The Consultation Paper for the Revision of Provisions for the Determination and Protection of Well-known Trademarks ("Paper”)has been announced, and is Likely to be released in June, 2014

State Administration for Industry and Commerce announced the Paper on April 14th, 2014, which made adjustments to the original provision in 2003 (“Original Provision”). The main adjustments are as follows:

The definition of well-known trademarks.

Original Provision defines well-known trademark as ‘a trademark widely recognized by the public and having a high reputation in China’; yet Paper deletes ‘having a high reputation in China’, it also makes it no different to the registered or unregistered trademarks, as well as adjusts the ‘widely recognized by the public’ to ‘known well by the public’.

Paper aims at keeping consistent with the revised Trademark Law, thus no substantial change would be made to the recognition of well-known trademark.

The identified conditions for well-known trademark.

The setting that unregistered trademarks should be in continuous use of 5 years; and registered trademarks should be in continuous use of 3 years.

Article 10 of Paper makes explicit demand on evidence material stipulated in article 14.1 ‘how well is the trademark known by the public’, which says: ‘….. If the trademark is unregistered, evidence should be provided that it has been in continuous use for no less than 5 years. If registered, evidence should be provided that it has been registered for more than 3 years or it has been in continuous use for no less than 5 years. ….’

The publicity work has continued for more than 3 years.

Article 10 of Paper requires materials of ‘publicity work method, territorial scope, types of advertising media, and advertisements supply, etc. of the recent 3 years.’

Materials prove it’s protected as well-known trademark in other countries or regions may not be enrolled as judgment factors anymore.

Right after the item in Original Provision that ‘materials to prove the trademark has been protected as well-known trademark’, it stipulates that ‘it includes materials that can prove the trademark has been protected as well-known trademark in China or other countries and regions.’ Paper deletes the latter item, which renders disadvantage to trademarks which are famous abroad yet not well-known domestically.

Of course, according to article 14 of Paper, the above-mentioned elements should be taken into ‘overall consideration’, and ‘not regard satisfaction of all elements as premise.’