Following consultation in November/December 2008 (see Managing IP, December 2008), on April 22 2009 the Supreme People's Court of China issued the Interpretation of Certain Questions on Application of Law Relating to the Protection of Well-Known Marks in the Adjudication of Civil Disputes which came into force on May 1 2009. Though most of the original proposals in the consultation draft are adopted, there are certain changes.

Whilst the draft requires the trade mark under recognition to be extensively known to the relevant public in China, on the other hand, it expressly allows the People's Courts to consider evidence of foreign reputation, without detracting from the importance of evidence of local reputation. However, consideration of foreign reputation does not appear in the final interpretation.

The interpretation confirms that well-known trade mark recognition should only be made where the success of the case is dependent on it. Accordingly, no such recognition will be made in domain name cases. Such recognition is considered unnecessary because, according to another interpretation of the Supreme People's Court, registration and use of a domain name identical or similar to another person's registered trade mark is trade mark infringement if this is likely to cause confusion.

In a dispute involving conflict between a well-known trade mark and another trade mark which is a reproduction, imitation or interpretation of the well-known trade mark, the well-known trade mark owner may directly begin legal proceedings at courts to restrain the use of the registered trade mark without having to first invalidate the registered trade mark as was previously the case.

Separately, to guard against internal malpractice in well-known trade mark recognition, on April 26 2009 the State Administration of Industry and Commerce (SAIC) issued the Work Manual on Well-Known Trade Mark Recognition, effective immediately. This sets out in detail the internal well-known trade mark recognition procedures and requirements in trade mark infringement, opposition and invalidation proceedings at respectively the AIC, SAIC and the Trade Mark Review and Adjudication Board (TRAB).

Effectively, the final decision of well-known trade mark recognition or non-recognition is only made after the initial consideration of the handling officers followed by discussions at meetings with their supervising officers (meetings minuted), as well as the scrutiny and check of the office of the head of the Trade Mark Office/TRAB, the Well-Known Trade Mark Recognition Review Committee and the Office of the Director General of the SAIC. To avoid possible malpractice, representatives from other departments such as the Central Disciplinary Committee are invited to attend the meetings of the Well-Known Trade Mark Review Committee.

Howard Tsang

Wilkinson & Grist
6/F, Prince's Building, 10 Chater Rd
Central, Hong Kong
Tel: +852 2524 6011
Fax: +852 2520 2090
iprop@wilgrist.com
www.wilgrist.com