Copyright Law Blog

Juristic determination of Well-known Trademark

July 11th, 2009 at 06:42pm Under trademark law

Interpretations of the Supreme People’s Court on Several Issues Concerning the Application of Law to the Trial of Cases of Civil Disputes over the Protection of Well-known Trademark began to implement since May 1st, 2009. The judicial interpretations will have profound effects on protecting the well-known trademark as well as the healthy development of brand strategy. Since 2001, well-known trademarks can be protected through both administrative proceedings and judicial proceedings. However, due to some influences from economic factors, social environment and concepts, the original idea of well-known trademark has been distorted1, some operators even take advantage of this justice system, seeking inappropriate commercial purposes. The juristic determination of well-known trademark could be completed in the trial unit over Intermediate People’s Court without any quota restriction; what’s more, well-known trademark could take into effect through court proceedings and judgment, as long as there is an actual infringement case. Thus, the juristic determination has been regarded as a relatively simpler and faster way than administrative recognizing. Therefore, China’s well-known trademarks increase sharply in recent years, and most of them are authorized through judicial means. Proceeding from the national conditions, by improving the mechanism in judicial protection on trademarks, government should not only strengthen the protection on the trademarks which comply with the statutory conditions according to the law, but also prevent operators applying recognized trademarks as a tool for pursuing honorary title improperly. That the scope of juristic determination of well-known trademarks is ambiguity, standard and scale of recognizing or protecting scope is not uniform is one of the main factors lead to the improper meanings or purposes of well-known trademarks. Based on this, from the concept of well-known trademarks, applicable scope, determining factors, burden of proof and protection requirements, this judicial interpretation has adjusted the extrusive issues reflected from the practical juristic determination of well-known trademarks. This article aims to introduce the changes and adjustments in the applicable scope of the juristic determination in this judicial interpretation.

This judicial interpretation limits the applicable scope of the juristic determination of well-know trademarks. In judicial practice, only when well-known trademarks are sued of infringement or unfair competition constitutes legal essential, that is to say, whether the trademark is the well-known one is the premise and basis to recognize trademark infringement or constitutes unfair behavior, can it be necessary to recognize well-known trademark. Meanwhile, in order to prevent operators from pursuing other purposes beyond legal protection improperly by acquiring judicial cognizance, the judicial practice should follow the principles on-demand. The recognizance of well-known trademarks must be necessary for the adjudication of cases.  In view of this, in order to comply with the demanded principles and norms and to unify the scope of judicial recognizance, in case of frequent occurrences of such negative phenomena above-mentioned, judicial interpretation should utilize positive enumerated list along with negative one, and limit the applicable scope of juristic determination of well-known trademarks from various angles, excluding some trademarks out of the scope of judicial recognizance. Article 2 of the judicial interpretation 2 stipulates the type of civil disputes on recognizing well-known trademarks, and article 3 stipulates the situations need not recognizance3.  That is to say, only in cases involving well-known registered trademark on cross class protection, request for retraining hurts to unregistered well-known trademarks, as well as trademark infringement due to the conflict between the name of company and well-known trademarks and improper competitions, can well-known trademarks be recognized. Judicial recognizance of well-known trademark needs legal essential recognizance for the protection for the rights of well-known trademarks, which belongs to the scope of recognized fact, therefore, in order to minimize the use of well-known trademark recognizance for pursuing improper interests, article 13 of judicial interpretation regulates: “In civil disputes concerning protection for well-known trademarks, recognizance from The People’s Court will not be written into the judgment , only regarded as case facts and judicatory foundations. For cases concluded through conciliation, the facts that the trademark is well-known will not be identified in mediation agreement.” Therefore, the efficacies of well-known trademarks through judicial determination should be clear, in order to limit the use of well-known trademark recognizance for pursuing other improper interests hereby.

It is hoped that the stipulations of this judicial interpretation can inhibit the negative phenomena of recognizing well-known trademark improperly or excessively through judicial means, optimize judicial protection mechanism for well-known trademark, as well as guide enterprises to create brands and developments healthily.

1. Well-known trade mark is not an honorary title, but a dynamic fact, the main significance of which is as a counter-attack to the infringement, characterized for cognizance afterward, single case cognizance and passivity protection. Taking the well-known trademark as a brand is a misinterpretation of its intent;2. Articles2  In the following civil disputes, if the parties refer to well-known trademark as a factual basis, the People’s Court will identify whether the trademark involved is well-known according to the specific circumstances of the case if needed:a. Lawsuit on trademark infringement for violating the provisions of Article 13 in Trademark Law;b. Lawsuit on trademark infringement or improper competition for the name of corporation being the same or similar to well-known trademark;c. Deraignment or counterclaim lodged in accordance with the provisions of Article 6 in this Interpretation3. Article 3  In the following civil disputes, the People’s Court will not review whether the trademark involved is well-known or not:a. Confirmation on trademark infringement or improper competition is not based on whether trademark is well-known;b. Disconfirmation on trademark infringement or improper competition for having no other elements of legal provisions.

Focusing on amendment of Trademark Law

July 9th, 2009 at 12:43am Under trademark law

The third draft amendment of Trademark Law has been being discussed since 2005, after publishing the first version for the third draft amendment of Trademark Law with 159 articles in it in 2006; the state trademark bureau provided another version with 150 articles in August of 2007. And now, the second version is under discussion over the whole country.

Combining the phylogeny and the reality of the Trademark Law in China, we can know that, this law is becoming more and more comprehensive in respect of the subject of the registration, the scope of the constitution of the trademark and so on; In addition, what we can also see is that the power of administrative enforcement of the Administration Bureau for Industry and Commerce is strengthened step by step. From the amended version (2007), we can summarize three main respects being discussed: 1. To change a lot or change a little; 2. The goal of legislation for the trademark law; 3. The concrete system of the law.

1. About the extent to changeAlthough some scholars suggest that the trademark law should be changed a lot to avoid later troubles in amending, from the view point of the nature of the trademark law, this kind of way which means once and for all is not practicable. The trademark law, in essence, is closely combined with the commerce which is changing every minute, and therefore needs supplements all the time. So, for its better enforcement, the trademark law should focus on the problems in existence, and it’s not a good idea to draw a final conclusion on the amended version before its drafting or after its publication.              2. About the goal of the legislation Compared with the present trademark laws, the new amended version has made progress as it expressed in words that the administration function of the trademark is behind of the function of benefits protection for mandator. But it is not enough. The new version of the trademark law should embody not only in form, but also in content that, the goal of the trademark law is to protect the benefits both of the consumer and the proprietor of the trademark. Only in this way, we can say that the trademark law fits its nature as a private law; only in this way, we can say that this new version is making greater progress than ever.

3. About the concrete systemIn respect of the law system, the main purpose of the amendment of the trademark law is to solve the serious problems in two fields. One is the malicious act in the registration of the trademark, opposition, dispute, and the use of the trademark; the other is to advance the efficiency of the affirmation of the trademark.

(1) About malignant register and oppositionAlthough there are two withdraw provisions in the amendment (2001) about the register of the trademark with malignant act, the principle of good faith has not yet been set up as a guiding spirit. The main reasons are as following: First, it is hard to decide whether the conditions stipulated in the law is reached; second, there are almost no punishment for the malicious act in register. That is to say, the cost of breaking the law is less than the benefits, which to some extent “encourages”  the bad behavior in register. This phenomenon should be changed and the under discussion amended version of the trademark law should impose more strict restriction and liability on the offender.

(2)About simplifying procedures and advancing confirming rights efficiencyTo some extent, how to simplify and advance efficiency is the most important issue in the amendment of the trademark law this time. It is also the issue to which most attention is paid by the organ of the trademark. The aforesaid procedures which need to simplify include the examining of the application, opposition and review procedures.  At present, it needs 3 to 4 years to get registered from the time of submitting the application. And as for the cases of the opposition and review of the trademark, the situation is even more serious. If this situation can not be solved fundamentally, it will not only do harm to the economic life, but also hinder the realization of the fair. In my opinion, the most efficiency way to solve the problems is to simplify the procedures.First, simplify the examining procedure of the application for register. We may examine the absolute condition only, and do not need to examine the relative for purpose of saving time. As for the relative condition, it can be solved by the owner of the trademark and the prior applicant through the opposition procedure.Second, simplify the opposition procedure.? to restrict the qualification of the opponent. That is, only the prior applicant and the owner of the geographic indications are entitled to institute an opposition. ? the organ which can accept and hear the trademark oppositions should be the Trademark Review and Appraisal Board, no longer the Trademark Bureau. People who can not accept the results given by the Trademark Review and Appraisal Board can submit to the court directly, and in this way, administrative procedures are reduced. ? to introduce the summary procedure. If the Trademark Review and Appraisal Board considers the oppositions are not established, it can rule directly. In case it considers the opposition is established wholly or partly, it should inform the applicant to reply. ? to cancel the regulation that a judicial review could be revoked upon the decision for a non-admissible opposition

All above are just a few opinions about the amendment of the Trademark Law. There is still a long way for us to achieve final success. Or perhaps final success is always on way, which we can only get close unlimitedly but can never achieve. Notwithstanding that, we all hope the new trademark law can give us more convenience both in register and protecting legal rights.

source:Sino-Link Consulting