Juristic determination of Well-known Trademark

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 Interpretation
3. 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.