Interpretation by the Supreme People's Court on Several Issues Concerning the Application of Law to Adjudicate Civil Cases Concerning the Protection of Well-known Trademarks
(Adopted at the 1467th meeting of the Judicial Committee of the Supreme People's Court on April 22, 2009; amended in accordance with the Decision of the Judicial Committee of the Supreme People's Court at the 1823rd meeting on December 23, 2020, regarding the revision of 18 IP-related judicial interpretations, including Interpretation on Several Issues concerning the Application of Laws in Handling Patent Infringement Dispute Cases (II)).
To protect well-known trademarks in trademark infringement civil case adjudication, this Interpretation is hereby formulated in accordance with the Trademark Law of the People’s Republic of China (hereinafter referred to as Trademark Law), Anti-unfair Competition Law of the People’s Republic of China (hereinafter referred to as Anti-Unfair Competition Law), Civil Procedural Law of the People’s Republic of China (hereinafter referred to as Civil Procedural Law) and other relevant laws, with judicial practice taken into account.
Rule 1 The term “well-known trademark” specified in this Interpretation refers to a trademark that is widely known to the relevant public within the territory of China.
Rule 2 In the following civil cases, where a party invokes the well-known status of a trademark as a factual basis, the people’s court shall determine whether the trademark involved therein qualifies as a well-known trademark if such determination is necessary for adjudication of such case:
(1) Where a trademark infringement action is initiated under Article 13 of the Trademark Law;
(2) Where a trademark infringement action or unfair competition action is initiated based on the grounds that the defendant’s enterprise name is identical with or confusingly similar to the plaintiff’s well-known trademark; or
(3) Where an action involves defense or counterclaim that complies with the provisions of Rule 6 of this Interpretation.
Rule 3 In the following civil cases, the people’s court shall not review whether the trademark involved therein qualifies as a well-known trademark:
(1) The establishment of a claim for trademark infringement or unfair competition does not require the well-known status of the trademark involved therein as a factual basis; or
(2) The alleged trademark infringement or unfair competition is not established due to the lack of other statutory elements as prescribed in laws.
Where a plaintiff files an infringement lawsuit, alleging that the domain name registered or used by the defendant is identical with or confusingly similar to the plaintiff's registered trademark and that the e-commerce activities of related commodities conducted through such domain name are sufficient to mislead the relevant general public, such case shall be handled in accordance with item (1) of the proceeding paragraph.
Rule 4 The people’s court shall determine whether a trademark constitutes a well-known trademark based on the proven facts of its fame, comprehensively considering all factors stipulated in Article 14(i) of the Trademark Law. Notwithstanding the foregoing, the people’s court may make a determination exceptionally, where the specific circumstances of the case demonstrate that it is sufficient to recognize the well-known status of the trademark without considering all such factors.
Rule 5 Where a party concerned alleges that its trademark constitutes a well-known trademark, it shall, in light of the specific circumstances of the case, provide the following evidence to demonstrate that its trademark has achieved well known status at the time of occurrence of the alleged infringement or unfair competition:
(1) evidence of the market share, sales regions, profit & tax of the goods using the trademark;
(2) evidence of the duration of continuous use of the trademark;
(3) evidence of the manner, duration, extent, investment input, and geographic coverage of the promotional or advertising activities of the trademark;
(4) evidence of records that the trademark has ever been protected as a well-known trademark;
(5) evidence of market reputation of the trademark; and
(6) evidence of other facts that can demonstrate the trademark has attained well-known status.
The duration, scope, and manner of use of the trademark as referred to in the preceding paragraph shall include continuous use thereof prior to the date of its registration.
The people’s court shall, alongside other evidence for determining the well-known status of the trademark, objectively and thoroughly examine evidence such as the duration of use, industry ranking, market survey report, market value assessment report, and prior records of recognition of well-known trademark.
Rule 6 In a civil lawsuit where the plaintiff claims trademark infringement based on its registered trademark, if the defendant raises a defense or counterclaim alleging that the plaintiff's registered trademark constitutes a reproduction, imitation or translation of its prior unregistered well-known trademark, the defendant shall bear the burden of proving the well-known status of its prior trademark.
Rule 7 If the defendant does not object to the well-known status of a trademark that has been recognized by people’s court or administrative authority prior to the alleged act of trademark infringement or unfair competition occurs, the people’s court shall recognize such well-known status. If the defendant raises an objection, the plaintiff shall bear the burden of proving the trademark’s well-known status.
Unless otherwise stipulated in this Interpretation, the people’s court shall not apply the rules on self-admission of facts in civil proceedings to the determination of a trademark’s well-known status.
Rule 8 For a trademark widely known to the relevant public within the territory of China, if the plaintiff has provided basic evidence of the well-known status of its trademark, or the defendant raises no objection against such fact, the people’s court shall recognize the trademark as a well-known trademark.
Rule 9 Where the relevant public is likely to be misled as to the source of the goods on which the well-known trademark and the contested trademark are used, or where the relevant public is likely to believe that there is a specific connection, such as a license or an affiliation, between the business operators using the well-known trademark and the contested trademark, such circumstances shall constitute “likelihood of confusion” as prescribed in Article 13(ii) of the Trademark Law.
Where the use of a contested trademark is sufficient to lead the relevant public to believe that there is a substantial connection between such trademark and a well-known trademark, thereby diminishing the distinctiveness of the well-known trademark, tarnishing its market reputation, or unfairly capitalizing on its market reputation, such circumstances shall constitute “misleading the public and potentially prejudicing the interests of the well-known trademark registrant” as prescribed in Article 13(iii) of the Trademark Law.
Rule 10 Where a plaintiff seeks to restrain a defendant from using a trademark identical with or confusingly similar to its well-known trademark or trade name on dissimilar goods, the people’s court shall adjudicate the case based on the specific circumstances after comprehensively considering the following factors:
(1) the distinctiveness of the said well-known trademark;
(2) the level of recognition of the well-known trademark among the relevant public using the goods bearing the contested trademark or trade name;
(3) the degree of connection between the goods bearing the well-known trademark and the goods bearing the contested trademark or trade name; and
Rule 11 Where a defendant’s registered trademark violates Article 13 of the Trademark Law by reproducing, imitating or translating the plaintiff’s well-known trademark, thereby constituting trademark infringement, the people’s court shall, upon the plaintiff’s request, rule to prohibit the defendant from using such trademark in accordance with the law. However, if the defendant's registered trademark falls under any of the following circumstances, the people’s court shall not support the plaintiff’s request:
(1) the time limit for requesting invalidation of the defendant’s trademark as prescribed in Article 45(i) of the Trademark Law has already expired; or
(2) where the plaintiff’s trademark had not yet attained well-known status at the time the defendant filed its registration application.
Rule 12 Where an unregistered well-known trademark, for which a party concerned seeks protection, falls under the circumstances specified in Articles 10, 11, or 12 of the Trademark Law as being prohibited from use or registration as a trademark, the people’s court shall not support such claim.
Rule 13 In civil cases involving protection of well-known trademarks, the people’s court’s determination of the well-known status of a trademark shall be treated solely as a factual finding and a ground for the judgment, and shall not be included in the principal part of the judgment. Where the case is concluded through conciliation, the well-known status of the trademark shall not be recognized in the conciliation statement.
Rule 14 Where there is any discrepancy between any prior judicial interpretation of the Supreme People’s Court and this Interpretation, this Interpretation shall prevail.
