Xiong Xuanguo, the vice president of the Supreme People’s Court, proclaimed in his keynote address during the International Symposium on Judicial Protection of IPR in China on Apr. 15th 2008 in Beijing, that the Supreme People’s Court has embarked on drafting judicial interpretation on judicial determination of well-known trademarks in China based on all-inclusive opinions or suggestions from local courts, enterprises and lawyers as well.

1.The remarkable development of judicial protection system of well-known trademark in China

According to Doctor Xiong, after development of more than two-decade, China has established primary legal system of IPR in accordance with the international general rules, forming a relatively comprehensive judicial protection system, covering criminal, civil as well as administrative fields, with criminal law, copyright law, patent law, trademark law and other related judicial interpretations as its framework.

With its high reputation and intangible value, well-known trademark has become the symbol of fortune and reputation as many enterprises aspire to and it has also been regarded as the talisman to succeed in fierce competition. From a global perspective, therefore, special legal protection has been given to the well-known trademark by different means in many countries and regions. And there is no exception in China.

Since the date as of Mar. 19th 1985 when China became the full member of Paris Convention for the Protection of Industrial Property, the first international convention proposing the term of well-known trademark, the Chinese government has begun to assume the responsibilities provided in such convention. To be specific, as early as Aug. 14th 1996, State Administration for Industry and Commerce issued Provisional Measures on the Recognition and Administrative Control of Well-known Trademarks (hereinafter referred to as “Provisional Measures”), for the first time stipulating the protection of well-known trademark in the form of legal documents and defining the term of well-known trademark as well as standards of recognition. Then such authority released Provisions on the Determination and Protection of Well-known trademark in 2003 which replaced Provisional Measures.

Meanwhile, around July 2001, the Supreme People’s Court promulgated Interpretation for Several Questions on the Application of Laws in the Trial of Civil Dispute over Domain Names of Computer, for the first time providing that when trying cases of disputes over domain name, the people's court may determine whether the involved registered trademark is well-known according to the request of the parties concerned and the specific circumstances of the case. And as of Oct. 2001, NPC Standing Committee made amendment to Trademark Law of the People’s Republic of China, bringing the protection of well-known trademark into PRC law at the first time. Two months later, the Supreme People’s Court issued Interpretation for Several Questions concerning the Application of Laws in the Trial of Civil Dispute Arising from Trademark, stipulating the conditions and liabilities for such illegal behaviors as copying, imitating or translating the registered well-known trademark of another person or the major part thereof used on nonidentical or dissimilar commodities as a trademark for the purpose of misleading the general public.

Till then, China has accomplished a relatively all-dimension legal system for protection of well-known trademark, laying a solid foundation for the sound development of well-known mark in the future.

2.The necessity for drafting judicial interpretation

Compared with administrative recognition, judicial determination enjoys such advantages as more convenience, efficiency and low cost. Therefore, with an increasing awareness of the intangible value of well-known trademark within the commercial circle, there has appeared a growing overheated trend to pursuit and compete for well-known trademarks by means of judicial determination, shifting the role the judicial determination is supposed to play from passively safeguarding the rights and interests of enterprises to serving as an approach to advertise their products and lift their reputation. To curb such overheating and eliminate foregoing phenomena, therefore, the Supreme people’s court issued Notice on building up the System of Archival Filing of Judicial Recognition of Well-known Trademarks in Nov. 2006 with an effort to request people’s courts at all local levels verify the identity of each party concernedt and the real purpose of their behaviors in avoidance of any party fabricating the dispute with intention to obtain the recognition of well-known trademark.

Moreover, in recent years, certain interest-driven people’s courts at local level, irrespective of current laws and regulations, has abused their power to carry out unfair recognitions of well-known trademarks in a slapdash and excessive fashion, creating a large number of well-know trademarks in a short time, which has exerted a negative impact on their prestige and reputation in the public. If the Chinese government can not prevent and eliminate such illegal behavior in an effective and timely way, it will ruin the reliance of the customers on the recognized well-known trademarks and eventually paralyze long-building legal protection system for well-known trademark in China as a whole.

Therefore, how to establish and control strictly a unified and applicable recognition standards of well-known trademark has been regarded as the prerequisite and foundation to eliminate the abuse of protection system for well-known trademark and make a judgment on the equity and fair basis in the trial of disputes arising from well-known trademark. At present, a series of factors to be considered in the recognition of well-known trademark have been provided in Article 14 of 2nd Revision of Trademark Law of the People’s Republic of China and fundamental principles thereof also have been proposed and issued by the Supreme People’s Court. Such factors and principles, to some extent, however, are relatively abstract and cannot be served as specific implementing standards in guiding the legal practice, which brought a lot of thorny challenges in our practical trials, including how to define the term of “the relevant public” as well as “the confusion of the public” and how to measure the degree of popularity in the trail of civil dispute arising from well-known trademark.

To assume such challenges, therefore, it is imperative for the Chinese government to draft and issue more specific and applicable judicial interpretation concerning well-known mark determination criteria so as to creak down the rampant abuse of protection system thereof.

3.The framework of such judicial interpretation is emergin

According to the well informed, at present, there are several following respects deserving much attention in the just-finished draft of the interpretation on well-known trademark (hereinafter referred to as “the draft”):

(1) In order to prevent parties concerned from earning high return by means of well-known trademark judicial recognition, the draft provides that if the plaintiff fabricates false fact with the purpose to get the recognition of a well-known trademark, the court shall dismiss the suit. Furthermore, if above party conducts his behavior to such degree that hampering civil litigation, such as fabrication of evidence, he shall take liabilities and be punished by the court pursuant to the related law.

(2) With a view to stop certain business operators from taking advantage of the recognition of well-known trademark written in the judgment to advertise themselves and promote their commodities, the draft stipulates that the determination of well-known trademark shall not be written into the main text of a civil decision. Instead, the Supreme People’s Court will establish information database regarding the well-known trademark recognition and release the verdicts based on the determination of well-known trademark in an appropriate way.

(3). In respond to the different views on the conditions for protection of well-known trademark provided in Article 13.2 of the current Trademark Law, Article 8 of the draft stipulates that the following acts will constitute the acts confusing the public and possibly prejudice the interests of the registrant of the well-known trademark as set out in Article 13.2 of the Trademark Law: (a) the relevant public mix up the source of both commodities or think wrongly that there is a certain relation between both products; (b) depreciate the reputation of the well-known trademark or dilute the well-known trademark to a serious degree. It could be noticed that the mix-up as well as trademark dilution have been deemed as two acts of confusing the public in the well-known trademark determination.

4.The significance of the issuance of such judicial interpretation

In China, the judicial recognition of well-known trademark not only involves the benefit of its registrant but also closely connects the interests and rights of other entities or individuals in the market at large. Therefore, such initiation of drafting interpretation by the Supreme People’s Court is bound to play an active role and bring a far-reaching influence in avoidance of the abuse of well-known trademark protection system, unification of the judicial principles and standards, development of IPR judicial protection system, safeguarding the interests and rights of customers and maintenance of the stability of market economy as a whole.

It is reported that such judicial interpretation is scheduled to be issued in this year.