On November 11 2008 the Supreme People's Court of China published the draft Interpretation of certain questions on the application of law relating to the recognition and protection of well-known marks in the adjudication of civil disputes like trade mark infringements (Interpretations) for consultation.
Following the formal recognition of well-known marks by the Trade Mark Law of 2001 (Law), the State Administration of Industry and Commerce (SAIC) had issued the Rules on recognition and protection of well-known marks on April 17 2003 laying down detailed operational rules for the AICs. The Rules do not bind the courts.
Consistent with the current AIC practice, to qualify as a well-known mark, the Interpretation requires the mark under recognition to be extensively known to the relevant public in China. On the other hand, the Interpretation expressly allows the People's Courts to consider evidence of foreign reputation, without detracting from the importance of evidence of local reputation.
Marks not yet registered in China may qualify as a well-known mark under the Interpretation.
The jurisdiction for recognising well-known marks is restricted to the People's Courts at a certain level, for example Intermediate People's Court level, and/or certain districts. These courts should make no such recognition if the success of the case is not dependent on whether or not the mark is well-known. Though not expressly stated in the Interpretation, it is believed this arises in situations where, for example, the plaintiff already has a valid cause of action by relying on an identical or similar mark already registered in respect of same or similar goods or services.
Whereas a well-known mark is recognised on a case-by-case basis, a mark previously recognised as well-known by the People's Court or AIC would be accepted by another People's Court unless challenged by the counter-party or otherwise contrary evidence is available to it.
The People's Court has the discretion to lower the burden for the rights owner to produce evidence of reputation if his mark is so well-known in China. Once prima facie evidence of reputation is produced, the mark may be recognised by the People's Court to be well-known unless challenged by the counter-party.
The Law prohibits the registration or use of a mark which is a reproduction, an imitation or a translation of a well-known mark and is registered in China if this misleads consumers, prejudicing the interests of the registered owner. The Interpretation appears to deem the following acts to be covered by this provision, provided that the relevant public is under the belief that there is considerable association between the respective goods or their trader: trading on the reputation of the mark under recognition; diluting distinctiveness of the mark; debasing the reputation of the mark.
The consultation period ends on December 12 2008
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