A well-known trademark is not an independent type of trademark, but a determination of the state of a trademark's fame. A registered or unregistered trademark widely known to the relevant public in China and enjoying a high reputation may be recognized as well-known and thereby receive cross-class protection beyond identical or similar goods. Recognition follows the principles of case-by-case determination, passive protection, and determination as needed.
Legal Basis
Article 13 of the Trademark Law distinguishes two situations:
- Unregistered well-known trademarks: where a trademark applied for registration on identical or similar goods is a reproduction, imitation, or translation of another's well-known trademark not registered in China, and confusion is likely, registration shall be refused and use prohibited;
- Registered well-known trademarks: where a trademark applied for registration on dissimilar or non-similar goods is a reproduction, imitation, or translation of another's well-known trademark already registered in China, and misleads the public so that the interests of the registrant of the well-known trademark may be harmed, registration shall be refused and use prohibited.
Article 14(1) lists the factors to be considered in recognizing a well-known trademark:
- The degree of awareness of the trademark among the relevant public;
- The duration of use of the trademark;
- The duration, extent, and geographic scope of any publicity for the trademark;
- The records of the trademark being protected as a well-known trademark;
- Other factors relevant to the fame of the trademark.
Determination Paths and the As-Needed Principle
Paragraphs 2 through 4 of Article 14 provide that CNIPA may determine the fame of a trademark as needed in the course of registration examination and the investigation of trademark violations; the trademark review agency may do so in trademark dispute handling; and the people's courts may do so in the trial of trademark civil and administrative cases.
The as-needed principle means that well-known recognition is initiated only when a case genuinely requires it—for example, when cross-class protection is necessary or prior registrations are insufficient to intercept; where ordinary provisions can resolve the matter, well-known status is not determined. This principle prevents well-known recognition from being abused as a marketing label.
Distinction from Ordinary Trademarks
- Scope of protection: the exclusive right of an ordinary registered trademark is limited to the designated goods or services; a registered well-known trademark can prohibit reproduction, imitation, and translation across classes;
- Unregistered marks also protected: an unregistered well-known trademark is likewise protected on identical and similar goods;
- Relaxed time limits: under Article 45, where another party's registration was malicious, the owner of a well-known trademark is not subject to the five-year limit on requests for invalidation;
- Prohibition on commercial publicity: Article 14(5) provides that producers and operators may not use the words "well-known trademark" on goods, packaging or containers, or in advertising, exhibitions, or other commercial activities.
Practical Points and Common Pitfalls
Well-known recognition is won by evidence, not by application. The evidence should form a complete chain covering continuous use before the filing date of the contested trademark, sales scale, advertising investment, market share, and protection records. There are two common misconceptions: first, treating well-known trademark status as a title one can proactively apply for—in fact it can only be determined passively in a specific case; second, treating one determination as a lifetime pass—well-known recognition has no permanent effect and must be re-proven in each new case.
The practical judgment behind these concepts must be tailored to the individual case; before proceeding, you may book a registered agent via MyTMBee for targeted analysis.