(Issued
by the State Administration for Industry and Commerce On April 17, 2003) Article
1 These provisions are 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 for 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,a
well-known mark refers to a mark that is widely known to the relevant
sectors of the public and enjoys a relatively high reputation in China. Relevant
sectors of the public shall include consumers of the type of goods and /or
services to which the mark applies, operators who manufacture the said
goods or provide the said services, and sellers and other persons involved
in the channels of distribution of the type of goods and/or services to
which the mark applies. Article
3 The following may serve as evidences to
prove that a mark is well-know: (1) documents concerning the degree of knowledge or recognition of the mark in the relevant sector of the public; (2)
documents concerning the duration of the use of the mark, including those
related to the history and scope of the use and the registration of the
mark; (3)
documents concerning the duration, extent and geographical area of any
promotion of the mark, including the approach to, geographic area of , the
type of media for and the amount of advertisements for the promotion of
the mark; (4)
documents concerning the record of successful enforcement of rights in the
mark, including the relevant documents certifying the mark in question was
once protected as a well-known mark in China or any other country/region; (5)
other evidences certifying that the mark is well-known, including, in the
past 3 years, the outputs, sales volumes, sales incomes, profits and taxes
and sales regions etc. of the principal goods to which the mark applies. Article
4 Where any interested party believes that another party’s
preliminarily examined and published mark violates the provision of
Article 13 of the Trademark Law, he or it may, according to the provisions
of the Trademark Law and the Implementing Regulations, file an opposition
with the Trademark Office and submit relevant documents certifying that
his or its mark is well known. Where
any interested party believes that another party’s registered mark
violates the provision of Article 13 of the Trademark Law, he or it may,
according to the provisions of the Trademark Law and the Implementing
regulations, request the Trademark Review and Adjudication Board to cancel
the registered mark in question and submit relevant documents certifying
that his or its mark is well known. Article
5 In the process of trademark
administration, where any interested party believes that another party’s
use of a mark falls within the circumstances provided for in Article 13 of
the Trademark Law and requests for the protection of his or its well-known
mark, he or it may file a request in writing for the prohibition of the
alleged use with the administrative authorities for industry and commerce
at or above the city (prefecture or autonomous prefecture) level of the
place where the case arises, and submit relevant documents. Meanwhile, the
interested party shall send a copy to the administrative authority for
industry and commerce of the province where he or it has domicile. Article
6 In the process of trademark
administration, the administrative authority for industry and commerce
shall, on receiving an application for the protection of a well-known
mark, examine the case as to whether it falls within the following
circumstances under Article 13 of the Trademark Law: (1)
where another person’s unauthorized use of a mark that is identical with
or similar to an interested party’s well-known mark not registered in
China on identical or similar goods is liable to create confusion; (2)
where another person’s unauthorized use of a mark that is identical with
or similar to an interested party’s well-known mark registered in China
on non-identical or dissimilar goods is liable to mislead the public, and
the interests of the registrant of the well-known mark are likely to be
damaged by such use; In
respect of cases held to have fallen within the above-mentioned
circumstances, the city (autonomous prefecture or autonomous prefecture)
administrative authority for industry and commerce shall, within 15
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
authority for industry and commerce of the province (autonomous region or
municipality directly under the Central Government) where it is located,
and issue a notification of acceptance of the case to the interested
party. The provincial (autonomous region or municipality directly under
the Central Government) administrative authority for industry and commerce
shall, within 15 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 authority for industry and
commerce of the province where the interested party has his or its
domicile holds that the case falls within the above-mentioned
circumstances, it may also report in writing the case to the Trademark
Office. Cases
held not to fall within the said circumstances shall be dealt with timely
according to the relevant provisions of the Trademark Law and its
Implementing Regulations. Article
7 The administrative authority for industry and commerce of the
province (autonomous region or municipality directly under the Central
Government) shall examine the documents of cases concerning the protection
of well-known marks reported and sent by city (prefecture or autonomous
prefecture) administrative authorities for industry and commerce within
its administrative region. Where
a case is held to fall within the circumstance of paragraph 1 of Article 6
under these provisions, the provincial (autonomous region or municipality
directly under the Central Government) administrative authority for
industry and commerce shall report and send it to the Trademark Office
within 15 workdays from the date of its receipt of the case documents from
the city (prefecture or autonomous prefecture) administrative authority
for industry and commerce within its administrative region. Where
a case is held not to fall within the circumstance of paragraph 1 of
Article 6 under these provisions, the provincial (autonomous region or
municipality directly under the Central Government) administrative
authority for industry and commerce shall return the case to the authority
that initially accepts it and the latter shall deal with the case timely
according to the relevant provisions of the Trademark Law and its
Implementing Regulations. Article
8 The Trademark Office shall make determination within 6 months from
the date of the receipt of the relevant documents of a case, notify the
result of the determination to the provincial (autonomous region or
municipality directly under the Central Government) administrative
authority for industry and commerce of the place where the case arises and
send duplication thereof to the provincial (autonomous region or
municipality directly under the Central Government) administrative
authority for industry and commerce 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 mark is well-known, to the administrative authority for
industry and commerce of the province (autonomous region or municipality
directly under the Central Government) where the case arise. Article
9 Where a mark is not determined as well-known, the interested party
shall not file a new application for the determination of the same mark on
the basis of the same facts and grounds within one year from the date on
which the determination is made. Article
10 When determining a well-known mark, the Trademark Office or the
Trademark Adjudication Board shall comprehensively consider each and every
factor under Article 14 of the Trademark Law, but it shall not be the
prerequisite that the mark shall satisfy all the factors prescribed
therein. Article
11 In the protection of well-known marks, the Trademark Office, the
Trademark Review and Adjudication Board and the local administrative
authorities for industry and commerce shall take into account of the
mark’s distinctiveness and the extent of its being well-known. Article
12 When requesting for the protection of his or its mark according to
Article 13 under the Trademark Law, an interested party may furnish the
record of the mark once being protected as a well-known one by the
relevant competent authority in China. Where
the scope of protection of an accepted case is substantially the same as
that of a mark being protected as a well-known mark and where the opposite
party raises no opposition to the said mark’s being well-known , and
where, although he raises the opposition thereto, the opposite party
cannot furnish any document certifying that the said mark is not
well-known, the administrative authority for industry and commerce
accepting the case may adjudicate or deal with the case in the light of
the conclusion of the protection record. Where
the scope of protection of an accepted case is different from that of a
mark being protected,or where the opposite party raises opposition to
the said mark’s being well-known , and he furnishes documents certifying
that the said mark is not well-known, the Trademark Office or the
Trademark Review and Adjudication Board shall re-examine the documents of
the well-known mark in question and make a determination. Article
13 Where an interested party believes that another party has
registered his or its well-known mark as an enterprise name, which is
likely to deceive or mislead the public, he or it may apply to the
competent authority for the registration of enterprise names for the
cancellation of the registration of the enterprise name in question. The
competent authority for the registration of enterprise names shall deal
with the case in accordance with the Provisions for the Administration of
the Registration of Enterprise Names. Article
14 The administrative authority for industry and commerce at various
levels shall enhance the protection of well-known marks, and timely
transfer cases of suspected crime of counterfeiting trademarks to the
competent authority concerned. Article
15 The administrative authority for industry and commerce of the
province (autonomous region or municipality directly under the Central
Government) of the place where the authority handling the case is located
shall send the Trademark Office a copy of the decision on the protection
of a well-known mark. Article
16 The administrative authority for industry and commerce at various
levels shall establish corresponding supervisory mechanisms and formulate
corresponding supervisory control measures to enhance the supervision and
inspection of the whole process for the determination of well-known marks. Where
any member of staff who is involved in the determination of well-known
marks abuses his power, practices fraud for his personal gains, seeks
illicit interests or handles, in violation of law, matters concerning the
determination of well-known marks, he or she shall be subject to
administrative disciplinary measures according to law. Where the case is
so serious as to constitute a crime, the person involved shall be
prosecuted, according to law, for his or her criminal liabilities. Article
17 These provisions shall enter into force on June1, 2003. The
Provisional Regulations Concerning the Determination and Administration of
well-know Marks issued by the State Administration for Industry and
Commerce on August 14 ,1996, shall be abrogated on the same date. |