If we look back at China's two decades of history in protecting well-known brands, there are enlightening and positive steps we have made in improving awareness among enterprises, governments and the general public on intellectual properties and use of brands and trademarks.

At the same time, there have also been some negative results.

The history of protection can be divided into three phases. The first period from March 1985 to August 1986 was when China began to give a few foreign and domestic well-known brands some protection after the country joined the Paris Convention for the Protection of Industrial Property.

Only a couple of foreign and Chinese brands were recognized as well-known, including Pizza Hut, Marlboro, Lux, Tongrentang and Butterfly. The protection of well-known trademarks was still at a nascent stage, but basically followed the international practice of case-by-case application and recognition.

The second period began in October 1986, when the country released a temporary measure on the recognition and administration of well-known trademarks that was in effect until November 2001, when China joined the World Trade Organization.

In that time almost 300 well-known trademarks were recognized through administrative measures and a similar approach was taken at provincial and city levels. The recognition and protection system also made a major mistake - one-time recognition of a well-known trademark at any of those levels and places can be applied to the entire nation and is effective for three years.

The national, provincial and city systems formed a large administrative network that has created chaos. What is also interesting is that well-known marks, which are regarded as having lower quality than famous marks, were given higher status in China and greater protection.

The third phase is characterized by case-by-case recognition through both administrative and judicial systems. From the implementation of the new trademark law on December 1, 2001, administrative and judicial bodies granted a total of over 1,000 well-known trademarks. In this period, Chinese laws and regulations came in line with basic international practices.

What needs our attention is that although both the administrative and judicial systems followed the principle of case-by-case recognition, local systems still followed the old principle that a trademark recognized in one place can be used all over the country and is effective for three years. They also prefer to release well-known brands by batch and give them widespread publicity.

As a result, the effects of well-known trademarks are contrary to their original intentions, as well-known trademarks have become subject of illegal advertisements and used as a measurement of performance by local officials.

The original intention to recognize well-known brands was a means to solve trademark disputes. If the recognition of well-known trademarks is regarded as a desirable title and an effective tool for advertising, the system fails to work and has negative consequences.

How to stop the unethical pursuit for titles of well-known brands and curb unqualified recognition applications is the right direction in China's efforts on well-known trademarks.

Healthy legal protection of well-known trademarks should include:

Strictly following the principle of recognition in individual cases and adhere to the solution of disputes with no interference in the process. Other needed principles include fact-based recognition, recognition on demand and dynamic recognition, as well as the principle that a ruling can only be applied to itself and only act as a reference in other cases.

Forbidding the use of China's well-known trademarks in advertisements based on revised trademark and advertisement laws.

Abolishing the recognition of batches of trademarks in local regions.

Making it clear that the performance measurement for local officials should not include the number of well-known trademarks.

Stopping financial awards to enterprises that acquire well-known or famous trademarks.

The author  Tao Xinliang is dean of the intellectual property school of Shanghai University. This column was originally released in China Intellectual Property News.

(China Daily 12/01/2007 page9)

2013-07-17