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1. The Provisions on the Recognition and Protection of Well-known Trademarks points out that well-known trademarks refer to trademarks that are widely known to the relevant public and enjoy a high reputation in China. Relevant public includes consumers related to the use of certain goods or services marked by trademarks, other operators and sellers who produce goods or provide services marked by trademarks, and relevant personnel involved in distribution channels. "Well-known trademarks" originated from the Paris Convention for the Protection of Industrial Property. Well-known trademark system is created in accordance with international and domestic intellectual property laws and regulations to fully protect the legitimate rights and interests of well-known trademark owners. Its purpose is to reasonably protect the ownership of related trademarks, maintain fair competition, and stop the infringement of others' trademark exclusive rights.
Well-known trademarks can bring huge economic benefits to enterprises, help enterprises consolidate their position in the market economy, and resist a series of problems such as malicious cybersquatting and the influence of different commodities similar to trademarks. Therefore, enterprises in China have applied to identify their trademarks as well-known trademarks.
Well-known trademarks must meet the following conditions:
First, the legitimate rights and interests of the exclusive right holder of a trademark have been illegally infringed, and the trademark must be recognized as a well-known trademark in order to effectively protect its legitimate rights and interests.
Second, this trademark has a certain popularity among relevant people.
Three, the parties have filed an application according to law.
The so-called well-known trademark is relative to the infringement disputes involved, and its effectiveness as a well-known trademark has a certain scope and intensity. Being recognized as a well-known trademark in this dispute does not mean enjoying the treatment of well-known trademarks in other infringement disputes. Does not mean that they are protected at any time and within the scope.
At present, China implements a dual-track system that can be recognized by both the administrative department and the people's court, but only if the parties file an application or request, and the application or request must be damaged on the basis of relevant rights and interests. The protection of well-known trademarks is also different from ordinary trademarks and is limited to the same or similar goods. Well-known trademarks are protected across categories. As long as it is recognized as a well-known trademark, other enterprises may not use the well-known trademark on any of their goods.
2. Administrative recognition: Most of the well-known trademarks in China have been recognized by the State Administration for Industry and Commerce (Trademark Office and Trademark Review and Adjudication Board), and compared with the people's courts, the proportion of well-known trademarks recognized by them is larger. In case of disputes in the process of trademark registration, use and review, the Trademark Office of the State Administration for Industry and Commerce and the Trademark Review and Adjudication Board may, at the request of the parties concerned, determine whether their trademarks constitute well-known trademarks according to specific facts.
2- 1. Trademark Office Accreditation: To apply for the accreditation of well-known trademarks, the local industrial and commercial bureaus of provinces, autonomous regions and municipalities directly under the Central Government (hereinafter referred to as provincial industrial and commercial bureaus) must submit relevant materials, and the provincial industrial and commercial bureaus will promptly mail the relevant application materials for preliminary examination and signing opinions to the Trademark Office of the State Administration for Industry and Commerce. Finally, the Trademark Office of the State Administration for Industry and Commerce determines whether the trademark is well-known.
When there is a dispute in the process of trademark registration, if the parties think that their trademark constitutes a well-known trademark, they may also request the Trademark Office to determine that their trademark is well-known, and at this time, they shall submit evidence that their trademark constitutes a well-known trademark.
2-2. Identification by the Trademark Review and Adjudication Board: In case of any dispute in the process of trademark review according to the provisions of the Trademark Law and regulations, the parties may request the Trademark Review and Adjudication Board to identify a well-known trademark, and at this time, the parties shall submit evidence that their trademarks constitute well-known trademarks according to law.
3. The people's court confirmed that in the trial of trademark disputes, the people's court may make a legal determination on whether the registered trademark involved is well-known according to the request of the parties and the specific circumstances of the case. The promulgation of two normative documents, the Supreme People's Court's Interpretation on Several Issues Concerning the Application of Law in the Trial of Civil Disputes over Computer Network Domain Names and the Supreme People's Court's Interpretation on Several Issues Concerning the Application of Law in the Trial of Civil Disputes over Trademarks, provided sufficient legal basis for the people's courts to identify well-known trademarks.
At present, many enterprises identify their trademarks as well-known trademarks through the new way of judicature, which reflects the enhancement of their trademark awareness and brand awareness to a certain extent and has positive significance for the protection of intellectual property rights of enterprises; At the same time, judicial expertise can be conducted in the local intermediate people's court, which makes the identification of well-known trademarks more convenient, so it has become the first choice of many enterprises.
4. How to identify well-known trademarks
4- 1. According to the provisions of China's Trademark Law, the following factors should be considered when identifying well-known trademarks:
(a) the public's awareness of the trademark;
(2) the term of use of the trademark;
(3) the duration, degree and geographical scope of any publicity work of the trademark;
(4) The record that the trademark is protected as a well-known trademark;
(5) Other factors that make the trademark famous.
The Trademark Office and the Trademark Review and Adjudication Board shall comprehensively consider the above factors when identifying a well-known trademark, but not on the premise that the trademark must meet all the factors specified in this Article.
Accordingly, the following materials can be used as evidence to prove the well-known trademark:
(1) Relevant materials proving the public's knowledge of the trademark;
(2) Relevant materials proving the service life of the trademark, including the history and scope of the use and registration of the trademark;
(3) Relevant materials to prove the duration, degree and geographical scope of any publicity work of the trademark, including the methods, geographical scope, types of publicity media, advertising amount and other relevant materials of advertising and promotion activities;
(4) Relevant materials proving that the trademark is protected as a well-known trademark, including relevant materials that the trademark is protected as a well-known trademark in China or other countries and regions;
(5) Other evidential materials to prove that the trademark is well-known, including the output, sales volume, sales revenue, profits and taxes, sales area and other relevant materials of the main commodities using the trademark in the last three years.
Up to now, the number of well-known trademarks recognized by the General Administration is close to 1000.
4-2. If the court recognizes a well-known trademark, it shall recognize it in accordance with the above five elements for recognizing a well-known trademark. If a party requests the protection of a well-known trademark that has been recognized by the Trademark Office, the Trademark Review and Adjudication Board or the people's court, and the other party has no objection to the well-known trademark involved, the people's court will not examine it. If an objection is raised, the people's court shall examine it according to the five factors that determine a well-known trademark.
According to the Trademark Law and the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Civil Disputes Involving Computer Network Domain Names published on July 7, 2006, and the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Civil Disputes Involving Trademark Rights published on October 2, 2002, the people's courts, on the basis of finding out the facts, strictly From July 5438, 2006 to June 2005, the people's court recognized 72 well-known trademarks such as Huaneng, Gome and Zheng Qi. Among them, among the 42 well-known trademarks recognized from June 5438+0 to June 5438+0, 2005, 9 were owned by foreigners.
5. Well-known trademarks should be used as a system to prevent unfair competition, not as an honorary title and advertising capital, not to resort to deceit or even create nonexistent trademark disputes in order to be recognized as well-known trademarks in litigation. Well-known trademarks are used to maintain fair competition and cannot be used as a tool for unfair competition. This is the minimum business rule.
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6. Administrative protection of well-known trademarks
According to China's Trademark Law and its implementing regulations, as well as the relevant provisions of the Provisions on the Recognition and Protection of Well-known Trademarks, the preconditions for the protection of well-known trademarks in China are:
(1) A trademark applied for registration on the same or similar goods is a copy, imitation or translation of a well-known trademark that is not registered in China by others, which is likely to cause confusion; (Article 13 of the Trademark Law 1)
(2) A trademark applied for registration on different or similar goods is a copy, imitation or translation of a well-known trademark registered by others in China, misleading the public and possibly harming the interests of the registrant of the well-known trademark. (Article 13 of the Trademark Law 2)
I. Application for protection of well-known trademarks
If a party considers that a trademark preliminarily approved and announced by others belongs to the specified circumstances, it may raise an objection to the Trademark Office according to law and submit relevant materials to prove that its trademark is well-known;
If a party considers that another person's registered trademark belongs to the prescribed circumstances, it may request the Trademark Review and Adjudication Board to make a ruling to revoke the registered trademark according to law, and submit relevant materials to prove that its trademark is well-known;
In the work of trademark management, if the parties think that the trademark used by others belongs to the prescribed circumstances, they may submit a written request to the administrative department for industry and commerce at or above the city where the case occurred, and submit relevant materials to prove that the trademark is well-known. At the same time, send a copy to the local provincial administrative department for industry and commerce.
The evidential materials that can prove the well-known trademark include:
(1) Relevant materials proving the public's knowledge of the trademark;
(2) Relevant materials proving the service life of the trademark, including the history and scope of the use and registration of the trademark;
(3) Relevant materials to prove the duration, degree and geographical scope of any publicity work of the trademark, including the methods, geographical scope, types of publicity media, advertising amount and other relevant materials of advertising and promotion activities;
(4) Relevant materials proving that the trademark is protected as a well-known trademark, including relevant materials that the trademark is protected as a well-known trademark in China or other countries and regions;
(5) Other evidential materials to prove that the trademark is well-known, including the output, sales volume, sales revenue, profits and taxes, sales area and other relevant materials of the main commodities using the trademark in the last three years.
When a party requests to protect its trademark according to law, it may provide a record that the trademark has been protected as a well-known trademark by the relevant competent department of China.
Second, the review and handling of protection applications.
(a) the review of the case
After receiving the application for the protection of well-known trademarks in trademark management, the administrative department for industry and commerce shall conduct a review:
For cases that are considered to be under the specified circumstances, the municipal administrative department for industry and commerce shall submit all the case materials to the administrative department for industry and commerce of the local province (autonomous region or municipality directly under the Central Government) within 15 working days from the date of accepting the request of the parties, and issue a Notice of Accepting Cases to the parties; The administrative departments for industry and commerce of provinces (autonomous regions and municipalities directly under the Central Government) shall submit all the case materials to the Trademark Office within 15 working days from the date of accepting the request of the parties. If the provincial administrative department for industry and commerce where the party concerned is located considers the case to be relevant, it may also submit it to the Trademark Office;
If it does not fall into the prescribed circumstances, it shall be handled in a timely manner in accordance with the relevant provisions of the Trademark Law and its implementing regulations.
(2) Review materials
The administrative departments for industry and commerce of provinces (autonomous regions and municipalities directly under the Central Government) shall examine the case materials related to the protection of well-known trademarks submitted by the administrative departments for industry and commerce of cities (prefectures) within their respective jurisdictions:
Under the circumstances specified in the first paragraph, it shall be submitted to the Trademark Office within 15 working days from the date of receiving the case materials submitted by the administrative department for industry and commerce of the city (prefecture) under its jurisdiction;
For cases that do not belong to this situation, the relevant materials shall be returned to the original accepting organ, which shall handle them in time in accordance with the relevant provisions of the Trademark Law and its implementing regulations.
(3) Handling decisions
The Trademark Office, the Trademark Review and Adjudication Board and the local administrative department for industry and commerce shall consider the distinctiveness and well-known degree of the trademark when protecting the well-known trademark.
If the scope of protection of the accepted case is basically the same as that of the case that has been protected as a well-known trademark, and the other party has no objection to the well-known trademark, or although there is objection, it cannot provide evidence that the trademark is not well-known, the administrative department for industry and commerce accepting the case may make a ruling or handle it according to the conclusion of the protection record.
If the scope of protection of the accepted case is different from that of the case that has been protected as a well-known trademark, or if the other party has objections to the well-known trademark and provides evidence to prove that the trademark is not well-known, the Trademark Office or the Trademark Review and Adjudication Board shall re-examine the well-known trademark materials and make a determination.
The administrative department for industry and commerce of the province (autonomous region or municipality directly under the Central Government) where the handling organ is located shall send a copy to the Trademark Office.
Three. Other cases
Since the date when a well-known trademark is recognized, if others regard the same or similar words as part of the enterprise name, which may cause public misunderstanding, the administrative department for industry and commerce shall not approve the registration;
If it has been registered, the registrant of a well-known trademark may request the administrative department for industry and commerce to cancel it within two years from the date when it knows or should know. When judging whether the above acts may damage the rights and interests of well-known trademark registrants, we should consider the originality and well-known degree of the trademark.
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7. Positioning of well-known trademarks: means of safeguarding rights, not the ultimate goal.
For a period of time, the identification of well-known trademarks in China has adopted the methods of active identification and batch identification. The active identification of well-known trademarks does not violate the provisions of the Paris Convention for the Protection of Industrial Property, but long-term and large-scale active identification also has its negative side.
The active identification of well-known trademarks has strengthened people's cognition and trust in well-known trademarks. At the same time, the active identification of well-known trademarks has caused an artificial imbalance of rights between trademark owners and the public, which often leads to excessive protection of well-known trademarks and is unfair to other enterprises. In particular, a trademark such as a combination of Chinese characters can not be combined with any number of Chinese characters to form a good trademark, but needs careful planning and design. However, the truly meaningful combination of Chinese characters is so limited that it is unreasonable for this combination of Chinese characters to be monopolized by individual manufacturers.
Therefore, whether it is reasonable or not depends on the cases of infringement disputes, rather than using pre-recognized well-known trademarks to deter possible future competitors. Some businesses take a fancy to the benefits that well-known trademarks can bring to enterprises, so they try their best to identify well-known trademarks as an end, not as a means of safeguarding rights.
With the promulgation of two normative documents, the Supreme People's Court's Interpretation of Several Issues Concerning the Application of Laws in the Trial of Civil Disputes over Computer Network Domain Names and the Supreme People's Court's Interpretation of Several Issues Concerning the Application of Laws in the Trial of Civil Disputes over Trademarks, the judicial identification methods of case identification and passive protection have a more adequate legal basis. Many enterprises identify their trademarks as well-known trademarks through judicial channels, which to some extent reflects the enhancement of their trademark awareness and brand awareness, and has positive significance for the protection of intellectual property rights of enterprises. At the same time, because this kind of judicial expertise can be completed in the local intermediate people's court, it has also become the first choice of many enterprises.
The judicial recognition of well-known trademarks by local courts has provided convenience for enterprises. However, some enterprises' understanding of the true meaning of well-known trademarks has not improved with the change of identification methods. They don't realize that the identification of well-known trademarks has changed from active identification and batch identification to case identification and passive protection. Their understanding of well-known trademarks is still stuck in the original mode of thinking, and individual enterprises are even suspected of setting up scams and obtaining well-known trademarks through their own lawsuits.
The change in the way of identifying well-known trademarks is not only because some enterprises can't keep up with their understanding, but also because some law enforcement departments can't get their understanding in time, and well-known trademarks identified by local courts can't be identified in the process of law enforcement; Moreover, to a great extent, the public still has a more authoritative understanding of well-known trademarks recognized by the Trademark Office of the State Administration for Industry and Commerce and the Trademark Review and Adjudication Board. The key is that the original mentality has not changed, and well-known trademarks are regarded as an honor and a tool to obtain additional benefits.
Obtaining well-known trademarks is not an end, and well-known trademarks themselves are not a cash cow for enterprises. The key to recognizing well-known trademarks by legislation is to protect well-known trademarks. Identifying well-known trademarks is a means of safeguarding rights, not the ultimate goal. If enterprises don't focus on management, even if they get well-known trademarks, such famous brands won't last long, and such so-called cash cows will wither sooner or later.
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8. Definition of well-known trademarks in major countries
There is no clear concept of well-known trademark in American statute law, and there is no definition of well-known trademark in trademark law or anti-unfair competition law. Its definition of well-known trademarks is mainly reflected by specific cases. The general understanding of the concept of well-known trademarks in the United States is that a trademark that enjoys a high reputation among the relevant public is not conditional on its actual use in the United States.
The Japanese Trademark Law stipulates that the scope of well-known trademarks is "widely known to the demanders" in Article 4, 1 0, 15, 19 and Article 32, 1. , and made it clear that the scope of well-known trademarks is "related to the public". In 1999 "Examination Standards for the Protection of Well-known Trademarks and Famous Trademarks" published by Japan Patent Office, it is also mentioned that the protection of well-known trademarks is not based on registration, and the identification of well-known trademarks is not based on domestic well-known.
Germany, France and Greece protect well-known trademarks through their own trademark laws or anti-unfair competition laws, but do not define the concept of well-known trademarks. However, judging from the protection of well-known trademarks in these countries, the laws of these countries define well-known trademarks as trademarks that enjoy high popularity in the relevant public scope.
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9. Apply for the recognition of well-known trademarks and the benefits of owning well-known trademarks
Applying for a well-known trademark has the following benefits for trademark protection:
A oppose malicious cybersquatting of domain names;
B. resist the influence of identical (similar) trademarks of different commodities;
C. it is easier to identify similar trademarks;
D when filing a case to investigate the crime of counterfeiting trademarks, it is not limited by the amount of filing;
E. prevent other companies from registering their company names with well-known trademarks;
Avoid registering domain names in e-commerce.
Paragraph 2 of Article 13 of the Trademark Law of People's Republic of China (PRC) stipulates that a trademark applied for registration on different or similar goods is a well-known trademark registered in China by others through copying, imitation and translation, which misleads the public and may harm the interests of the registrant of the well-known trademark, so it shall not be registered and prohibited from being used. Paragraph 2 of Article 41 of this Law stipulates that when the owner of a well-known trademark registered in bad faith requests the Trademark Review and Adjudication Board to make a ruling to revoke the registered trademark that caused him losses, it is not subject to the five-year time limit stipulated in this paragraph.
The well-known degree of a trademark directly affects the economic benefits of its goods or services. In order to protect enterprises and economy, government departments at all levels and administrative departments for industry and commerce will inevitably increase the protection of well-known trademarks, and at the same time increase legislative and judicial protection measures. Ensure the market development of well-known trademarks. Article 14 of the Provisions of No.5 Order of the State Administration for Industry and Commerce of the People's Republic of China on the Recognition and Protection of Well-known Trademarks stipulates: "The administrative departments for industry and commerce at all levels shall strengthen the protection of well-known trademarks, and cases suspected of counterfeiting trademarks shall be promptly transferred to relevant departments."
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A well-known trademark refers to a trademark that enjoys a high reputation in the market and is well known to the relevant public. 1883 "Paris Convention for the Protection of Industrial Property" (hereinafter referred to as "Paris Convention") put forward the concept of well-known trademarks for the first time, demanding a higher degree of protection for well-known trademarks. Paragraph 2 of Article 16 of the Trips Agreement of the World Trade Organization has made corresponding provisions on the principle of recognition of well-known trademarks, and consciously avoided the recognition authorities in the expression of the provisions, breaking through the provision in the Paris Convention that the recognition of well-known trademarks should be made by the competent authorities of the countries where trademarks are registered or used. From this, it can be concluded that the recognition of well-known trademarks mentioned in the Trips Agreement is not exclusive to the above authorities. In fact, this provision of Trips Agreement leaves the identification of well-known trademark identification institutions to the legislation of various countries, which opens a "convenient door" for the judicial identification of well-known trademarks. The Trademark Law of People's Republic of China (PRC) (hereinafter referred to as "Trademark Law"), which was revised on October 27th, 200 1,1,stipulates the special protection and recognition principles of well-known trademarks, and expands the recognition of well-known trademarks from the previous single administrative review to judicial review.
At present, the trial practice of people's courts on the identification of well-known trademarks is still in its infancy, and some people's courts have not even tried such cases, so the overall trial experience is relatively lacking; The specific legal provisions on the identification of well-known trademarks are relatively principled and not operable, which is easy to produce different understandings; Some trademark owners also try to turn their unknown trademarks into well-known trademarks through litigation, as a "shortcut" to improperly expand brand awareness and crack down on crowding out reality or potential competitors. Therefore, the people's court should exercise its judicial power to identify well-known trademarks carefully, so as to avoid negative social impact caused by erroneous identification or unnecessary identification, especially to avoid affecting the actual rights and interests of third parties outside the case and causing unnecessary rights conflicts.
At present, the ways to identify well-known trademarks are:
A. In the trademark objection procedure, the applicant shall apply to the Trademark Office for the identification of a well-known trademark: that is, if the applicant thinks that the trademark preliminarily approved and announced by the Trademark Office is the same as or similar to the applicant's prior rights, he shall apply for the identification of a well-known trademark at the same time as filing the objection application.
B. In a trademark dispute case, an application for recognition of a well-known trademark is submitted to the Trademark Review and Adjudication Board at the same time: that is, if the applicant thinks that another person's registered trademark violates the provisions of Article 13 of the Trademark Law, he shall submit relevant materials to prove that his trademark is well-known, and the Trademark Review and Adjudication Board will recognize his trademark as a well-known trademark.
C. Apply to the local administrative department for industry and commerce for the recognition of a well-known trademark during the administrative treatment of trademark infringement: if the applicant thinks that the trademark used by others infringes on his exclusive right to use a trademark, he may submit a written request to the administrative department for industry and commerce above the city where the case occurred and submit relevant materials of his well-known trademark.
D apply to the local intermediate people's court for the recognition of a well-known trademark in a civil lawsuit of trademark infringement.
& lt supplement > formal requirements of well-known trademarks
The trademark law does not stipulate the formal requirements of well-known trademarks, which leaves a lot of discretion for the judicial and administrative departments and also creates a difficult problem. So do well-known trademarks have to have formal requirements? Considering the following three realistic factors, well-known trademarks must have formal requirements at the same time:
First of all, the necessary elements or elements of well-known trademarks stipulated in the trademark law are too abstract and general to be operated and grasped in practice;
Secondly, determining the formal requirements can prevent the abuse of the discretion of law enforcement departments and maintain a good law enforcement order;
Thirdly, determining the formal requirements can ensure the relative stability of well-known trademarks, so that the protection of well-known trademarks can be based on laws and evidence.
Regarding the relationship between substantive elements and formal elements, substantive elements are the factual conditions for the formation of well-known trademarks, while formal elements are the legal conditions for the formation of well-known trademarks, which cannot be biased. If we overemphasize the substantive elements and ignore or even ignore the formal elements, it will easily lead to the confusion of legal order; On the other hand, if the formal requirements are overemphasized and the substantive requirements are not respected, it will deviate from the purpose of well-known trademark protection and move towards proceduralism or nihilism.
& lt supplement > protection principles of well-known trademarks
The protection principles of well-known trademarks are generally divided into relative protectionism and absolute protectionism:
The principle of relative protection refers to prohibiting others from registering or using trademarks identical or similar to well-known trademarks on goods identical or similar to trademark owners. The Paris Convention adopted the principle of relative protectionism.
The principle of absolute protection refers to prohibiting others from registering or using trademarks identical or similar to well-known trademarks on any goods, including trademarks different or similar to well-known trademarks. TRIPS agreement adopts the principle of absolute protection (but in fact this absolute protection is conditional, that is, only when trademarks used on different or similar goods are easy to imply that there is some connection with well-known trademarks, so that the interests of registered trademark owners may be damaged).
China's trademark law adopts two principles, namely, the mixed principle, that is, the principle of relative protectionism for well-known trademarks that are not registered in China and the principle of absolute protection for well-known trademarks that have been registered in China. This practice not only considers and conforms to the actual national conditions of China, but also takes into account international practices.
It is worth noting that although China's trademark law adopts the principle of mixed protection, from the actual situation, it is more inclined to the principle of absolute protectionism.
First of all, most of China's well-known trademarks are registered in China, and the scope of registration is relatively wide, and few of them have not applied for registration in China;
Secondly, before the trademark law was amended in 200 1, the trademark registration administration had actually given relatively expanded protection to foreign well-known trademarks. For trademarks that are the same as or similar to well-known trademarks applied for in different or similar commodities, the application for registration is rejected, and for those that have been actually used, the law enforcement departments also cite relevant laws to protect them;
Thirdly, most of the well-known trademarks recognized by administrative channels in China are domestic, and the principle of absolute protectionism has not been fully adopted.