Before the revision of the “Trademark Law” in 2013, the well-known trademark was regarded as an honorary title, which became many enterprises’ selling point in marketing. However, the function as a selling point is not the original intention of establishing the well-known trademark system in the “Trademark Law”. Therefore, in 2013, the revision of the “Trademark Law” stipulates that well-known trademarks are expressly prohibited from advertising, which leads many enterprises to reconsider the value of well-known trademarks.
Recently, the “Revised Draft of the Trademark Law (Draft for Comments)” has been released, and it involves provisions on strengthening the protection of well-known trademarks. These provisions attract wide attention of enterprises. Why the attitude on well-known trademarks has been “changed” again and again?
The conclusion is that if an enterprise aimed to use a well-known trademark as a selling point in advertising, such usage of a well-known trademark is poison instead of candy, because the enterprise may encounter the administrative punishment due to improper use. The essential value of a well-known trademark is that it can obtain special protections of laws compared with ordinary trademarks. The special protections of laws mainly include the following aspects.
1.Unregistered well-known trademarks could obtain protection among identical or similar commodities.
The second paragraph of Article 13 of the “Trademark Law” prescribes that, “An application for registration of a trademark which is a replication, imitation or translation of other’s well-known trademark not registered in China for use on identical or similar commodities which is easily misleading shall not be registered and the use of such a mark shall be prohibited.”
This is the protection mechanism of the “Trademark Law” for unregistered well-known trademarks. Specifically, if a well-known brand is preempted by others before its owner register its trademark in China, the owner can apply to the Trademark Office for the recognition of well-known trademarks, by which the Trademark Office may reject other’s registration application through administrative procedures; or the owner can apply for the recognition of well-known trademarks in an infringement case according to the provisions of Article 2 of the judicial interpretation of well-known trademarks, so as to prevent the infringers from continuing to use identical or similar trademarks. For example, in the case of trademark infringement of “巴黎贝甜” (  Jing73 Min Chu No.316, and  Jing Min Zhong No.438), the court held that the defendant infringed the plaintiff’s unregistered well-known trademark rights and interests of “巴黎贝甜” and “PARISBAGUETTE” trademarks in the service of fast food restaurants, and should immediately stop the relevant infringement.
2. Registered well-known trademarks could obtain protection for use on non-identical or non-similar commodities.
The third paragraph of Article 13 of the “Trademark Law” prescribes that, “An application for registration of a trademark which is a replication, imitation or translation of other’s well-known trademark already registered in China for use on non-identical or non-similar commodities which is misleading to the public and may cause harm to the interests of the trademark registrant of the said well-known trademark shall not be registered and the use of such a mark shall be prohibited.”
This is the most common circumstance in the recognition of well-known trademarks. For well-known brands, the cost of registration and maintenance of all classes of trademarks is high, but if they are not registered, once they are used by others, which will be likely to impose a negative impact on the owners. But the recognition of well-known trademarks can provide enterprises with more comprehensive protection across classes. For example, in the “百度” trademark infringement case ( Jing Min Zhong No. 170), although the services provided by the defendant Beijing Baidu Company and the services approved for use of the “百度” trademark are not the same or similar services, “百度” trademark obtained a cross-class protection because Baidu Company had applied to the court for the recognition of a well-known trademark, and the court ruled that the defendant had infringed the plaintiff’s trademark rights.
In addition, we have to clarify that the so-called “Cross-class protection” is a limited and moderate protection, rather than a full-class and comprehensive protection. According to the foregoing provision of the “Trademark Law”, the implementation of the “Cross-class protection” has a precondition, which is other trademarks mislead to the public and may cause harm to the interests of the trademark registrant of the said well-known trademark, so such protection is not unconditionally extended to all different and dissimilar goods/services. In the case of unfair competition disputes over the unauthorized use of the “巨人” (  Hu Min Zhong No. 538), the Shanghai High People’s Court pointed out that, “China has adopted appropriate cross-class protection for well-known trademarks, and the scope of protection should be reasonably determined according to the specific situation, taking into account its popularity, salience, and the degree of connection with the alleged infringing goods. Although the four plaintiff can prove that the registered trademark of “巨人” has a high popularity in the game industry through its use and publicity, its popularity is limited to the scope of services approved for use, and there is a significant difference between the services approved for use of the trademark and the relevant public or consumers of the alleged infringing goods, in addition, the phase “巨人” is a common phase, and its significance is not high, Therefore, the existing evidence is insufficient to prove that the “巨人” trademark involved in the case meet the requirements to be recognized as a well-known trademark.”
3.Well-known trademarks could break the limitation of time limit in the procedure of invalidation for specific circumstances.
According to the provisions of Article 45 of the “Trademark Law”, where a registered trademark violates the provisions of the second and third paragraphs of Article 13 of the “Trademark Law”, a prior right holder or a stakeholder may, within five years from the date of trademark registration, request that the trademark review and adjudication board declares the said registered trademark invalid; and for malicious registrations, holders of well-known trademarks shall not be subject to the five-year restriction.
Therefore, if the trademark in dispute has been registered for more than five years, and relevant enterprise wishes to apply for invalidation of the trademark, it can try to invalidate the trademark by applying for the recognition of its own trademark as a well-known trademark and advocating malicious registration.
4.Well-known trademarks could obtain special protection according to the “Anti-Unfair Competition Law”.
According to Article 58 of the “Trademark Law”, use of other’s registered trademark or an unregistered well-known trademark as an enterprise name to mislead the public which constitutes unfair competition shall be dealt with pursuant to the Anti-unfair Competition Law.
In the aforementioned Baidu case, the court decided that all defendants should stop using the word “百度” in their enterprise name. The court held that, “The plaintiff’s “百度” trademark had high popularity and influence throughout the country. The five defendants used “京百度”, which is similar to “百度”, as their enterprise name, with the subjective intention of attaching to the reputation of the plaintiff’s “百度” trademark, which is also objectively easy to lead the relevant public to mistakenly believe that the five defendants has a certain relationship with the plaintiff, resulting in misunderstanding of the five defendants’ investment or business, confusing service sources, and constituting unfair competition.
5.Well-known trademarks could obtain special protection from the perspective of network domain name protection.
Article 4 of the “Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law to the Trial of Civil Dispute Cases Involving Computer Network Domain Names” stipulates that, “when hearing a domain name dispute case, if the defendant’s domain name or its main part constitutes a copy, imitation, translation or transliteration of a well-known trademark of the plaintiff; or it is identical with or similar to a registered trademark, domain name, etc. of the plaintiff to a degree sufficient to cause mistaken identification among the relevant public; then the court should determine that the defendant’s registration and/or use, etc. of a domain name constitutes infringement or unfair competition.”
Therefore, well-known trademarks can help enterprises to resist domain name preemption. In the “今日头条” case ( Jing 0491 Min Chu No.10619), the court pointed out that the plaintiff obtained the exclusive right to use “头条”, “今日头条”, “TOUTIAO. COM” and other trademarks in its operation, in which the “今日头条” trademark had become a well-known trademark no later than May 2017, and had rights and interests in the “toutiao. com” domain name, and the plaintiff’s legal rights and interests regarding the above commercial logo should be protected.
Finally, as mentioned at the beginning of this article, the “Revised Draft of the Trademark Law (Draft for Comments)” incorporates the anti-dilution protection rules in the judicial interpretation of well-known trademarks. It is stipulated that, “if the trademark to be used or applied for registration is copied, imitated or translated by other’s well-known trademark, by which it is sufficient to cause the relevant public to reckon that there is a certain degree of connection between the litigated trademark and the well-known trademark, thereby reducing the prominence of the well-known trademark or derogate the market reputation of the well-known trademark, or where the market reputation of the well-known trademark was being misused, such trademarks should be prohibited to be used and shall be rejected for the registration.” If this revision is officially promulgated, it will expand the anti-dilution protection of well-known trademarks from the field of civil disputes to the field of administration.
Now, we believe you have your own opinion on the value of a well-known trademark.