To facilitate the public and trademark agency practitioners in better understanding the Trademark Examination and Adjudication Guideline (hereinafter referred to as "Guideline") and to address public concerns, the Trademark Office of China National Intellectual Property Administration has compiled a set of questions and answers on key issues regarding the formulation of the Guideline.
Chapter 10, Part II of the Guideline is titled "Examination and Adjudication of Well-known Trademarks". This Chapter expands and improves the Trademark Examination and Adjudication Standards (formulated and issued in 2005, first revised in 2016; hereinafter referred to as the "2016 Standards"). During the formulation of the Guideline, this Chapter attracted considerable attention. Relevant interpretations are now provided as follows:
1. Q: How should we understand the principle of "recognition as needed" for well-known trademarks in the Guideline?
A: The recognition of a well-known trademark should be necessitated "for the handling of a case" and not for other purposes. The understanding and acceptance of the "recognition as needed" principle for well-known trademarks has undergone a process of evolution. On April 23, 2009, the Supreme People's Court issued the Interpretation on Several Issues Concerning the Application of Law in the Trial of Civil Dispute Cases Involving the Protection of Well-known Trademarks (Judicial Interpretation [2009] No. 3). Paragraph 1, Article 2 of the judicial interpretation stipulates that "in the following civil dispute cases, if a party claims as a factual basis that a trademark is well-known, and the people's court deems truly necessary given the specific circumstances of the case, it may enter a determination on whether the involved trademark is well-known". That's to say, the recognition of whether a trademark involved in a case is well-known must meet the requirement of necessity. The third revision to the Trademark Law in 2013, articulates the "recognition as needed" principle in legal form to a considerable extent, stating that "well-known trademarks shall be recognized upon the request of the parties as facts that need to be determined for the handling of trademark-related cases". On July 3, 2014, the former State Administration for Industry and Commerce promulgated the Provisions on the Determination and Protection of Well-Known Trademarks (SAIC Order No. 66), which lists the principles for recognizing well-known trademarks in Article 4 as "the principles of case-by-case recognition and passive protection". However, Article 3 simultaneously states that the recognition of well-known trademarks should be "based on the request of the parties and the needs of examining and handling the case". On the basis of the above mentioned legislative and judicial developments and after multiple discussions, the 2016 Standards establish the "recognition as needed" principle as a fundamental principle for recognizing well-known trademarks, alongside the principles of case-by-case recognition and passive protection. The principle is stated as follows: "where a cited trademark is significantly different from another person's trademark, or the goods/services on which the cited trademark is designated for use are substantially different from those on which another person's trademark is designated for use, so that the application for registration of the cited trademark is not likely to cause confusion or to mislead the public and thereby potentially harm the interests of the registrant of that 'well-known trademark' ", there is no need to determine whether the other person's trademark is well-known.
As the practices of recognizing and protecting well-known trademarks become increasingly standardized, the understanding of the "recognition as needed" principle has deepened. The concepts of "as needed by the merits of a case" or "as needed for the handling of a case" have been continuously reinforced, and the understanding of "need" has become more aligned with the original intent of the well-known trademark recognition system. In the trademark authorization and confirmation practices, a consensus has formed: implementing the "recognition as needed" principle should follow a protection-oriented and result-oriented approach. The recognition of well-known trademarks should not only meet "the need for handling a case" and "fulfill the statutory requirements", but also follow prerequisites such as "exhaustion of other remedies". Therefore, the Guideline has revised the wording of the "recognition as needed" principle in the 2016 Standards, clearly specifying that "recognition as needed" means that "if a party's trademark can be protected by applying other articles of the Trademark Law based on the evidence on record, or if the registration and use of the cited trademark are not likely to cause confusion or to mislead the public and thereby potentially harm the interests of the party, the trademark registration authority need not determine whether the party's trademark is well-known".
2. Q: How should we understand the principle of good faith for well-known trademarks in the Guideline?
A: The principle of good faith is a fundamental principle of civil and commercial law, as well as a basic ethical norm in market economic activities. The principle of good faith requires all market participants to pursue their own interests without harming the interests of others or the public in general. Article 8 of the Provisions on the Determination and Protection of Well-Known Trademarks promulgated on July 3, 2014 stipulates that "parties requesting protection for well-known trademarks shall abide by the principle of good faith and shall be responsible for the truthfulness of the facts and the evidence materials submitted". In cases involving the recognition of a well-known trademark, the parties generally make statements of specific facts and submit a large volume of evidence materials. In the examination of such cases, these factual statements and evidence materials constitute the key basis for determining whether the party's trademark has reached the threshold of being well-known, and whether the registration and use of the cited trademark are likely to cause confusion or to mislead the public thereby potentially harming the interests of the party. In addition, China is now vigorously building a social credit system, enforcing joint disciplinary measures against dishonest acts. Preventing the adverse consequences of dishonest acts is an important initiative under that system. Therefore, in implementing the principle of good faith, it is justifiable to require parties seeking well-known trademark protection to be responsible for the truthfulness, accuracy and completeness of their factual statements and submitted evidence, and to refrain from determining whether a trademark is well-known if its owner has committed serious acts of dishonesty.
3. Q: What are the revisions to the Guideline regarding the evidence requirements for recognizing well-known trademarks?
A: To better reflect the operating conditions of the parties, and facilitate their collection and submission of evidence, the Guideline's section on the recognition of well-known trademarks has changed the scope for submitting certain types of evidence. It now acknowledges the evidence of use formed through non-traditional business operations and non-traditional media, and adds acceptable formats for submitting some evidence based on practical circumstances. For example, it adds relevant materials like online e-commerce sales records as evidence of trademark use in addition to traditional evidence such as contracts, invoices, delivery orders, bank credit slips and import/export documents; it explicitly includes both traditional and non-traditional business operations for the examination of evidence related to the geographic scope of sales, distribution of sales outlets and sales channels/methods; it explicitly includes both traditional and non-traditional media for the examination of materials related to media advertising, reviews, reports, rankings and other promotional activities; and it adds notarized printouts of electronic tax certificates as evidence related to tax payment amounts in addition to the original tax payment certificates issued by tax authorities or their notarized copies.
4. Q: What other revisions to the Guideline regarding the recognition of well-known trademarks should applicants and their agents note?
A: There are three additional revisions in Chapter 10 of the Guideline that trademark examiners and relevant practitioners should note.
Firstly, the Guideline adds provisions concerning the renewed protection of previously recognized well-known trademarks. It elaborates the specific applicable conditions and the evidence materials that the holder of a well-known trademark must submit when requesting protection again. Particularly, it specifies that the holder should submit evidence demonstrating that the well-known status of the trademark from when it was previously protected as such, to the current case.
Secondly, on the basis of practice, the Guideline elaborates on the definition of "translating" another party's well-known trademark. If a cited trademark expresses another party's well-known trademark in a different language, and that language has established a corresponding relationship with the well-known trademark and is widely known to or customarily used by the relevant public, it constitutes a "translation" as referred to in Paragraph 2, Article 13 of the Trademark Law. More, if the language is likely to cause the relevant public to mistakenly believe that it has a considerable degree of connection with the other party's well-known trademark, it also constitutes a "translation".
Thirdly, the Guideline no longer makes a clear distinction between "causing confusion" and "misleading the public", but instead consolidates the description of specific circumstances, so as to better align with the practical requirements of trademark examination and adjudication.