How Large Is the Scope of Protection for Well-Known Trademarks in China? (II)

2e2eb9389b504fc29c72b99de5dde71190ef6d7cIn yesterday’s post, we introduced trans-class protection for well-known trademarks and the factors that might lead to this status being granted. Today, we would like to conclude by explaining situations in which well-known trademarks will not be granted trans-class protection.

III. Situations where trans-class protection will not be granted to well-known trademarks

As discussed above, well-known trademarks only enjoy trans-class protection when meeting the following conditions. Now, we will introduce some common situations where trans-class protection cannot be achieved:

1. There will be no confusion with the well-known trademark

Whether or not there will be confusion is the key to determining whether there is infringement between two trademarks. And, the essence of the phrase “create prejudice to the interests of the well-known mark registrant” mentioned in yesterday’s post is whether the trademark with the later application will be confused with the well-known mark registered in another class. For this reason, if the trademark with the later application would not be mistaken with the well-known mark in the same class, then no interests would be damaged, and the well-known mark naturally would not be able to oppose it. For example, in the case of 中信家具 (Zhongxin Furniture) vs 中信集团 (Zhongxin Group), although 中信集团 held a well-known trademark for 中信 in the finance industry, the furniture industry and the finance industry are very different. Therefore, the court of first instance held that that no confusion would be created and refused the claim. (Although the case was ruled as infringement in the second instance, the author believes the decision made by the first instance court was correct)

2. The limits on the trademark right itself

Although the trademark is a kind of exclusive right, that right only governs later use of the trademark by others and cannot combat rights acquired first by others or the meaning of the trademark itself. For example, “陆家嘴” (Lujiazui), a famous place name in Shanghai’s Pudong area, has been registered as a trademark, but its holder could not stop others from using the name to describe a specific spot (like Lujiazui Park, Lujiazui Resturant, etc.), even if such use might present a real possibility of resulting in confusion. Of course, the user must have fair reason to use the name, and if a restaurant outside the area of Lujiazui uses it, then this would constitute trademark infringement.

In closing, although well-known trademarks are able to obtain trans-class protection, this privilege is not absolute. Courts and administrative organs will make different decisions based on the circumstances, which is why there were different decisions by the court and the Trademark Office in the 多美滋 dispute. But, for trademark holders, if full class protection is truly desired, then the full forty-five class registration shall be made from the outset.

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