Provisions for the Establishment and Protection of Well-known Trademarks
(Issued by the State Administration for Industry and Commerce on 17 April 2003)
Article 1 These Provisions are hereby formulated in accordance with the Trademark Law of the People's Republic of China (hereinafter referred to as the Trademark Law) and the Implementing Regulations of the Trademark Law of the People's Republic of China (hereinafter referred to as the Implementing Regulations).
Article 2 For the purpose of these Provisions, the well-known mark shall refer to a mark which is widely known to the relevant section of the public and enjoys a relatively high repute in China.
The relevant section of the public shall include the consumers concerned with a class of ods or service designated by a trademark in use, other operators who manufacture said ods or provide services and the marketing people involved or those concerned in the channel of commerce.
Article 3 The following may serve as proofs of the well-knownness of a mark:
(i) the relevant proofs as to the extent of the well-knownness of said mark to the relevant section of the public;
(ii) the relevant proofs as to the duration of the use of said mark, including those relating to the history and scope of the use and registration of said mark;
(iii) the relevant proofs as to the duration, extent and geographic area of any advertisement for said mark, including those concerning the approach to, geographic area of and media for the advertisement and promotion and the scale of the advertisement;
(iv) the relevant proofs as to the record of protection of said mark as a well-known mark, including those certifying that said mark was protected as a well-known mark in China or any other country and region; and
(v) other proofs as to the well-knownness of said mark, including the relevant proofs of the output, volume of sales, sales income, profit and tax and regions of sales of the principal ods using said mark over the last three years.
Article 4 If an interested party believes that another person's primarily examined and published mark is contrary to the provision of Article 13 of the Trademark Law, he or it may file an opposition with the Trademark Office according to the provisions of the Trademark Law and the Implementing Regulations, and submit relevant documents certifying that his or its mark is well known.
If an interested party believes that another person's registered mark is contrary to the provision of Article 13 of the Trademark Law, he or it may request, according to the provisions of the Trademark Law and the Implementing Regulations, the Trademark Review and Adjudication Board to make an adjudication to cancel said registered mark and submit relevant documents certifying that his or its mark is well known.
Article 5 In the trademark administration, an interested party who believes that another person's use of a mark falls within the circumstances provided for in Article 13 of the Trademark Law and requests for protection of his or its well-known mark may file an request in writing for prohibition of the use with the administrative department for industry and commerce above the city (prefecture) level of the place where the case arises, and submit relevant documents certifying that his or its mark is well known. Meanwhile, the case shall be reported in writing to the provincial administrative department for industry and commerce of the place where he or it has his or its domicile.
Article 6 After receiving an application for protection of a well-known mark, the administrative department for industry and commerce shall, in the trademark administration, examine the case as to whether it falls within the following circumstances as provided for in Article 13 of the Trademark Law:
(i) where another person's unauthorised use of a mark identical with or similar to an interested party's well-known mark not registered in China on an identical or similar ods is apt to create confusion; and
(ii) where another person's unauthorised use of a mark identical with or similar to an interested party's well-known mark registered in China on non-identical or dissimilar ods is apt to mislead the public and likely to prejudice the interests of the registrant of the well-known mark.
In respect of cases held to have fallen within said circumstances, the administrative department for industry and commerce of the city (prefecture or autonomous prefecture) shall, within fifteen workdays from the date of acceptance of the request of the interested party, report and send all the documents of the case to the administrative department for industry and commerce of the province (autonomous regions or municipality directly under the Central vernment) of the place where it is located, and issue the notification of acceptance of the case to the interested party; the administrative department for industry and commerce of the province (autonomous region or municipality directly under the Central vernment) shall, within fifteen workdays from the date of acceptance of the request of the interested party, report and send all the documents of the case to the Trademark Office. If the administrative department for industry and commerce of the province of the place where the interested party has his or its domicile holds that the case falls within the aforementioned circumstances, he or it may also report in writing the case to the Trademark Office.
Cases held not to fall within said circumstances shall be dealt within a timely manner according to the relevant provisions of the Trademark Law and the Implementing Regulations.
Article 7 The administrative department for industry and commerce of a province (autonomous region or municipality directly under the Central vernment) shall examine the documents of a case concerning the protection of a well-known mark reported and sent by the administrative departments for industry and commerce in the area under its jurisdiction.
Cases held to fall within the circumstance of Article 6 (i) of these Provisions shall be reported and sent to the Trademark Office within fifteen workdays from the date of receipt of the documents of the case reported and sent by the administrative department for industry and commerce in the area under its jurisdiction.
Cases held not to fall into the circumstance of Article 6 (1) of these Provisions shall be returned to the department initially accepting the case and be dealt with in a timely manner thereby according to the relevant provisions of the Trademark Law and the Implementing Regulations.
Article 8 The Trademark Office shall make establishment within six months from the date of the receipt of the relevant documents of a case, notify of the result of the establishment the administrative department for industry and commerce of the province (autonomous region or municipality directly the Central vernment) of the place where the case arises and send duplication thereof to the administrative department for industry and commerce of the province (autonomous region or municipality directly under the Central vernment) of the place where the interested party has his or its domicile.
The Trademark Office shall return the documents of the case, except those certifying the well-knownness of a mark, to the administrative department for industry and commerce of the province (autonomous region or municipality directly under the Central vernment) of the place where the case arises.
Article 9 Where a mark is not established as well known, the interested party shall not file a new application for the establishment of the same mark on the basis of the same fact and on the same ground within one year from the date on which the establishment is made.
Article 10 When establishing a well-known mark, the Trademark Office or the Trademark Review and Adjudication Board shall take a comprehensive account of each and every factor as provided for in Article 14 of the Trademark Law, but shall not take it as the prerequisite that said mark satisfies all the factors prescribed therein.
Article 11 The Trademark Office, the Trademark Review and Adjudication Board and the local administrative departments for industry and commerce shall take into account of the distinctiveness and the extent of well-knownness of said mark in the protection of well-known marks.
Article 12 When requesting for the protection of his or its mark according to Article 13 of the Trademark Law, an interested party may furnish the record concerning the protection of said mark as a well-known mark by the relevant competent department in China.
Where the scope of protection of an accepted case is substantially the same as that of a case of a mark being protected as a well-known mark and where the opposite party raises no opposition to the well-knownness of said mark or where, although he raises the opposition thereto, the opposite party cannot furnish any document certifying that said mark is not well known, the administrative department for industry and commerce accepting the case may adjudicate or deal with the case in the light of the conclusion of the record of protection.
Where an accepted case is different from the case involving a mark protected as a well-known mark in the scope of protection, or where the opposite party raises opposition to the well-knownness of said mark and furnishes documents certifying that said mark is no well known, it shall be up to the Trademark Office or the Trademark Review and Adjudication Board to re-examine the documents of the well-known mark and make an establishment.
Article 13 An interested party who believes that another person has registered his or its well-known mark as an enterprise name, which is likely to deceive or mislead the public may apply to the competent authority for the registration of enterprise names for cancellation of the registration of said enterprise name. The competent authority for the registration of enterprise names shall deal with the matter in accordance with the Provisions for the Administration of the Registration of Enterprise Names.
Article 14 The administrative departments for industry and commerce at various levels shall enhance the protection of well-known marks, and transfer, in a timely manner, cases of suspected crime of counterfeiting trademarks to the competent department concerned.
Article 15 The administrative department for industry and commerce of the Province (autonomous region or municipality directly under the Central vernment) of the place where the authority handling the case is located shall send to the Trademark Office a copy of the decision on the protection of a well-known mark.
Article 16 The administrative departments for industry and commerce at various levels shall put in place corresponding supervisory mechanism and formulate corresponding supervisory control measures to enhance the supervision and inspection of the whole process for the establishment of well-known marks.
Where any official participating in the work of establishment of well-known marks abuses his power, engages in malpractice for his gain, accepts money or material wealth from any interested party or seeks illicit interests and handles the work of establishment of well-known marks in violation of law, he or she shall be imposed disciplinary sanction according to law; where what he or she has done constitutes a crime, he or she shall be prosecuted for criminal liability.
Article 17 These Provisions shall enter into effect on 1 June 2003. The Interim Provisions for the Establishment and Administration of Well-known Trademarks issued by the State Administration for Industry and Commerce on 14 August 1996 shall be abrogated on the same date.
