(June 1, 2009) On April 23, 2009, China's Supreme People's Court issued the Interpretation on Several Issues Concerning the Application of Laws in Hearing Civil Cases Involving Protection of Renowned Trademarks [hereinafter Interpretation]. It became effective on May 1, 2009. Among other provisions, the Interpretation attempts to clarify some terminology in the Trademark Law that had proved problematic in practice; stresses that the parties that initiate proceedings on grounds of infringement of their well-known marks generally bear the burden of proving that the mark is well-known and sets forth the type of evidence required; and, by limiting the scope of judicial determination of well-known trademarks, seeks to reduce abuse of the judicial system to use such recognition for inappropriate commercial purposes. (Juristic Determination of Well-Known Trademark, ARTICLESBASE, May 25, 2009, available at http://www.articlesbase.com/intellectual-property-articles/juristic-dete
rmination-of-wellknown-trademark-934738.html; Jane Jiang, Supreme People's Court Began to Draft Judicial Interpretation on Judicial Determination of Well-known Trademarks, Duan & Duan Law Firm website, June 6, 2008, available athttp://www.duanduan.com/fgdt-e-20080606.htm.)
A “well-known trademark” is defined in the Interpretation as “a trademark that is widely known to the relevant public within the territory of China” (art. 1). (Interpretation, 2009 No. 3, issued on Apr. 23, 2009) [in Chinese], Supreme People's Court of the People's Republic of China website, http://www.court.gov.cn/lawdata/explain/civil/200904270003.htm (last visited May 26, 2009).)
In the adjudication of the following three types of civil disputes, in which the parties rely on the trademark being well known as the case's factual basis, the people's court, if it deems it necessary based on the circumstances, will make a determination as to whether or not the trademark is well known:
- if the trademark rights infringement suit is lodged on the ground of breach of the provisions of article 13 of the Trademark Law (adopted on Aug. 23, 1982, as amended on Oct. 27, 2001) [involving the registration of a trademark that is a reproduction, imitation, or translation of either a trademark not registered in China and “likely to cause confusion” or of a well-known, China-registered trademark where the new mark “misleads the public and is likely to create prejudice to the interests of the well-known trademark registrant”; see Trademark Law of the People's Republic of China [in Chinese & in English translation], State Intellectual Property Office of the P.R.C. website, http://www.sipo.gov.cn/sipo2008/zcfg/flfg/sb/fljxzfg/200804/t20080403_36
9302.html & http://www.sipo.gov.cn/sipo_English/laws/relatedlaws/200804/t20080416_38
0361.html, respectively (last visited May 26, 2009).];
- if the trademark rights infringement suit or unfair competition suit is lodged on the ground that the company name is identical or similar to its well-known trademark; or
- if it is a counter plea or counter claim lodged in conformity with the provisions of article 6 of the Interpretation, which addresses suits involving alleged infringement of a plaintiff's exclusive rights to use a registered trademark in which the defendant defends or files a counter claim on the ground that the trademark has been reproduced, copied, or translated from a prior unregistered renowned trademark (art. 2).
The court will not examine whether an infringed trademark is well known or not in the following types of civil suits:
cases where the establishment of trademark rights infringement or unfair competition is not based on the trademark's renown as fact; or infringement suits lodged by a plaintiff on the ground that the domain name registered or used by the defendant is identical or similar to the plaintiff's registered trademark and the defendant is engaging in electronic commerce by using that domain name to conduct trade in the relevant commodity, sufficient to mislead the relevant public; and
cases in which trademark rights infringement or unfair competition is not established due to the absence of other conditions prescribed by law (art. 3).
Where the parties contend that their trademark is well known, they must, based on the concrete circumstances of the case, present certain types of evidence to prove that when the defendant infringed their trademark rights or acts of unfair competition occurred their trademark was already well known. The evidence includes:
market share, sales territory, and profit and tax of goods bearing the trademark;
the continuous use of the trademark;
the methods, duration, extent, capital investment, and regional scope of the marketing and promotion of the trademark;
records indicating that the trademark received protection as a well-known trademark;
the trademark's reputation in the market; and
other facts proving the trademark to be well known (art. 5, para. 1).
The interpretation also stipulates that a People's Court recognition of a trademark as well known will merely be viewed as a fact of the case and grounds of the decision, and will not be written into the judgment; in cases concluded through mediation, the fact that the trademark is well known will not be given as a finding in the mediation agreement (art. 13). (See also The SPP [sic] Issuing the Judicial Interpretation to Strengthen the Protection of Renowned Trademarks, 15 iSINOLAW WEEKLY (Apr. 27-May 3, 2009), via e-mail; Xu Jing & Zhao Ye, Judicial Recognition of Well-Known Trademarks in China, KING & WOOD IP BULLETIN (Special Issue) (July 2008), available at http://www.kingandwood.com/Bulletin/Bulletin%20PDF/spe_en_2008-07-IP-xuj