On July 3, 2014, the State Administration of Industry and Commerce published a brand new version of the Recognition and Protection of Well-Known Trademarks Provisions, which set specific provisions and responsibilities for well-known trademark cases, parties involved and departments of industry and commerce. The Provisions shall be effective in 30 days, on August 3, 2014. The Recognition and Protection of Well-Known Trademarks Provisions promulgated by the State Administration for Industry and Commerce on April 17, 2003, shall be repealed simultaneously.

The newly published Provisions include 21 Articles, with the following major modifications:

First ， with the purpose of providing more effective protection for the owners of well-known trademarks, the new Provisions improve and standardize all the legal steps in well-known trademark cases.

Second, the Provisions define the requirements for well-known trademark protection in different types of cases, and list the evidential materials expected from a brand owner.

Third, the Provisions specify the respective responsibilities of brand owners as well as the officers in the Administrations of Industry and Commerce.

The new Provisions have refined the process of dealing with well-known trademarks and the criteria for recognition of the same. It has also strengthened the protection of trademarks that have already been recognized as well-known.

Recognition and Protection of Well-Known Trademarks Provisions

(Promulgated by the State Administration for Industry and Commerce on July 3, 2014, and effective as of August 3, 2014.)

Article 1 These Provisions are formulated in accordance with the PRC Trademark Law (the Trademark Law) and the PRC Trademark Law Implementing Rules (the Implementing Rules) to regulate the recognition of well-known trademarks and protect the legal rights of parties whose trademarks have been recognized as well-known.

(The legislative spirit of these Provisions is to regulate the recognition of well-known trademarks and to protect the legal rights of owners of well-known trademarks--- comment by Chang Tsi & Partners.)

Article 2 For the purposes of these Provisions, the term  “well-known trademark” refers to trademarks that are widely known to the relevant public. The “relevant public” includes consumers of the products or services offered in connection with the trademark, other business operators that produce the aforementioned products or provide the services, sellers and relevant persons involved in the distribution of such products or services.

(There is  no  change  in  the  definition  of  a  well-known  trademark---  comment  by Chang Tsi & Partners.)

Article 3 The Trademark Office and the Trademark Review and Adjudication Board will be responsible for reviewing requests for the recognition and protection of well-known trademarks during the process of trademark registration review, dispute resolution, and trademark infringement cases heard by the various Administrations of Industry and Commerce.

(This article specifies the administrative channels for recognition and protection of well-known trademarks, namely, trademark applications, oppositions, invalidations heard by the CTMO and TRAB, and infringement cases heard at the AIC--- comment by Chang Tsi & Partners.)

Article 4 Recognition of well-known trademarks follows the principle of case-by-case confirmation and passive protection.

(Trademarks are recognized as well-known on a case-by-case basis and only upon request by a trademark owner--- comment by Chang Tsi & Partners.)

Article 5 If a party raises an Opposition with the Trademark Office in accordance with Article 33 of the Trademark Law and requests that his trademark be protected in accordance with Article 13 of the Trademark Law, he may submit a written request to the Trademark Office for protection of his trademark and submit relevant materials proving that the trademark is well-known.

(This article is the legal basis for a party to apply for recognition of its well-known trademark when it raises an Opposition with the Trademark Office--- comment by Chang Tsi & Partners.)

Article 6 If a party makes a request for protection of its well-known trademark in accordance with Article 13 in Invalidation or Review of Refusal proceedings, it may submit a written request to the Trademark Review and Adjudication Board for protection of its trademark and submit relevant materials proving that the trademark is well-known.

(This article acts as the legal basis for a party to request recognition of its well-known trademark in Invalidation or Review of Refusal proceedings --- comment by Chang Tsi & Partners.)

Article 7 Violation of Trademark Law cases relevant to protection of well-known trademarks are under the jurisdiction of the municipal (district or prefectural) level or above. When a  party makes a  request to the Administration of Industry and Commerce to complain of trademark infringement and seeks protection of its well-known trademark in accordance with Article 13 of the Trademark Law, it may complain to the Administration for Industry and Commerce of the place where the case occurred at municipal (district or prefectural) level or above. The party should submit a written request for well-known trademark protection and submit relevant materials proving that the trademark is well-known.

(An aggrieved party can complain to the local Administration for Industry and Commerce to adjudicate the unauthorized use of trademarks and additionally apply for recognition of a well-known trademark--- comment by Chang Tsi & Partners.)

Article 8 The parties shall abide by the principle of Good Faith when seeking to apply for well-known trademark protection and be held responsible for the authenticity of the facts and materials submitted as proof.

(This article makes it clear that the applicant is responsible for the authenticity of the facts and the materials submitted as proof--- comment by Chang Tsi & Partners.)

Article 9 The following materials can be submitted as evidence to prove it is in accordance with the Article 14, paragraph 1 of the Trademark Law：

1. The relevant materials proving the degree to which the trademark is known among the relevant public.
2. The relevant materials proving the length of continuous use of the trademark, such as materials related to the use, history of registration and scope of the trademark. If the trademark is not registered, materials should be submitted to prove the length of continuous use is no less than five years; if it is a registered trademark, materials should be submitted to prove the history of registration is no less than three years or the length of continuous use is no less than five years.
3. The relevant materials proving the continuous length, degree and geographical scope of any publicity work for the trademark, including materials related to the form of advertising in the last three years, sales promotion activities, geographical scope, types of advertising media and amount of investment in advertising, etc.
4. The relevant materials proving the trademark has been protected as a well-known trademark in China or in other countries or regions.
5. Other evidence proving that the trademark is well-known, including materials related to sales income, market share, net profit, tax and sales regions of the main commodities that use the trademark in the recent three years.

In this Article, “three years” and “five years” refers to three or five years before the trademark is considered as an opposed mark or a canceled mark and before its application to be a well-known trademark in the process of examining violation of Trademark Law cases.

(This article sets out the evidentiary materials required to apply for recognition of a well-known trademark--- comment by Chang Tsi & Partners.)

Article 10 When a party requests for trademark protection in accordance with

Article 5 or 6 of this Provision, the Trademark Office and the Trademark Review and Adjudication Board shall handle the matter in a timely manner in accordance with the Article 35, 37 and 45 of the Trademark Law.

(This article sets out the time limit for recognition of a well-known trademark in the following applicable procedures, Opposition, Review of Refusal and Invalidation proceedings --- comment by Chang Tsi & Partners.)

Article 11 When any interested party complains of trademark infringement, the Administration of Industry and Commerce shall check related materials and decide whether to make a case according to “Rules on Procedures of Administrative Punishments for Administration of Industry and Commerce.” If a case is brought, the administration shall review the materials submitted as required by the relevant provisions: Rule 13 and 14 of the PRC Trademark Law, Rule 3 of the PRC Trademark Law Implementing Regulations and Article 9 of this Provision. After preliminary verification in conformity with the provisions, the application and copy of case materials shall be submitted to the administrative authority within thirty days. If the application fails to conform to the provisional requirements, it should also be handled in a timely manner according to “Rules on Procedures of Administrative Punishments for Administration of Industry and Commerce.”

(This Article sets out the working process for the review of claims for the recognition of well-known trademarks by local Administration of Industry and Commerce--- comment by Chang Tsi & Partners)

Article 12 The Local Administration of Industry and Commerce of the province (autonomous region or municipality directly under the central government) shall review the materials filed in support of the recognition of a well-known trademark according to Rule 13 and 14 of the PRC Trademark Law, Rule 3 of the PRC Trademark Law Implementing Regulations and Article 9 of this Provision. After verification in conformity with the provisions, the application and copy of case materials shall be submitted to the trademark office within thirty days. If the case fails to conform to the provisional requirements, it should be sent back to the original registration authority and handled in timely manner in accordance with the “Rules on Procedures of Administrative Punishments for Administration of Industry and Commerce.”

(This Article specifies the working process of the Provincial Level Administration of Industry and Commerce when reviewing claims for well-known trademark--- comment by Chang Tsi & Partners.)

Article 13 During the process of determination of a well-known trademark, the Trademark Office and Trademark Review and Adjudication Board shall provide a comprehensive account of Rule 14, Term 1 of the Trademark Law and Article 9 of this Provision (all-factor satisfaction is not necessary). During this process, the local Administration of Industry and Commerce should provide assistance.

(This Article  sets out the  standard for evidence  review and related material vetting standard --- comment by Chang Tsi & Partners.)

Article 14 After the Trademark Office of province (autonomous region, municipality directly under the central government) finishes reviewing the related materials and a well-known trademark is recognized, the relevant Administration of Industry and Commerce should be informed. The relevant municipal level Administration of Industry and Commerce shall deal with the decision and report to its superior authority within sixty days. The provincial level Administration of Industry and Commerce should report the duplicate of the decision on administrative sanction to the Trademark Office.

(This Article sets out the process to be followed when a mark has been recognized as a well-known trademark--- comment by Chang Tsi & Partners.)

Article 15 All levels of Administration of Industry and Commerce should enhance the protection of well-known trademarks and safeguard the legitimate rights and interests of litigants and consumers. Suspected trademark violations should be transferred to the judicial office in time.

(This Article  reinforces  the  need  for  protection  of  well-known  trademarks--- comment by Chang Tsi & Partners.)

Article 16 During the process of trademark registration review, dispute and settlement, or investigation of a trademark violation by Administration of Industry and Commerce, if any interested party applies for well-known trademark protection, the record of well-known trademark recognition can be provided.

If an applicant’s trademark has previously been recognized as a well-known trademark in a similar range or catalogue, and there is no other objection or inadequate objection to the trademark, the Trademark Office and Trademark Review and Adjudication Board should approve the application after reviewing the evidence.

(This Article shows protection for well-known trademark owner-- comment by Chang Tsi & Partners.)

Article 17 If any interested party obtained well-known trademark protection by offering forged evidence or due to fraud and deception, the well-known trademark will  be  reversed  and  the  local  Administration  of  Industry  and  Commerce  of  the

province（autonomous region or municipality directly under the central government）shall be notified.

(This Article deals with fraud and deception in the application of well-known trademarks--- comment by Chang Tsi & Partners.)

Article 18 The local Administration of Industry and Commerce which violated Article 11 and 12; failed in their verification responsibilities according to Article 13, Term 2; or failed to respond to a trademark infringement case in the time range according to Article14 Term 2, will be informed by a superior administration and be ordered to make a rectification.

(This Article deals with malpractice within the Administration of Industry and Commerce--- comment by Chang Tsi & Partners.)

Article 19 All levels of Administrations of Industry and Commerce shall establish appropriate supervisory mechanisms.

Article 20 Any relevant personnel participating in the work of recognition of well-known trademarks abuses his power, practices graft, seeks improper gains or handles matters relevant to the recognition of well-known trademarks in violation of the law shall be subject to administrative penalty in accordance with the law. Where a criminal offence has been committed, criminal liability shall be pursued in accordance with the law.

(This Article  specifies  disciplinary  measures  for official  personnel  engaged  in criminal activity or malfeasance--- comment by Chang Tsi & Partners.)

Article 21 These Provisions shall be effective in thirty days. The Recognition and Protection of Well-known Trademarks Provisions promulgated by the State Administration for Industry and Commerce on April 17, 2003, shall be repealed simultaneously.