Limitations of Cross-class Protection of Registered Well-known Trademarks

Well-known trademarks mean the trademarks, which are widely known to the relevant sector of the public and enjoy a high reputation in China (Article 2 of “The Provision on the Recognition and Protection of Well-Known Trademarks”, hereinafter referred to as “Provision”). Registration is not the precondition for well-known trademarks, but according to Article 13 of Trademark Law, for well-known trademarks, which have not been registered in China, the protection scope is limited to “the identical or similar goods”, it means that the principle of “similar class protection” is applied; for well-known trademarks registered in China, the protection scope is extended to “dissimilar goods”, it means that both the principles of “similar class protection” and “cross-class protection” are applied. Can the protection scope of well-known trademarks registered in China cover all classes? Will the owner of such trademarks certainly win in the relevant disputes? The answer is no.

Whether “Cross-class protection” of the registered well-known trademarks has covered all the classes and all goods, the existing laws have not defined yet. However, “Provision” and “Interpretation of the Supreme People’s Court Concerning the Application of Laws in the Trial of Cases of Civil Disputes Arising from Trademarks”(“Interpretation”) and other regulations have emphasized the review of protection scope, and the legislative intention is to limit the cross-class protection for well-known trademarks, that is the protection scope shall be limited to those conditions which are sufficient to cause the relevant sector of the public confusion, mistake or associating with the goods’ source or business operator, rather than the protection scope shall cover all the classes. In practice, there is an increasingly obvious trend that the trademark administrative dept. and the courts in dealing with such cases may consider the significant degree of specified well-known trademarks, the awareness of the goods with well-known trademarks in the relevant sector of the public, as well as the misunderstanding caused by the infringement and other elements.

Currently, the Chinese well-known trademarks’ record has the same name for well-known trademarks of a number of different categories, such as “东风” is 3, “长城” is 2, and so on. Due to the coexistence of same trademarks’ name and cross-class, these registered well-known trademarks can not obtain a comprehensive “cross-class” protection.

Secondly, the abusive judicial recognition may lead the coexistence of the same name of well-known trademarks on different goods. In China, the methods of recognition of well-known trademarks are divided into administrative recognition and judicial recognition. The courts which have the right to hear judicial recognition are throughout the country, and the judicial level is uneven. Where the relevant laws and judicial interpretations only stipulate the standards on recognizing well-known trademarks in principle, the discretionary space for the courts is large, even facing the same evidence, different courts may come to completely different conclusions. In practice, due to the abusive judicial recognition, different courts may make the different court decisions on the usage of the same name of trademarks on different goods, and the relevant well-known trademarks may not obtain a comprehensive “cross-class” protection in fact.

In addition, the protection to the well-known trademarks’ owners based on the recognition results of well-known trademarks is non-permanent and dynamic, and has limitation. “The records that one trademark has ever been protected as a well-known one by the administrative organ of our country” is only one factor for the recognition authorities to recognize well-known trademarks.(Article 12 of Provision ). According to Interpretation, “The determination of the popularity of the trademark by the people’s court shall merely be regarded as the fact of the case and reason for the judgment, which shall not be included in the main content of the judgment.”, “If the trademark had ever been determined as a well-known trademark by the people’s court or by the industry and commerce administrative department of the State Council prior to the occurrence of the trademark infringement or unfair competition against which a lawsuit was lodged, and if the defendant does not object to the fact that the said trademark is famous, the people’s court shall determine that the trademark is a famous one. If the defendant raises any objection, the plaintiff shall still bear the burden of proof to support the popularity of the trademark.”, in principle, the judicial recognition of well-known trademarks is only for the individual case, and maybe effect the similar cases judged by other courts, but the effectiveness to the trademarks’ administrative dept. is not clear.

In view of the limitations on the legal protection of registered well-known trademarks, the owner of well-known trademarks shall build a system of trademarks’ management to continuously protect its trademarks. Under the present circumstances, the system can mainly cover 2 aspects: (1) to confirm the trademarks’ registration status, apply a protective registration strategy, eg. to selectively register defensive trademarks; (2) to supervise the use of trademarks continuously. In order to warning the infringers, the owner can take advantage of administrative or judicial organs, such as trademark administrative dept., local industry and commerce administrative dept. , courts and so on, selectively fight against the infringers based on the specific circumstances of infringement.