Well-known trademarks enjoy protection under Chinese law. This protection is the closest China comes to protecting unregistered trademarks. However, the circumstances under which such protection is afforded are limited, given that the standard for a trademark being considered well-known is exceedingly high.
To illustrate just how stringent the standard can be, consider a situation I encountered a few years ago, while representing one of the English Premier League’s “big six” teams. When the team faced some issues registering one of its trademarks in China, our China lawyers argued that the trademarks were well-known. The argument, however, was rejected, even though the Premier League was undoubtedly very popular in China at the time. (To be fair, with the popularity of the Premier League generally, and the team in question in particular, increasing every year, it is possible things would go differently these days.)
The draft revision to China’s Trademark Law, which we have discussed here, here, and here, would bring some important changes to the well-known trademark framework. New Article 10 under the draft revision would extend the list of factors for determining whether a trademark is well-known or not to include “domestic and foreign applications and registrations of the trademark” (该商标在国内和国外的申请及注册情况).
Trademark rights are national and do not cross borders
As we have often pointed out, trademark rights are national and do not cross borders. A brand’s trademark rights in one country do not afford it protection in any other country. This is a reality that brands must be mindful of when crafting brand and intellectual property protection strategies. In an increasingly globalized world, however, knowledge of a brand in one country can certainly be influenced by use of that brand in another country. As such, it makes sense for foreign trademark rights to enter into the mix, at least to some extent, when determining if a trademark is well-known.
Factors China uses in determining whether a trademark is well-known or not
The list of factors China uses in determining whether a trademark is well-known or not now also includes “value of the trademark” (该商标的价值). In most cases, value goes hand in hand with the other factors, such as reputation. One can, however, imagine scenarios in which a trademark is highly valuable, despite sparing use. Take for example a luxury brand not interested in gaining mass market appeal, confident word-of-mouth within its intended clientele will be enough to reach sales targets. The trademark could be of great value, despite being known by few consumers. Though this may appear inconsistent with well-known status, even in its current version the Trademark Law clarifies that a well-known trademark is one well-known by the “relevant public” (相关公众). In the case of a luxury brand, the relevant public may be a tiny, affluent percentage of China’s population.
Though the devil will be in the details of the new trademark law’s application, the presence of additional factors to be considered may just be enough to give some brands the necessary edge for securing well-known trademark status. This will be worth keeping in mind by brands looking to oppose trademark applications by other parties or invalidate existing trademark registrations in the future. Ideally, though, a brand will not even have to consider well-known trademark protection, because it will have followed that most basic China advice: Register your trademarks!