RULES ON RECOGNITION AND PROTECTION OF FAMOUS MARKS

07/01/2003

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Article 13 of the PRC Trademark Law provides that if an application is made to register a mark that is a reproduction, imitation or translation of the famous mark of another that is not registered in the PRC, designating identical or similar goods to those on which the famous mark is used, such that confusion is likely, registration shall not be granted and use of the mark concerned prohibited. The same article also forbids the registration and use of a mark that is a reproduc-tion, imitation or translation of another's famous mark that is registered in the PRC, for use on non-identical or non-similar goods, where such use would mislead the public and might harm the interests of the registrant of the famous mark. To further define criteria for identifying famous marks, on 17 April 2003 the PRC State Admini-stration for Industry and Commerce promulgated its Rules on Recognition and Protection of Fa-mous Trademarks, which came into effect on 1 June 2003.

Article 2 of the rules defines a famous mark as a trademark that is known to relevant portions of the mainland Chinese public and enjoys a rela-tively good reputation. "Relevant portions of the public" include consumers relevant to any cate-gory of goods or services on which the trademark is used, businesses involved in the production of such goods or the provision of such services, and sellers and related personnel involved in distri-bution channels.

Under Article 3 of the rules, the following ma-terials can be used as evidence that a mark is famous:

Materials evidencing the awareness of the trademark among relevant members of the public;

Materials evidencing the period of continuous use of the trademark, including the history and scope of its registration and use;

Materials evidencing the duration, extent and geographical scope of any efforts to publicize the trademark, including the methods, geo-graphical area, and types of media used for advertising, publicity, and marketing activities, and the quantity of advertisements dissemi-nated;

Materials evidencing a record of the mark's receiving protection as a famous mark, whether in PRC or in other countries or terri-tories; and

Other materials evidencing that the mark is a famous mark, such as materials showing the production and sales quantities, sales revenue, profits, tax, and sales regions of the main products bearing the mark, for the most recent three years.

An interested party who believes that a trade-mark that has been initially allowed and pub-lished, or that has been registered, violates Arti-cle 13 of the Trademark Law, can file an oppo-sition action with the Trademark Office, or apply to the Trademark Review and Adjudication Board for invalidation of the other person's trademark registration, submitting materials evidencing that its own trademark is a famous mark. If the owner of a trademark discovers that another person's use of a trademark violates Ar-ticle 13 of the Trademark Law, it may also file a complaint with the local administration for in-dustry and commerce, submitting materials evi-dencing that its mark is a famous mark, and pe-titioning the administration to stop the violation.