Well-known trademark has always been an important property to the trademark holder. Well-known trademark usually stands for excellent goods and service qualities which have been well recognized by the consumers and it is always beloved and trusted by consumers. When you see product shelves displayed with similar products but in different brands and packages, your attention probably will easily be attracted by the product bearing the most valued brand people already know. This is one of the values of well-known trademark. Compared with ordinary trademark, well-known trademark enjoys great economic value and is an important tool for enterprises to win market competitions. Therefore, how can trademark be protected as well-known trademark and how to better protect the rights and interests of well-known trademark owner have become one of the important concerns to many business operators.

Compared with ordinary trademarks, well-known trademarks can enjoy special protection, of which details are as follows:

First, China is a first to file jurisdiction and ordinary registered trademark can enjoy protection of the exclusive right to use that trademark in respect of its registered goods and services. However, even if any well-known trademark still hasn’t been registered in China, it’s possible for it to be protected in respect of similar/identical goods/services. For already registered well-known trademark, it’s possible to be protected in wider ranges including goods/services dissimilar to what it has been registered for.

Second, if the registration of any trademark is found to be illegal, the prior right holders and/or interested parties are entitled to initiate an invalidation request against it within five years as from the registration date of that registered trademark. However, there is one exception as stipulated in Article 45 of the Trademark Law of the P.R.China. Based on Article 45, if there is evidence in proving the registered mark was obtained mala fide and at the same time the cited prior trademark has already become well-known before the application date of the registered mark, the well-known trademark owner is not bounded by the five-year rule. Such exception rule further provides opportunities and legal basis for the well-known trademark owner to safeguard their rights and to combat malicious registrations.

Last year, in a trademark dispute case, THE PROCTER & GAMBLE COMPANY (hereinafter referred to as “Procter & Gamble”) has successfully recognized its trademark No. 713558 “” as a well-known trademark and invalidated a registered trademark which had been registered for more than 5 years. Details of this case are as follows:

On September 20, 2010, Shijiazhuang Longtai Knitting Products Co., Ltd.  (hereinafter referred to as “Longtai”) has applied the trademark “” No. 8689072 (hereinafter referred to as “disputed trademark”) in respect of “bath towels; towels of textile” in class 24 and it has been approved for registration on October 7, 2012. On January 16, 2018, Procter & Gamble, based on its trademark No. 713558 “” (hereinafter referred to as “prior trademark”) registered on May 31, 1993 in respect of “soap, perfume” in class 3, filed an invalidation request against the disputed trademark. The main argument of Procter & Gamble in the invalidation request was that the disputed trademark constituted reproduction and imitation of its prior trademark which had already become well-known trademark before the application date of the disputed trademark. After examination, the CNIPA considered that the prior trademark of Procter & Gamble had reached well-known degree before the application date of the disputed trademark, and the disputed trademark registered by Longtai constituted reproduction and imitation of Procter & Gamble’s prior trademark, and thus adjudicated that the disputed trademark should be declared as null and void. Thereafter, the Beijing Intellectual Property Court and the court of second instance both rejected Longtai’s appeal and upheld the CNIPA’s adjudication. This case has come into effect now.

When the owner of a well-known trademark requests the equivalent protection of its prior trademark as a well-known trademark in the specific case, it needs to prove that

1) its trademark has reached well-known degree before the application date of the disputed trademark;

2) the disputed trademark constituted reproduction, imitation or translation of its prior well-known trademark and the registration or use of the disputed trademark will easily cause confusion to relevant consumers, mislead the public, and may cause damage to the interests of the well-known trademark owner.

In the above case, the registration date of the disputed trademark is October 7, 2012, and the filing date of the invalidation request is January 16, 2018. Obviously, it has been more than 5 years between the filing date of the invalidation request and the registration date of the disputed trademark. Therefore, in such case, it is necessary not only to prove that the prior trademark has reached well-known degree before the application date of the disputed trademark and the disputed trademark constitutes reproduction or imitation of the prior trademark, which is likely to cause confusion and/or mislead the public, but also to prove that registration of the disputed trademark was malicious.

The author briefly summarizes the above points involved in this case as follows:

A. The prior trademark has reached well-known degree before the application date of the disputed trademark.

According to Article 14 of the Trademark Law of the P.R.China, the following factors shall be considered in the recognition of a well-known trademark: (1) the relevant public’s awareness degree regarding the trademark; (2) the use duration of the trademark; (3) the duration, degree and geographic scope concerning the publicity of the trademark; (4) records of the trademark being protected as a well-known trademark; (5) other factors that make the trademark well-known.

Thus, to prove that the prior trademark has reached well-known degree, the concerned parties will need to continuously and actively collect and preserve relevant evidence concerning the use, publicity and records of being protected as a well-known trademark. In this case, Procter & Gamble submitted a large number of use evidence, advertising and publicity evidence, award-winning evidence, media report evidence, protection records of its prior trademark such as relevant decisions, adjudications and judgments of previous cases and other helpful evidence. The evidence strongly proved that before the application date of the disputed trademark, Procter & Gamble’s prior trademark had been widely used on soaps, cosmetics and other commodities and had been recognized as well-known brand by the relevant public. This was a crucial premise and basis for this case to obtain the desired result. Trademark owners with similar trademark protection needs may use Procter & Gamble’s strategy in this case for reference.

B. The disputed trademark constitutes reproduction or imitation of the prior well-known trademark, which may easily lead to confusion and/or mislead the public.

Reproduction means that the disputed trademark is identical to the prior well-known trademark. Imitation means that the disputed trademark plagiarizes the prior well-known trademark or reproduces the distinctive part/feature of the prior well-known trademarks. In this case, although the second Chinese character of disputed trademark “” is different from that of prior trademark “”, they share similar pronunciation and character composition. Furthermore, these two marks cannot be distinguished from each other in respect of meaning. Thus, it is difficult for consumers to distinguish these two marks by paying general attention on the marks. Therefore, in this case, the disputed trademark was judged as having constituted reproduction or imitation on the prior trademark of Procter & Gamble.

Besides, when judging whether registration and use of the disputed trademark is likely to cause confusion among consumers and mislead the public, it is necessary to pay attention to not only the similarity between the disputed trademark and the prior trademark but also the originality and famous degree of the prior trademark. The association degree between the goods designated by the two trademarks also plays an important part to some extent. Additionally, it should be noted that the determination of confusion and misleading does not require the actual occurrence of confusion or misleading, but only needs to conjecture whether there is the possibility of confusion or misleading. In this case, the designated goods of the disputed trademark are personal cleaning products i.e. “bath towels; towels of textile”, and designated goods of the prior trademark i.e. “soap, cosmetics” are also daily chemical products for cleaning use. There is a large degree of overlap between the targeted consumers of the goods designated by these two marks. Besides, the function and usage of the goods designated by these two marks are also closely related. Under such circumstances, when the relevant consumers see the relevant products bearing the disputed trademark, they will easily associate or confuse it with the prior trademark of Procter & Gamble, and then purchase the products by mistake.

C.  The registration of the disputed mark was malicious.

According to the Trademark Examination and Adjudication Guidelines, the following factors can be taken into consideration when judging whether the applicant of the disputed trademark was malicious: (1) the applicant of the disputed trademark had trading or cooperating business with the well-known trademark owner; (2) the applicant of the disputed trademark and the well-known trademark owner co-located in the same region or the goods or services of both parties enjoyed the same sales channels and they are within the same geographical scope; (3) the applicant of the disputed trademark and the well-known trademark owner had other disputes and thus the applicant of the disputed trademark should have been aware of the well-known trademark; (4) the applicant of the disputed trademark had internal personnel exchanges with the well-known trademark owner; (5) the applicant of the disputed trademark had the intention of seeking illegitimate interests after registering the disputed trademark, leveraged the reputation and influence of the well-known trademark to conduct misleading propaganda, coerced the well-known trademark owner to conduct trading cooperation with it, or asked for high assignment fees, licensing fees or compensation for infringement from the well-known trademark owner or others; (6) the well-known trademark enjoyed strong originality; (7) other situations that should be identified as being malicious.

In this case, the prior well-known trademark “” of Procter & Gamble has been used in China for many years. Both the goods “soap, cosmetics” on which the well-known mark have been used and the goods designated by the disputed trademark i.e. “towels of textile, bath towels” belong to daily cleaning chemicals, thus the relevant public, sales channels and sales scope of these goods overlap to a large extent. In addition, besides the disputed trademark in this case, the owner of the disputed trademark has also applied for registrations of the marks “舒肤佳”, “舒倍佳” and other similar trademarks. It is obvious that the owner of the disputed mark has certain knowledge of Procter & Gamble and its trademark “”. Besides, the owner of the disputed mark failed to provide a reasonable source of registering the disputed trademark. Taking the above factors into consideration, it can be judged that the owner of the disputed trademark has certain bad faith in registering the disputed trademark.

In addition to the above, the protection of well-known trademarks should follow four principles i.e. case-by-case recognition principle, passive protection principle, on-demand recognition principle and good faith principle. For a specific case, the protection scope given to a well-known trademark shall comprehensively consider the trademark’s distinctiveness, well-known degree, similarity between the trademarks, the situation of the designated goods, the overlap degree and attention of the relevant public, the subjective status of the applicant of the disputed trademark and other factors. For registered well-known trademarks in China, when determining the protection scope in respect of the dissimilar goods, it should be commensurate with its well-known degree. For registered well-known trademarks in China that are widely known to the public, when determining the scope of protection in respect of dissimilar goods, a wider range of protection scope that is commensurate with its well-known degree should be given. That is to say, the more well-known the trademark is, the wider the protection scope will be given to the well-known trademark.

For business operation, the well-known status of a trademark is not accomplished at one stroke. It usually needs long term’s investment and maintenance. Besides, the value status of a well-known trademark varies and is affected by many factors. Therefore, to maximize the advantages of a well-known trademark in the market competition, the trademark owner should actively promote and use its trademark, consecutively improve the trademark’s famous degree and influence, and preserve relevant evidence at hand. Besides, the trademark owner should also actively take legal measures to crack down on others’ bad faith behaviors, and prevent its well-known trademark from being diluted which may weaken the distinctiveness and affect the protection scope of the well-known trademark.