The Name on the Notorious List Could Also be the Well-known Trademark in China

Analysis on the Establishment of Well-known Trademark of Silk (秀水)

Recently, China Trademark Office, a branch of State Administration of Industry and Commerce announced the list of newly established well-known trademark of 2011, and the mark of Silk(“秀水” read as Xiu Shui or known as Silk)applied by Beijing Silk Street Market Co., Ltd (the “Silk Company”) was on it. Therefore the mark Silk gains the highest domestic trademark honor. Silk Company, the owner of the trademark stated on its official Weibo (twitter like website in China) account that “it is another milestone on the road of intellectual property autonomous development of Silk Market, and that will boost the development of brands of Silk Market based on the Silk mark.

We are shocked on the news. It’s undeniable that the mark of Silk Street does have a high reputation, and what’s more it was became noted for it was once listed with The Pirate Bay in the notorious market by USTR. Nevertheless, the way of becoming famous of Silk is kind of edge ball, and it remains argued for a mark could be established as well-known for its reputation only. Today, Bridge IP Law Commentary will give our legal analysis on the issues related to the event:

I. Whether Silk (秀水) belongs to generic vocabulary of trademark law

According to China Trademark Law, those marks having reference to the feature of the products or being the generic vocabulary could not be registered as a trademark. The mark registered by the Silk Company obviously comes from the Silk Street market in Beijing, which started in 1980. In other words, before the trademark of Silk, the name of it has been widely known in the country, which also makes it a generic name mainly referring to the Silk Street Market, and any products named after Silk tend to be acknowledged to come from the market. From this aspect, it could be concluded that the name Silk could be “the name having reference to the origin of the product” and the “generic name”. Therefore, it’s questionable whether the name could be approved as the trademark for the exclusive use.

II. Whether Silk(秀水) meets the establishment standard of well-known trademark

Put the above analysis aside, it’s also argued for whether the mark could meet the standard of well-known trademark in the law. As to the elements shall be counted on for the establishment of well-known trademark by the Trademark Law, we analyze as follows:

(1) The Reputation of the mark to the relevant public;

As we all know, the Silk (秀水) is well-known among the public, while such reputation does not come from its trademark use by the company, but for the flood of knockoffs in it, like the fake LV and Hermes collections sold under $100. Therefore, to take such reputation as the basis of the well-known trademark’s establishment is obviously not proper.

(2) The use time of the mark and the consecutive time of its advertisement, degree and geographic area;

The established mark of Silk (秀水) was applied in 2004 and belongs to the “promotion for others” in Class 35. As checked the registered information on the official website of the State Administration of Industry and Commerce, the Silk Company, the owner of the mark has no business scope of marketing or promotion, and the only possible related business is “managing the Silk Market”. Actually, such promotion and marketing for the shop runners is only the tiny part of the market managing, and such promotion and marketing only limit to those shops and products in the Silk Market, then it’s questionable to determine such mark as the nationwide well known one for its limited scope and a small scale.

(3) The record of the mark protected as the well-known trademark

There was the report of infringement against Silk (秀水) as we researched. But such infringement is not kind of violation against the registered class and shall not be taken as the reason for the establishment of well-known trademark. On the other hand, for the name of the mark is the symbol of the knockoffs in China, therefore other’s intention for infringement could not be high and actually no record has been made of such infringement till now.

Of course, we can also see the efforts of Silk Company on reforming the Silk street market, for example, many shops have obtained the official brand license (the link is in Chinese) and its shop runners are more and more consciousness of IPR protection. However, to establish the name as the well-known trademark before the completion of the reform on the market as well as its far-fetched registered semi-class of “promotion for others” could necessary lead to the public argument. Meanwhile, that also make us sign for the shut-down Xiangyang Road Market in Shanghai by the order of the administration, which is quite like the Silk Market, and also who knows it might be the lost of a national brand?

Author: Mr. Luo Yanjie
Attorney-at-law of DeBund Law Offices
Co-author: Mr. You Yunting
Founder & Editor-in-Chief of Bridge IP Law Commentary
Partner & Attorney-at-law of Shanghai DeBund Law Offices
Email: Bridge@chinaiplawyer.com, Tel: 8621-5213-4900,
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Bridge IP Law Commentary is a website focus on the introduction of commercial laws in China, especially the intellectual property laws. All the posts here are our original works. And all news or cases referred here are from public reports, and our comments or analysis are of due diligence, neutrality and impartiality, representing our own opinions only and are our original works. You may contact us shall you have any opinions or suggestions.

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The Name on the Notorious List Could Also be the Well-known Trademark in China

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