1. What is a well-known trademark?

Under the Rules on the Recognition and Protection of Well-Known Trademarks, a well-known trademark is a mark widely known to the relevant public and enjoying a high reputation in China. The relevant public includes consumers of the goods or services bearing the mark, other operators producing those goods or providing those services, and sellers and other participants in the distribution channels.

2. Routes to recognition

Recognition may be administrative or judicial.

2.1 Administrative recognition

There are three administrative routes, in each of which the party submits evidence that its mark is well known.

(1) Opposition before the China Trademark Office (CTMO). A party that considers another person’s preliminarily approved and published trademark to contravene Article 13 of the Trademark Law may file an opposition and submit evidence of the well-known status of its mark.

(2) Dispute proceedings before the Trademark Review and Adjudication Board (TRAB). A party that considers another person’s registered trademark to contravene Article 13 may request cancellation of that registration and submit evidence that its own mark is well known.

(3) Trademark administration proceedings. A party that considers another person’s use of a mark to fall within Article 13 may submit a written request to the relevant administration for industry and commerce to prohibit that use, together with evidence supporting the well-known status of its mark.

Article 13 provides that a mark applied for on identical or similar goods must not be registered, and its use must be prohibited, if it reproduces, imitates or translates another party’s well-known mark that is unregistered in China and is likely to cause confusion.

A mark applied for on non-identical or dissimilar goods must likewise not be registered, and its use must be prohibited, if it reproduces, imitates or translates another party’s well-known mark registered in China, misleads the public and is likely to damage the interests of the well-known mark’s registrant.

2.2 Judicial recognition

Trademark owners may ask Chinese courts to recognise the well-known status of their marks in infringement proceedings involving Article 13, or in trademark disputes involving trade names or domain names.

3. Factors considered

The following factors are considered in the circumstances of each case. A mark need not satisfy every factor:

(1) The degree of awareness of the mark among the relevant public.

(2) The duration of its use.

(3) The duration, extent and geographical reach of publicity for the mark.

(4) Records of protection of the mark as a well-known trademark.

(5) Other factors demonstrating that it is well known.

4. Evidence of well-known status

(1) Contracts, invoices, delivery documents, bank payment records and import/export documents for the goods or services bearing the mark.

(2) Materials showing the geographical scope of sales, distribution network, sales channels and sales methods.

(3) Radio, film, television, newspaper, magazine, internet and outdoor advertising, media commentary and other promotional materials relating to the mark.

(4) Materials concerning exhibitions and trade fairs in which the goods or services bearing the mark have participated.

(5) Materials showing first use and continuous use of the mark.

(6) Trademark registration certificates from China and other countries or regions.

(7) Records of administrative or judicial protection of the mark as well known, and information about infringement or counterfeiting.

(8) Reports by qualified valuation agencies assessing the mark as an intangible asset.

(9) Statistics and rankings on sales, profits and taxes, output and advertising, issued by authoritative organisations or industry associations with public credibility.

(10) Awards received in connection with the mark.

(11) Other materials capable of establishing the mark’s reputation.

In principle, this evidence should predate the filing date of the disputed mark.