Think You Have A Well Known China Trademark. Think Again.

China's Supreme Court recently confirmed what my firm has always been telling its clients: if you want to protect your trademark in China, you absolutely must register it in China.

We have always said that because the likelihood is so slim of being able to prove that a trademark is a well known mark and the cost of trying to do so is so much higher than actually filing, that unless you are as well known as Coca Cola, you should just go ahead and register. China's Supreme Court just came out with an explanation saying essentially the same thing. Co-blogger Steve Dickinson explains this new explanation below.

PRC Supreme Court Explanation of Legal Issues Concerning Well Known Trademarks
by: Steve Dickinson

The issue of protection of "well known" foreign trademarks is a continuing area of dispute in China. In an attempt to clarify some of the issues, the PRC Supreme Court recently issued an explanation of the issues arising in disputes relating to well known marks. This is 最高人民法院关于审理涉及驰名商标保护的民事纠纷案件应用法律若干问题的解 (Explanation of the Supreme People's Court Concerning Some Questions Arising from the Application of Law in Civil Legal Disputes Concerning the Protection of Well Known Marks) which can be found here [in Chinese only]. The Court issued this Explanation on April 22 and it officially became effective on May 1.

Among the purposes of the Explanation is to clarify the provisions of Article 13 of the Trademark Law, which provides the following:

13. A trademark which is applied for registration in identical or similar goods shall not be registered or shall be prohibited from using, if it is a reproduction, an imitation or a translation, liable to create confusion, of a well-known mark which is not registered in China. A trademark which is applied for use in unidentical or dissimilar goods shall not be registered or shall be prohibited from using if it is a reproduction, an imitation or a translation, misleading the public, of a well-known mark which is registered in China, provided that the interests of the owner of the well-known mark are likely to be damaged by such use.

The translation above is taken from the WIPO standard translation. Note that many translations found on the internet are incorrect and should not be used.

The first article of the Explanation clarifies an important issue. Explanation Article 1 states that the term "well known mark" means a mark generally known by the public within the territory of China. The Explanation thus makes clear two key requirements for a well known mark. First, the mark must be known to the general public, not to a restricted group of experts. Second, the mark must be well known within China. The situation outside China is not relevant.

This second requirement is the source of much confusion for foreign trademark owners. I have read a number of case reports in China where a foreign company went to great lengths to prove that its mark is well known in the United States and Europe and I have had a number of companies tell me they did not think they would need to register their trademark in China because it is a well known mark. The Chinese courts in these cases can do nothing but politely state that though it may be true that the mark is well known outside China, that is irrelevant here in China. What we need to know is whether or not your mark is well known within China. Absent evidence of knowledge of the mark by Chinese consumers, the provisions of Article 13 are of no benefit to the foreign trademark owner. It is essential that the territorial limitation of Article 13 be clearly understood because a failure to understand this and act accordingly will likely lead to much wasted time and money on the part of foreign trademark owners. The clear statement in the Explanation is intended to prevent such misunderstanding.

For the basics on China trademarks, check out this post, entitled, "China Trademark Law: Simple And Effective."

Dan Harris is founder of the Harris & Moure law firm, a boutique international law firm focusing on small and medium sized businesses that operate internationally. China is the fastest growing area for the firm. Dan writes ChinaLawBlog.com as a source of China legal and business information.

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