Court understands the importance of the establishment of a uniform standard for judicial recognition of “famous” trademarks in China.