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The Well-Known Trademark Protection in China1 |
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Li, Mingde |
1. Trademark Law and the Related Regulations
In August 1982, China enacted its trademark law, which went into
effect in March 1983. In February 1993, about ten years later, the
trademark law was amended in light of the social changes and the
international rules involved. In October 2001, for its membership of WTO,
China again amended its trademark law in accordance with TRIPS
agreement, and other international conventions concerning trademark
protection.
In addition to the trademark law, there is an implementing
regulation for the trademark law, which provides some specific rules,
explanations, and additional provisions. Therefore, if one is going to
consider "the trademark law" in China, he or she must consider both the
law and its implementing regulation. The Implementing Regulation was
enacted in March 1983, accompanying the trademark law, and thereof
amended in January 1988, in July 1993, and in September 2002.
There was no provision on the protection of well-known trademark in
1983 trademark law and 1993 trademark law. However, in the implementing
regulation for the 1993 trademark law, there were some provisions
concerning the protection of well-known trademark. For example, the 1993
implementing regulation provided something such as the trademark that
was familiar to the public, the service mark that was familiar to the
public. We interpreted these provisions as referring to well-known
trademark, and well-known service mark. In August 1996, the Ministry of
Industry and Commerce, of which the trademark office is one part, issued
another administrative regulation in this respect, the Regulation on the
Identification and Protection of Well-Known Trademark. Although the
implementing regulation and the Regulation on the Identification and
Protection of Well-Known Trademark had played an important role in the
protection of the well-known trademarks in China, they were
administrative regulations, not the law passed by the congress.
In October 2001, the National People's Congress of China amended the
trademark law, and established two articles on the protection of
well-known trademark. Article 13 provides that the well-known trademarks
either registered or unregistered shall be protected. Article 14 sets up
several elements on how to identify a well-known trademark, such as the
extent of the relevant public's awareness of the trademark, duration of
the use of the trademark. The newly amended law also reflects the
doctrine of dilution in certain degree in article 13, which provides
that where a registered trademark is well-known one, it is prohibited to
be registered and be practically used by others even if the registration
or use is connected with different type of goods. It is no doubt that
all these provisions are derived from Paris Convention and TRIPS
Agreement. And for the first time the Trademark Law of China clearly
provides the protection of well-known trademark.
On the basis of the newly amended trademark law, the Ministry of
Industry and Commerce again enacted its Regulation on the Identification
and Protection of Well-Known Trademark in June 2002. This is an
administrative guideline for the trademark office and the trademark
review board to identify and protect the well-known trademarks.
According to the Regulation, during a dispute settlement or a conflict
of rights, the trademark owner may request the administrative agency
that is settling the dispute or the trademark office to identify his or
her mark as a well-known trademark. In turn whether a trademark is
well-known mark or not is decided by the trademark review board. The
identification is on the basis of case by case and its purpose is to
resolve the dispute involved or the conflict of rights.
2. Practice of Trademark Office and Courts in China
In 1987, the Trademark Office of China identified first foreign
well-known trademark, Pizza Hut, in an opposing procedure for a
registration application. In 1989, the Trademark Office identified the
first Chinese well-known trademark, Tong Ren Tang, the trademark for a
manufacturer of Chinese medicine. This is far before the implementing
regulation for the 1993 trademark law. From 1989 to 1995, still before
the enactment of the Regulation on the Identification and Protection of
Well-Known Trademark, another 19 well-known trademarks were identified.
It is apparent that even in a period there was no provision in the law
or the implementing regulation to protect well-known trademark, as a
practice China did identified and protected the well-known trademarks.
Since the enactment of the Regulation on the Identification and
Protection of Well-Known Trademark, the work by the trademark office to
identify the well-known trademarks has been done well. At the end of
1999, 196 well-known trademarks were identified. In the year 2000 and
2002, the trademark office identified some other well-known trademarks,
including re-identification of some well-known trademarks, and remove of
some well-known trademarks from the list. So at the end of 2002, the
well-known trademarks identified by the trademark office, are up to 293.
In the meanwhile, the judicial system in China occasionally
identified some well-known trademarks on the basis of case by case. For
example, in one case the court identified Ikea as well-known trademark,
and in another case the court identified DuPont as well-known trademark.
And as a practice, both the court and the trademark office recognize the
well-known trademarks identified by each other.
In China, both the trademark office and the courts have power to
identify well-known trademarks. This practice is quite different from
the practice in other countries, because in most other countries, it is
the court that has the authority to identify well-known trademark on the
basis of case by case. In China, the court does have the authority to
identify well-known trademark. In addition to this, however, it seems
that the trademark office, specifically the trademark review board, has
played a more important role than the courts in this respect. There do
have some reasons for this practice.
One reason is rooted in the registration rules. According to the
trademark law and the implementing regulation in China, if an applicant
applied to register a trademark that is similar or the same to other's
registered trademark, the trademark owner has a right to oppose the
applicant's registration of the similar or the same mark. And in the
opposing procedure, the trademark owner may request the trademark
office, or specifically the trademark review board, to identify his or
her mark as a well-known one. Thus, a lot of well-known trademarks are
identified because of this procedure.
Another reason is rooted in the dual system of the dispute
settlement in China. In light of the provisions involved, if a
registered trademark is infringed, the owner of the trademark can
enforce his right by two channels. The first one is to request the
administrative agencies of industry and commerce to investigate the
case. And if the infringement is established, the agency will issue an
injunction and may detain or destroy the infringing goods. The second
channel is to file a case to a court and ask for remedies. If the court
decides that the defendant infringed the plaintiff's trademark, the
trademark owner may get remedies such as injunction, damages, and
attorney fees.
During the dispute investigation or the lawsuit, the trademark owner
may ask the agency or the court to identify his or her mark as a
well-known one. If his or her trademark is identified as a well-known
one, the trademark may get more protection. Because many trademark
owners in China prefer to settle their infringement disputes by the
administrative system rather than by the judicial system, most cases
concerning the identification of well-known trademark are filed in the
administrative procedures. As a practice, whether a given trademark is
well-known or not, is decided by the trademark review board rather than
by an administrative agency that is dealing with the dispute
investigation.
3. Comments on the Practice of the Trademark Office
At the beginning, the identification and protection of well-known
trademarks by the administrative agency had at least two purposes. The
first one was to protect Chinese famous brand, such as Tong Ren Tang,
Peking Roasted Duck. The second one was to promote Chinese enterprises
to create well-known brands and compete with foreign brands either
domestically or internationally. For example, there was a movement
around 1996 in China, which was called the movement to create famous
brands. It was against this background that the Ministry of Industry and
Commerce enacted the Regulation on the Identification and Protection of
Well-Known Trademark and the trademark office identified many well-known
trademarks through administrative procedure. As a result, the well-known
trademarks identified by the trademark office were in most cases for
Chinese trademarks.
In the meanwhile, the governments in the provincial level and
several ministries under the state council, such as the Ministry of
Domestic Trade, identified their well-known trademarks through their
administrative procedures. Therefore, there used to be a hierarchy of
well-known trademarks in China, such as the national well-known
trademarks, the local well-known trademarks, and the well-know
trademarks within a special industry sector. Of cause, the most
important level of the hierarch was the national well-known trademark
identified by the trademark office. And as the time was going on, the
governments in the provincial level and the Ministries have gradually
given up their practice to identify the well-known trademarks.
Since the enactment of Regulation on the Identification and
Protection of Well-Known Trademark of 2002, the practice to identify and
protect the well-known trademarks by the administrative agency has
gradually returned to a right track. That means that the purpose of the
identification and protection by the administrative agency is not for
the promotion of famous brands but for the resolution of an infringement
dispute or a conflict of rights. The identification by the trademark
review board is on the basis of case by case.
Another point shall be mentioned is that the identification practice
by the trademark office is in most cases concerned with Chinese
trademarks, rather than foreign trademarks. Because a well-known
trademark can enjoy some privileges, and get much broader protection,
the owners of foreign trademarks as well seek to get their trademarks to
be identified as well-known trademarks by the trademark review board.
They even argued that this practice, by identifying Chinese trademark
rather than foreign trademark, violated the provisions of Paris
Convention.
The actually situation, however, is different from this argument. In
light of the rules involved, the practice to identify well-known
trademarks by trademark office is open both to Chinese trademark owners
and to foreign trademark owners. There has never been a provision that
the owners of foreign trademark are excluded from the identification
practice by the trademark office since the enactment of the Regulation
on the Identification and Protection of Well-Known Trademark of 1996.
And in fact the first well-known trademark identified by the trademark
office was Pizza Hut owned by a foreign enterprise.
Because many owners of foreign trademarks are not familiar to settle
their infringement disputes through administrative agencies, especially
are not skilled at requesting the administrative agencies to identify
their marks as well-known trademarks in the dispute settlement, up to
date, there are only a few foreign trademarks identified by the
trademark review board as well-known trademarks. Therefore, in order to
change the situation that only a few foreign trademarks are identified
as well-known trademarks by the administrative agency, the owners of
foreign trademarks must adequately take use of the Regulation on the
Identification and Protection of Well-known Trademark, and more
frequently request the administrative agency to identify their
trademarks as well-known ones.
A well-known trademark, if it is identified, does have some
privileges, and get more broad protection. In China, however, it seems
that the owner of a well-known trademark enjoys too much privileges. For
example, the owner may advertise his or her mark as well-known
trademark, such as the national well-known trademark, or local
well-known trademark. In contrasting, the owners of other trademarks are
prohibited to advertise in this way. Another example is that once a mark
is identified as the well-known trademark, it sends some information to
the public that the goods or services related are high quality goods or
services. It seems that the mark and the related goods or service have
been approved by an authority agency, or have an official mark.
Because of the identification practice by the trademark office and
the privileges related to the well-known trademarks identified thereof,
some problems did result from the practice.
First, every trademark owner, in order to enjoy the privileges
listed above, makes his or her best efforts to get his or her mark to be
identified as well-known trademark, especially the national well-known
trademark by the trademark review board. Against the background of the
highly commercialized Chinese economy, some owners even took use of
unclean hands to get their mark to be identified as well-known
trademarks. Therefore some corruptions have occurred with the
identification practice by the trademark office.
Second, this practice resulted some different protection standards
between the well-known trademark and the ordinary trademark. For
example, there is another privilege for the owner of the well-known
trademark in resent years in China. From the end of the year 2000, there
was an action in China called "Anti-Counterfeiting goods action". This
is mainly concerned with the well-known trademarks and the well-known
trade names. In a period of time during this action, with respect to the
criminal litigation, there were different standards for the well-known
trademark and the ordinary trademark. If it is an ordinary trademark,
the infringing goods must be worth of 100,000 RMB at lest. If it is a
well-known trademark, there is no such requirement.
For the problems above, it seems that the practice to identify the
well-known trademark by the trademark office is lost the tenet for the
protection of well-known trademark. So what is the purpose to identify
and protect well-known trademarks?
There are two basic doctrines for the identification and protection
of well-known trademark in the world. The first one is to get an
exclusive right on the trademark that has been used but not registered.
Although a trademark owner may get his or her right by the use of the
mark in a common law country, he or she can only get the exclusive right
by the registration of the mark in a civil law country. If somebody else
registered the mark before the trademark owner came to the country, the
real trademark owner shall lose his or her right. Therefore, in light of
article 6bis of the Paris convention, if a trademark is a well-known
one, even if it is not registered in a member country, the owner may
claim his or her right on the basis of the well-known within five years.
If somebody else registered other's well-known trademark, the real owner
of the mark can claim his or her right without time limitation.
The second doctrine is against the dilution of the well-known
trademark. According to this doctrine, the owner of a well-known
trademark can prohibit others to use his or her mark in connection with
different types of goods or services even if the use may not result any
consumer confusion to the source or origin of the goods or services. In
light of article 16, TRIPs Agreement, if a trademark is a well-known
one, others are prohibited to use the trademark with the goods or
services which are not similar to those in respect of which a trademark
owner is registered, provided that use of that trademark in relation to
those goods or services would indicate a connection between those goods
or services and the owner of the registered trademark, and provided that
the interests of the owner of the registered trademark are likely to be
damaged by such use. It is no doubt that this kind of use shall diminish
the uniqueness of the well-known trademark, or whittle away or dilute
the strong distinctiveness of the well-known trademark.
On the basis of the two doctrines, the identification and protection
of well-known trademark has no relation to the promotion of famous
brands.
4. Conclusion
Generally speaking, a well-known trademark is identified by the
judicial system on the basis of case by case. In China, however, in
addition to the judicial system, administrative system has played an
important role to resolve the disputes or the conflict of rights
concerning a trademark. This is what we called " a dual system" to
resolve the disputes and the conflict of rights concerning a trademark.
In consequence, the administrative agencies can identify and protect the
well-known trademarks.
In light of the judicial practice and the Regulation on the
Identification and Protection of Well-Known Trademark, a well-known
trademark, identified either by the judicial system or by the
administrative, is on the basis of case by case. There is no provision
to in connection with the promotion of famous brand. Therefore, if we
say that the identification and protection of well-known trademark in
China did have some problems, the problems are not resulted from the
dual system, but from the fact that some times the administrative
agencies have not hold on the two basic doctrines for the protection of
well-known trademarks.
[01]This is the speech delivered by Prof. LI, Mingde, in ASEM
Well-Known Trademark Protection Symposium, which was held in Singapore,
February 11-13, 2004. |
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