The fifth revision of the Trademark Law has set off a wave of discussions on trademark-related issues. Since well-known trademarks are the hardest-hit areas of infringement, the protection system of well-known trademarks has also become one of the focuses of QBPC members. In order to discuss how to improve the well-known trademark protection system, China Intellectual Property Masters Forum and Intellectual Property Finance and Economics jointly hosted the fifth session of a series of seminars - Improvement of the Well-known Trademark System on March 17. Michael Yu, Chair of the Legal Committee of QBPC, participated in the discussion on relevant issues.
According to Michael Yu, the change from the "recognition" of well-known trademarks to "confirmation" of well-known status could help to correct the public's perception, so that the protection of well-known trademarks could be recognized as a rule, and the administrative and judicial organs would not be over cautious towards such cases in the future. Secondly, for on-demand determination, "on-demand" was the full protection of trademark right holders, including infringement characterization, infringement compensation, and timeliness of cessation of infringement.
Then, with regard to the adjustment of the factors determining well-known trademarks, he believed that adding the status of trademark application and registration was conducive to the protection of well-known trademarks owned by foreign-funded enterprises. For the determination of overseas evidence, it should be considered if its influence could reach the relevant Chinese public, especially when the other party's malice was obvious. As for the newly added determining factor of "trademark value", he did not recommend to include it in the law because the valuation of intangible property was still immature and uncertain in practice, so as not to increase the cost for holders and make the protection of well-known trademarks more complicated. In addition, the scope of cross-class protection of well-known trademarks was mainly based on the popularity and distinctiveness of the relevant trademarks. Due to rampant bad-faith registration and China's adoption of the first-to-file principle, the anti-dilution rule for the protection of well-known trademarks was very necessary.
Finally, in view of the improvement of the provisions on the protection of well-known trademarks, Michael Yu suggested that "unregistered" be removed from the first paragraph, so that in practice, in the case of similar goods, the relevant provisions could be directly and better applied to protect well-known trademarks in a timely manner instead of prioritizing the invalidation procedure. At the same time, the second and third paragraphs should be combined into one and "super well-known trademarks" abandoned in order to prevent complications and uncertainties in the protection of well-known trademarks. Otherwise it might increase the difficulty of proof and the cost for right holders as well.
This series of seminars focused on multiple important topics in the fifth revision of the Trademark Law, including the protection of well-known trademarks, the boundaries of trademark protection, legal liability for the infringement of trademark rights, and the rules on malicious registration and litigation.