By Liao Fei, Intellectual Property group, King & Wood Mallesons

According to Article 14 of the Trademark Law, well-known trademarks in China can be recognized through judicial and administrative channels. The administrative recognition can be made in three procedures, including cracking down on trademark infraction cases, trademark opposition cases and trademark dispute cases (i.e. review of opposition decision refusing registration, and invalidation). In November 2019, the China National Intellectual Property Administration (CNIPA) issued the Notice on Strengthening the Protection of Well-known Trademarks in Handling Cases Involving Trademark Infraction (hereinafter referred to as the “Notice“). As of the first quarter of 2021, the CNIPA has received 344 applications for recognition of well-known trademarks through the procedure of handling tradmark infraction cases, and approved 69 of them.

In order to further tackle the problems existing in the recognition and protection of well-known trademarks by some local administrative departments, enhance the level of well-known trademark protection, in May 2021, the CNIPA newly issued “ Understanding and Application of ‘Notice on Strengthening the Protection of Well-known Trademarks in Handling Cases Involving Trademark Infraction’” (hereinafter referred to as “Understanding and Application“), which not only reiterated and emphasized the important provisions in the original “Notice”, but also made more detailed interpretation of some key contents such as qualified authorities for case filing, material review, standardized use, citing precedents for protection, protection of key brands. It provides some new guidelines and ideas for enterprises in respect of well known trademark recognition and protection under new situations. This article introduces and analyzes some important contents as follows.

1. Strict Qualification of Authorities for Case Filing

In view of the particularity and professionalism of cases involving the recognition of well-known trademarks, the 2014 “Provisions on the Recognition and Protection of Well-known Trademarks” stipulates that administrative departments for industry and commerce (now called administrative departments for market supervision) at or above the prefecture level shall handle infraction cases involving the recognition of well-known trademarks; meanwhile, for cases involving trademark infraction where the right holder’s registered mark has a record of being recognized well-known before, the administrative departments for intellectual property at or above the county level shall also have jurisdiction. As for the infraction cases involving the well-known recognition for the first time, only the administrative departments of those 64 counties (cities, districts) under direct provincial supervision in 13 provinces as approved by the State have the jurisdiction of opening files related to well-known trademark recognition.

2. Strict Time Limit for Handling Cases

The “Notice” clearly states that “The case filing authorities shall decide whether to accept the case or not within 15 working days from the date of receiving the written request materials from the parties concerned to investigate and deal with illegal acts involving the protection of well-known trademarks”, and “in case of special circumstances, it may be extended by 15 working days with the approval of the person in charge of the unit”. Moreover, the Notice reiterates Article 12 of the “Provisions on Recognition and Protection of Well-known Trademarks” that “materials shall be submitted to the higher authorities within 30 days from the date of case filing “. Case filing authorities shall deal with the case according to law within 60 days after receiving the confirmation of recognition from the CNIPA, and send a copy of the administrative penalty decision to the provincial Intellectual Property administration department.

3. Strengthening Material Review

In order to regulate the application for recognition of well-known trademarks, the parties who claim protection of well-known trademarks shall fill in the “Summary Form” prepared by the CNIPA, prepare evidential materials and be responsible for their authenticity. Case filing authorities shall not only instruct the applicants to fill in the form, but also simultaneously verify the completeness and authenticity of the materials and evidence. The Understanding and Application clearly states that case filing authorities’ verification methods can include written and on-site verification.

4. Strengthening Standardized Use

In order to further implement the requirements of the Notice, this Understanding and Application proposes that the Intellectual Property administrative departments at all levels shall adopt various forms such as centralized publicity, visits and discussions in their daily work to guide enterprises to correctly understand the protection system of well-known trademarks, fully understand that well-known trademarks is a legal concept rather than an honorary title, and that the brand value of well-known trademarks shall be reflected through market recognition rather than through governmental departments’ recognition.

Paragraph 5 of Article 14 of the Trademark Law stipulates that “Producers and operators shall not use ‘well-known trademark’ for commodities, commodity packages or containers, or for advertising, exhibitions or other commercial activities.” For this clause, the Understanding and Application points out that in handling cases, attention should be paid to the distinction between legitimate use of well-known trademarks and illegal propaganda. If an enterprise makes a factual statement to the record of recognition of its well-known trademark, and does not highlight the wording “well-known trademark”, it is legitimate use; otherwise, it is beyond the scope of legitimate use and constitutes an illegal act stipulated in the above clause.

5. Reinforcing Citation of Precedents for Protection

Although China’s judicial and administrative authorities have established the principles of “recognized and effective only for individual case” in respect of the recognition of well-known trademarks, the 2019 “Notice” clearly stipulates that in order to save limited administrative resources and increase the efficiency in law enforcement, the case filing authorities can cite the precedent records of administrative recognition to protect well-known trademarks where there is no objection or sufficient evidence supporting the objection against such recognition. The “Understanding and Application” of 2021 further clarifies the specific contents of the above-mentioned “precedent records of administrative recognition”, which include the record of recognition by the CNIPA and the former State Administration for Industry and Commerce in the handling of trademark infraction cases, trademark oppositions, reviews of opposition decision refusing registration, and trademark invalidations. Morever, it is not necessary for any later cases to cite and refer to the precedent records and grant well-known trademark protection, but instead there are the following two conditions to be met, i.e: 1) the scope of protection is basically the same, that is, the goods/services requested for prohibiting the registration or use are identical or similar in both the latter case and the former case; 2) the adverse party has no objection to the well-known status of the trademark, or lacks sufficient grounds and evidences supporting such objection.

The above-mentioned new explanation further clarifies that besides the precedent cases of cracking down on trademark infringement, the records of recognition of well-known marks in trademark oppositions, reviews of opposition decision refusing registration as well as the trademark invalidations can also be directly cited by local administrations in order to investigate and crack down on trademark infringment cases, as long as certain conditions are met. This is a very positive and meaningful signal for well-known trademark owners who can make better use of the recognition results in large numbers of cost and effort efficient procedures of trademark opposition and invalidation. It will not only save the administrative resources but also save the costs by brand owners, and more systematically and effectively crack down on both trademark pirating applications and infringing use. This should be one of the highlights of this Understanding and Application.

6. Reinforcing Protection of Key Brands

Of the 50 typical cases of administrative trademark protection listed in “Typical Cases of Administrative Protection in Intellectual Property 2014-2018” by the CNIPA, 28 trademarks have been administratively recognized as well-known, accounting for 56%. In order to promote the efficiency and accuracy of crackdown on trademark infringement, well-known trademarks, which have been officially recognized and continuously used, shall be included as the focus of administrative protection work. Therefore, the “Notice” requires all local administraive departments to collect and sort out the well-known trademarks that have been recognized and continuously used within their jurisdictions, form a contact list of well-known trademarks, and submit it to the CNIPA through the provincial Intellectual Property administrative departments on a unified and regular basis. The CNIPA will establish the relevant database and update them in time to provide information support for strengthening the protection of well-known trademarks.