Conditions other than fame in recognition of well-known trademark

Recognition of well-known trademarks is a significant milestone in branding. The Trademark Law of China outlines the protection of well-known trademarks, complemented by administrative regulations and judicial interpretations. Trademark holders can assert the protection of well-known trademarks in administrative procedures, subsequent administrative litigation, civil litigation, or trademark infringement cases.

The State Intellectual Property Office and the People’s Courts are the authorities responsible for recognising well-known trademarks. According to incomplete statistics, trademark administrative disputes account for more than 80% of judicial judgments in relation to well-known trademarks.

Trademark practices in China acknowledge that recognition of well-known trademarks is challenging, especially when heard for the first time. That is because recognition follows three basic principles: passive protection, case-by-case recognition, and recognition based on demand.

If the reviewing authority can provide protection based on other legal provisions or deems other legal requirements are not met, thus obviating the need to examine the well-known status, it may lead to a failure in recognition. Well-known trademark cases involve multiple conditions and require extensive evidence over a significant time span.

In well-known trademark recognition cases, parties or their representatives typically focus on collecting evidence of the trademark’s fame such as sales contracts, advertising contracts, invoices, media coverage and awards. However, in cases of failed recognition, the reviewing authority often points out in the ruling that the evidence is insufficient to prove that the cited trademark was widely known before the application date of the disputed trademark.

This leads the parties to mistakenly attribute the failure solely to insufficient evidence of fame, whereas in reality, it might be due to insufficient evidence of other conditions. These conditions include: the association of the goods or services for which the disputed trademark is registered with those seeking recognition as well-known is registered; whether the disputed trademark replicates, imitates or translates the cited trademark; and whether the disputed trademark’s registration origins from malicious intent, particularly when the period in question exceeds five years. The latter consideration is a procedural requirement, and failing to meet it makes substantive examination unnecessary.

In the case of Xueersi v Xueershang, which the author represented, Beijing Xueersi Education Technology, a leading company in the Chinese education industry, claimed that its trademark in class 41 for “education, training” services constituted a well-known trademark and declared the “Xueershang” trademark, registered in class 9 for “electronic publications (downloadable), learning machines”, etc., invalid.

Despite submitting substantial evidence of extensive use of the trademark during the five years before the application date of the disputed trademark, Xueersi faced an invalidation decision deeming the evidence in the case insufficient to establish the cited trademark’s widespread recognition, and indicating significant differences between the goods, service content and service objects associated with the disputed trademark and the cited trademark.

In response, Xueersi supplemented the corroborative evidence in the first instance of court proceedings. First, they provided evidence of the high association between goods such as “electronic publications (downloadable), learning machines” and those related to “education, training”, in the hopes of proving the disputed trademark might mislead the relevant public and damage the plaintiff’s market reputation and interests.

Second, they presented evidence showcasing the malicious imitation of the cited trademark and the appropriation of the plaintiff’s goodwill by the defendant, such as the high degree of similarity in phrasing and font between the disputed trademark and the cited trademark, which can hardly be coincidental, revealing malicious imitation and appropriation by the defendant. Ultimately, the first-instance court supported the plaintiff’s claim, recognising “Xueersi” as a well-known trademark for the first time and declaring the disputed trademark invalid. This demonstrates that the corroboration of evidence other than the well-known status is crucial in reversing the outcome.

In another case the author represented, Markor Furnishings v Meike Fairy, since the disputed trademark had been registered for over five years, it was necessary to first prove that the trademark registered by Markor Furnishings constituted a well-known trademark on goods such as furniture, and that the applicant for the disputed trademark, Meike Fairy, needed to demonstrate malicious intent to satisfy the procedural requirements of article 45 of the Trademark Law before proceeding to substantive examination under article 13.

In determining whether malicious registration existed, the second-instance court analysed the degree of similarity between the disputed trademark and the cited trademark, the well-known status of the cited trademark, the operations of both companies in the same industry, and several trademarks registered by the Meike Fairy company that were similar to the appellant’s brand, thereby determining that the registration of the disputed trademark by Meike Fairy company constituted malicious registration, not subject to the five-year time limit.

The Trademark Law does not prohibit the registration of the same trademark on dissimilar goods, implying a degree of tolerance for some level of imitation or plagiarism as long as it does not blatantly violate the principles of good faith and credit.

Even if the cited trademark is considered well known, significant differences between the goods for which the disputed trademark is registered and those the cited trademark is registered for, along with a low level of overlap in the relevant public, do not constitute malicious appropriation of the goodwill of the cited trademark.

Although the process of determining malice overlaps to some extent with the determination of “replicating, imitation or translation” and “misleading the public”, the determination of malice should take precedence as a procedural requirement and cannot be omitted or replaced by a determination of “replicating, imitation”.

In terms of determinative conditions, the degree of similarity between trademarks, the well-known status of the cited trademark, the association between the goods, and the registration and use of the disputed trademark by the trademark owner should be considered comprehensively.

The above-mentioned cases illustrate that while evidence regarding the fame of the cited trademark is crucial, losing a case is not solely attributable to insufficient evidence of fame. Conditions other than fame may play a critical role in determining the outcome, and the relevant evidence weighed by judges is sometimes not literally reflected in judgments, calling for non-negligible attention during litigation.

Li Bo is director of the Domestic Trademark Department at CCPIT Patent and Trademark Law Office. He can be contacted by phone at +86 10 6604 6310 and by email at lib@ccpit-patent.com.cn