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Protection of trademarks against registered identical or similar trademarks under Chinese trademark law

Seminararbeit 2014 26 Seiten

Jura - Europarecht, Völkerrecht, Internationales Privatrecht

Leseprobe

Table of Contents

A. What is a well-known trademark in China
I. Introduction to well-known trademarks
II. Overview of Chinese well-known trademark protection
1. Trademark rights based on registration
2. Recognition case-by-case
a) Shift from active certification to passive certification
b) Time limits on well-known trademark certification
c) Dual-track system
d) Presumption and proof of well-known status
e) Determining what trademark is well-known
aa) Requirement of high reputation
bb) Well-known outside of Mainland China
f) Local trademark offices
3. Bad faith
a) Art. 31 alt. 2 of the Trademark Law of 2001
b) Opposition to the CTMO
c) Deletion upon request to the TRAB
d) Conditions of well-known status or agent application?
e) Expanded Protection under art. 44 new Trademark Law

B. Conflicts with Prior Rights
I. Registered Trademarks as prior rights
1. Identical or similar products or services
2. Dissimilar products or services
II. Registrations obtained prior to the new Trademark Law

C. Thoughts on the Wanglaoji (王老吉)-Case

D. Conclusion

A. What is a well-known trademark in China

I. Introduction to well-known trademarks

According to the Art 6bis I of1 2 the Paris Convention3 and Art. 16 II, III TRIPS Agreement4, the contractor States are bound to provide special protection for those trademarks that are deemed well-known. The PRC is a contractor State to both agreements and therefore generally has an obligation to treat well-known trademarks with special regard While regular trademarks inhibit third parties from registering identical or similar trademarks for those goods identical or similar to those of the older rights holder5, well-known trademarks shall also enjoy the protection against registrations of identical or similar trademarks for dissimilar goods6.

The latest amendment of the Chinese trademark law7 and the entailed revision of the Implementing Regulations8 thereof are strengthening protection of trademarks against bad faith regis- tration by third parties and also altering the treatment of well- known trademarks to some extent. This raises questions as to how the well-known status can be achieved in China and what advantages a well-known trademark owner has.

The determination of whether a trademark qualifies for being well-known, the treatment of contradictions with prior rights and bad faith registrations are discussed in this paper.

II. Overview of Chinese well-known trademark protection

Soon after the reform-era began, the Chinese legislator started de- veloping substantive intellectual property laws influenced by interna- tional standards9. Consequently, the Trademark Law of the People’s Republic of China, whose first version contained no provisions on protection of well-known trademarks, was adopted by the Standing Committee of the fifth National People’s Congress on August 23rd 1982. When the PRC joined the Paris Convention in 1985, well- known trademarks were still not protected by national law.

In 1993 the Trademark Law itself was amended for the first time10, and shortly after, Implementing Regulations for the Trademark Law have been issued11, amongst other issues now providing protection of well-known trademarks against bad faith registrations by third parties12, but still lacking further explanation on how to determine whether or not a trademark was well-known.

In 1996, the Provisional Provisions on the Recognition and Admin- istration of Well-Known Trademarks13 came into effect, for the first time setting a general procedure on how to apply for the recognition and determination of a well-known trademark14 in their articles 4-8. These Provisional Provisions were slightly modified in 200015, one year before the Trademark law was amended for the second time16, with special regard to meet the requirements for the PRCs to enter the WTO17. Five years after the PRC had joined18 TRIPS, the art. 13 of the 2001 Trademark law set out to protect well-known trademarks under Chinese substantive law as stipulated by art. 16 II, III TRIPS.

The far-reaching amendments in the 2001 Trademark Law, motivated by the goal to comply with WTO regulations19, entailed the promulgation of modified Implementing Regulations20 for the Trademark Law. While the subject matter trademark law of the PRC is very similar to that of similar countries such as Germany, there are some legal aspects that have caught the attention of scholars in China and abroad.

1. Trademark rights based on registration

As in many civil law countries, trademark rights in the PRC can generally arise through registration with the CTMO only21. As a very narrow exception, art. 13 I of the 2001 Trademark law sets out to protect well-known trademarks against third-party- applications for identical or similar trademarks for the same goods, even if the well-known trademark is not registered in the PRC. This is part of the special protection for well-known trademarks. Art. 13 II Trademark Law of 2001 expands the scope of protec- tion to dissimilar goods if the well-known trademarks is regis- tered, inhibiting the registration of identical or similar trade- marks in even in classes22 that are not originally covered by the well-known trademark.

2. Recognition case-by-case

In the 1990’s, China well-known trademark status was awarded as an honor or benefit that was granted by the competent public authority, on the national level by the SAIC. When the Provi- sional Provisions of 1996 put certification and management of well-known trademark status on display for legislation, they initially established a mode of “active certification and batch publication23 ”, empowering the CTMO to be the only compe- tent authority24 for well-known trademark protection, “active” meaning that the CTMO could determine and certify well- known trademarks based on applications by the trademark holder25, but was not limited to conduct determinations based on applications by interested parties. In addition, those trade- marks that had acquired well-known status within 3 years be- fore the introduction of the Provisional Provisions of 1996, most of them through SAIC certification would not have to be reexamined by the CTMO26.

Still today, especially when looking at statutes at municipal or city level, there are still various systems of cash incentives for enterprises holding well-known trademarks in China27.

a) Shift from active certification to passive certification

A finalization of the Provisional Provisions of 1996 has been issued by the SAIC in 200328. These Determination Provisions of 2003 contained further information on the registration pro- cess of a well-known trademark and provided explicit protec- tion for well-known trademarks. Its art. 5 provided for the TRAB to be the second competent authority to handle well- known trademark recognition, but also clearly states that the request to determine the well-known status of a trademark only if there is an actual dispute. The well-known trademark recog- nition and certification has shifted from an “active certification” to a “passive certification and individual protection”29.

The 2003 Determination and Protection Provisions were further specified in 200930. The new provisions established a well- known trademark recognition committee within the TRAB31. When registering a trademark, it may not be a copy, imitation or translation of a well-known trademark. If it has passed the evaluation by the CTMO, third parties, for example a holder of a trademark that he thinks is well-known in China, may file an opposition, resulting in a review by the TRAB32. A TRAB de- cision may later be challenged before the First Intermediate People’s Court of Beijing33.

Art. 4 of the Determination Provisions of 2003 clarifies that an application for a well-known trademark is no independent pro- cedure but shall only be filed with the CTMO or the Trademark Review and Adjudication Board34 if the trademark holder has an actual case where his possibly well-known trademark may have been infringed upon pursuant to art. 13 Trademark Law of 2001. While the CTMO is now to be involved when trying to prevent the registration of another trademark, the TRAB needs to be filed with when petitioning for the cancellation of another trademark that has already been registered. Courts may also determine whether a trademark shall be deemed well-known within the limits of a single case35.

The vast amount of mainly domestic trademarks in china that have enjoyed well-known status before 2009 and the Supreme People’s Courts Interpretation on well-known trademarks in the same year may said to have caused judges and administra- tion officers to be more cautious about recognizing trademarks as well-known. The courts’, the CTMO’s and the TRAB’s have been especially reluctant in awarding the well-known status to foreign trademarks and there are no signs that this will change in the foreseeable future36. Also, the subject matter jurisdiction in cases where a trademark may be recognized as well-known has been limited to the intermediate people’s courts in the capi- tals of the provinces37. This expresses an effort to entrust more competent courts with the well-known trademarks cases and may also be a reaction to the more random certification of wellknown trademarks before 2009.

b) Time limits on well-known trademark certification

On one hand, the special protection for well-known trademarks under the Paris Convention and TRIPS is a measure to prevent the exploitation of trademarks, whose tremendous fame is not questioned and whose use by third parties would lead to mas- sive confusion within the commercial areas concerned38.

On the other hand, trademarks may gain or lose fame over time. While some might argue that a trademark, once it has acquired the amount of fame required to being recognized as well- known will not be forgotten easily, it is easy to imagine that a trademark disappears from a market and will therefore, over the course of a couple of years, not fulfill the high standards of a well-known trademark anymore even if it was considered well- known a couple of years earlier.

While there are very famous trademarks who will most likely be well-known to most of Chinas population, there are a lot of trademarks whose fame is limited to the relevant public39, meaning the commercial area where the trademark is used. Still These trademarks may qualify for well-known trademark pro- tection even though they are not familiar to those parts of the population that are not concerned with the specific economic sector, because these people therefore are not the relevant pub- lic.

[...]


1 Art. 6bis of the Paris Convention for the Protection of Industrial Property (Paris Convention) and Art. 16 II, III of the Agreement on trade-related aspects of Intellectual Property Rights (TRIPS),

2 China Trademark Office (henceforth: CTMO), organized within the China State Administration for Industry and Com-merce (henceforth: SAIC).

3 Paris Convention for the Protection of Industrial Property, of March 20, 1883,as last amended on September 28, 1979 (henceforth: Paris Convention)

4 Agreement on trade-related aspects of Intellectual Property Rights, WTO, April 15th 1994 (henceforth: TRIPS)

5 Art. 28 中 华 人 民 共 和 国 商 标 法 (Zhonghuarenmingongheguoshangbiaofa), as amended for the second time in accordance with the Decision on Revising the Trademark Law of the People's Republic of China adopted at the 24th Meeting of the Standing Committee of the Ninth National People's Congress on October 27, 2001, (henceforth: Trademark Law of 2001)

6 Art. 16 III TRIPS, Art. 13 II Trademark law of 2001.

7 中华人民共和国商标法 (Zhonghuarenmingongheguoshangbiaofa), as amended for the third time according to the Decision of the Standing Committee of the National People's Congress on Revising the Trademark Law of the People's Republic of China on August 30th, 2013 (henceforth: new Trademark Law).

8 中华人民共和国商标法实施条例 (Zhonghuarenmingongheguoshangbiaofashishitiaoli), re-vised by Order No. 651 of the State Council of the People's Republic of China on April 29th, 2014, (henceforth: new Implementing Regulations).

9 Yang, Technovation 2005, 545 (549).

10 中华人民共和国商标法 (Zhonghuarenmingongheguoshangbiaofa), as amended for the first time in accordance with the Decision on Revising the Trademark Law of the People's Republic of China adopted at the 30th Meeting of the Standing Commit- tee of the Seventh National People's Congress on February 22nd, 1993, (henceforth: Trademark Law of 1993).

11 中 华 人 民 共 和 国 商 标 法 实 施 细 则 (Zhonghuarenmingongheguoshangbiaofashishixize), as promulgated by the State Council on July 15th 1993(Implementing Regulations of 1993).

12 Rule 25 I S. 1 Nr. 2 Implementing Regulations of 1992.

13 henceforth: Provisional Provisions of 1996.

14 Guo, GRUR Int. 1997, 25 (27 ff.).

15 Blasek, IIC 2005, 279 (281).

16 henceforth: Trademark Law of 2001.

17 Blasek, IIC 2005, 279 (282).

18 Kossof, JohnMarshallRevIP 2013, 224 (229).

19 Blasek, IIC 2005, 279 (281).

20 中 华 人 民 共 和 国 商 标 法 实 施 条 例 (Zhonghuarenmingongheguoshangbiaofashishitiaoli), promulgated by Decree No.358 of the State Council of the People’s Republic of China on August 3rd, 2002, and effective as of September 15th, 2002, (henceforth: Implementing Regulations of 2002).

21 different e.g. Germany, where trademark rights can also be acquired through use of a trademark, § 12 MarkenG of Germany.

22 Classes as according to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.

23 Wang, China Intellectual Property Magazine, June 2010, 9 (10).

24 Art. 3 II Provisional Provisions of 1996.

25 Art. 4 II Provisional Provisions of 1996.

26 Art. 4 III Provisional Provisions of 1996.

27 Kossof, JohnMarshallRevIP 2013, 224 (245).

28 驰名商标认定和保护规定 (chimingshangbiaorendinghebaohuguiding), issued by the SAIC on April 17, 2003, (henceforth: Determination Provisions of 2003)

29 Wang, China Intellectual Property Magazine, June 2010, 9 (11).

30 驰名商标认定工作细则 (chimingshangbiaorendinggongzuoxize), promulgated by SAIC on April 21, 2009 and effective as of the same day (henceforth: Detailed Rules for Recognition of 2009).

31 Art. 5 Detailed Rules for Recognition of 2009.

32 Kossof, JohnMarshallRevIP 2013, 224 (230).

33 Kossof, JohnMarshallRevIP 2013, 224 (236).

34 henceforth: TRAB.

35 Blasek, IIC 2005, 279 (282).

36 Simone, China Law and Practice April 2014, p.2.

37 Feng, IIC 2013, 815 (828).

38 Further reading on overlaps of the similarity in Trademark law and likelyhood of confusion in of Unfair Competition Law, see: Goldmann, GRUR 2012, 857-864.

39 Art. 13 I, 14 I No. 1 new Trademark law.

Details

Seiten
26
Jahr
2014
ISBN (eBook)
9783656937814
ISBN (Buch)
9783656937821
Dateigröße
827 KB
Sprache
Englisch
Katalognummer
v295814
Institution / Hochschule
China University of Political Science and Law – Chinese Law
Note
90
Schlagworte
Markenrecht China Gewerblicher Rechtsschutz Intellectual Property Trademark Law well-known trademark Bekanntheitsmarke bad faith bösgläubig Marke Markenanmeldung

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Titel: Protection of trademarks against registered identical or similar trademarks under Chinese trademark law