To implement the newly revised Trademark Law and its implementing regulations, and standardize the recognition and protection of well-known trademarks, SAIC revised the Well-known Trademark Recognition and Protection Regulations (State Administration for Industry and Commerce Order No. 5) and drafted the Well-known Trademark Recognition and Protection Regulations (Revised Draft) for public comment from April 14, 2014 to May 13, 2014.

Major revision

The revised draft has a total of 24 articles. Articles 1-5 specify the legislative basis, definition of well-known trademarks, subject and principles of recognition; Articles 6-10 clearly define the proposal of request for recognition protection and requirements for evidence in different types of cases, with a prospective of applicant for well-known trademark protection; Articles 11-16 specify the procedure and recognition criteria for standardizing the handling of well-known trademark cases; Articles 17 and 18 specify the strengthening of daily protection of well-known trademarks and application of well-known trademark protection records. Articles 19-23 clarify the responsibility and supervision of administrative departments at all levels in the recognition of well-known trademarks and handling of protection cases. Article 24 clarifies the date to implement the revised document.

To highlight its legal nature of “necessity of the case”

The revised draft emphasizes that well-known trademarks shall follow the principle of individual case recognition and passive protection, to reflect the spirit of law that the recognition of well-known trademarks is based on the necessity for handling the cases as well as legal procedures and requirements and earnestly safeguards legitimate interests of the well-known trademark holder, from the proposition of request for recognition protection, case acceptance (case referrals), case hearing, recognition (in decision, determination or reply) to the case handling.

To specify requirements for evidence submitted by the parties

The revised draft summarized the recognition criteria and requirements for evidence formed in practice, fixing and detailing them with regulations, to facilitate the understanding and conforming by the parties and various well-known trademarks review departments. Meanwhile, the revised draft emphasized that the Trademark Office and Trademark Appeal Board shall consider comprehensively Paragraph 1 of Article 14 and various factors specified in Article 10 in the recognition of well-known trademarks(without a precondition to meet all the factors).

To further clarify the responsibilities of the parties and administrative authorities

The revised draft specifies that the parties shall abide by the principles of good faith and ensure to submit truthful evidence; specifies the responsibility of municipal or higher administrative authorities in verification and review of the case facts and evidence submitted by the parties, case submittals; case handling and results submittal, and assistance in verifying relevant situation; the provincial business authorities are responsible for examining and verifying, case submittals, summary and reporting of case handling progress, and assisting in verifying relevant situation; the Trademark Office and Trademark Appeal Board are responsible for recognition of the facts of being well-known and application of the law in the hearing process. The revised draft also makes specific provisions on responsibility and supervision of various departments and their staff participating in the work regarding well-known trademarks.

To standardize the handling of issues related to well-known trademark cases

First, in the investigation of trademark cases, it is required that local administrative authorities shall feedback the results of well-known trademark cases to the Trademark Office; second, it specifies that local industrial and commercial administrative department shall assist the Trademark Office and Trademark Appeal Board in verifying relevant situation in the case proceedings where necesasry; third, in the investigation of trademark cases, if the recognition protection of well-known trademark is obtained through undue means such as fraud or providing false evidence, such recognition can be revoked (since the opposition cases and review cases have statutory judicial review procedures, they no longer make repeated provisions on the issue); fourth, if the local administrative administrative department fails to fulfill its duties of filing and reviewing the cases by law, or does not provide truthful materials in accordance with the relevant provisions, the higher level administrative department shall notify and order it to rectify.

The report said China’s steady increase was mainly due to improvement of knowledge creativity and innovation environment. Among them, the knowledge creativity sub-index ranking jumped from 24th last year to 18th, which was mainly due to the outstanding performance of invention patent application and grant. Among them, the number of patent granted per ten thousand researchers and the number of invention patent applications per 100 million dollars of economic output show obvious advancement, which ranked 3rd and 2nd respectively.

This is the fourth time that a case represented by Unitalen was successfully enlisted into the top ten cases by the Supreme Court since 2009, and the former three times are: the "BMW" trademark infringement and unfair competition case was selected into the top ten intellectual property cases by the Supreme Court in 2009; the "LAFITE" trademark infringement and unfair competition case and JAC confirming non-infringement of trademark were both selected into the top ten intellectual property cases by the Supreme Court in 2011; the Sany well-known trademark case was selected in 2012 into the top ten intellectual property cases . In addition, Unitalen’s top ten intellectual property cases by the Supreme Court in past years come were infringment cases, while this is the first time that an administrative case of trademark was selected. The case, enduring twists and turns but eventually winning the retrial process, had its typical significance.

In addition, the Supreme Court also announced 50 typical IPR cases of Chinese Court in 2013, including three cases by Unitalen: the design patent infringement dispute by Honda Motor Co., Ltd. against Jiangmen Qipai Motorcycle Co. Ltd., Lifan Industry (Group) Co., Ltd. and Xiangtan Ruiqi Lifan Motorcycle Sales Co., Ltd.; the trademark infringement dispute appeals by Universal S.P.A. against Qingdao Jitong Stationery Co., Ltd., Qingdao Jitong Pencil Co., Ltd. and Qingdao Aeon Dongtai Commerce Co., Ltd.; the trademark dispute administrative dispute by Bonneterie Cevenole S.A.R.L. against the Trademark Appeal Board of the State Administration for Industry & Commerce of the People’s Republic of China and Foshan Mingshi Industrial Co., Ltd.

“Power Dekor” case of well-known trademark protection

The trademark cancellation adminsitrative case [the Supreme Court No. 24 administrative judgment (2013)] by Power Dekor Group Co., Ltd. against the Trademark Appeal Board of the State Administration for Industry and Commerce and Hebei Guangtai Gypsum Mines Co., Ltd.

[Briefs] Power Dekor Group Co., Ltd. (referred to as Power Dekor Group) is the trademark owner who has cited the trademark of "Elephant and device", which was approved for registration on May 14, 1997, for use in the "floor" and other commodities. The disputed trademark consists of the Chinese characters- "Power Dekor" and a realistic device with standing elephant, which was registered on March 21, 2003, and the applicant is Hebei Guangtai Gypsum Mines Ltd. (referred to as Guangtai Company), for use in the "gypsum , plasterboard, cement "and other commodities.On February 21, 2006, Power Dekor Group applied to the Trademark Appeal Board of the State Administration for Industry and Commerce (referred to as TRAB) for cancellation of the disputed trademark, on the main ground that the disputed trademark was a bad-faith imitation of the well-known trademark, and its use in the designated commodities of "plaster and cement" had strong connection with the approved use of the cited trademark in "floor", combined with the high visibility and influence of Power Dekor Group in the flooring industry, as well as the fact that the above-mentioned goods are all construction materials by their function and use, it is easy for consumers to be confused of the producers of the above goods at the time of purchase and use of these products. On August 31, 2009, the TRAB made the Business Review words [2009] No. 23269 trademark dispute ruling, determining that the documented evidence was insufficient to prove that the registration of the disputed trademark constituted malicious rush registration of Power Dekor Group trademark by unfair means, hence the disputed trademark was maintained. Power Dekor Group refused to accept the ruling and filed a lawsuit to Beijing First Intermediate People's Court. The Court held that, Power Dekor Group and its affiliates have made the "Elephant and device" trademark well-known to the relevant public widely enough in China before the filing date (2001) of the disputed trademark through related publicizing and use, which shall be protected by Article 13 of the Trademark Law. The judgment revoked No. 23269 trademark dispute ruling by TRAB. TRAB and Guangtai Company refused the first instance verdict, and appealed to Beijing Higher People's Court, respectively. Beijing Municipal Higher People's Court held by trial that the relevant evidence was insufficient to prove that the cited trademark constituted a well-known trademark before the filing date of the disputed trademark, with the judgment that: the first instance judgment was revoked; No. 23269 ruling of TRAB was maintained. Power Dekor Group refused to accept the judgment and applied to the Supreme Court for retrial. The Supreme Court heard the case after review and made retrial judgment. The Supreme Court held that, given the degree of public awareness to "Elephant and device" trademark of Power Dekor Group, continued use and publicity of the trademark by Power Dekor Group and its affiliated companies, and the media coverage of Power Dekor Group and "Elephant and device" by the relevant media, Power Dekor Group and "Elephant and device" have reached the level of well-known trademark. The determination of "not sufficient to prove that the cited mark constituted a well-known trademark prior to the filing date of the disputed trademark" by Beijing Higher People's Court held that there were in error in terms of both facts and applicable law, which should be corrected. There's little difference in the overall visual impression of the disputed trademark and cited trademark. Because gypsum and the approved wood floors for cited trademark are building materials, as a manufacturer of construction materials, Guangtai Company should know the visibility of the cited trademark, but it applied for the trademark with the logo which was very similar to the cited trademark, which was an imitation of "Elephant and device" trademark of Power Dekor Group, in violation of the provisions of the second paragraph of Article 13 of the Trademark Law, and should be revoked, and the court of first instance held that the facts were clear with correct applicable law, which should be maintained. The judgment revoked the second instance judgment and upheld the first instance judgment.

[Significance of the Typical Case] This case protects the legitimate interests of trademark owners through judicial determination of well-known trademarks, with positive significance for the maintenance of normal economic order, stopping of "copying the well-known brand" and "free rider" and promoting brand building of well-known companies.

As a team member of International Trademark Association Asian Roundtable project and representative of Beijing, Huang Ying (lawyer) presided over the seminar. The seminar also invited judge from the Supreme Court to introduce the main content and features of new trademark law, and interpret controversies and focuses of Judicial interpretation of trademark case jurisdiction after implementation of the revised Trademark Law recently issued by the Supreme Court. In addition, for the revision of Trademark Law, the participants discussed the issues on "one trademark application for multi-classes", "the provisions of introducing examination limitation", "changes of opposition system" and " jurisdiction of foreign-related trademark infringement cases", etc.