In opposition proceedings, well-known trademarks enjoy cross-class protection that breaks through the boundary of "identical or similar goods": for an unregistered well-known trademark, copying or imitation on identical or similar goods can be intercepted by opposition; for a registered well-known trademark, imitation extending to dissimilar goods can also be intercepted.
Legal Basis
Article 13 of the Trademark Law provides for the protection strength of well-known trademarks in two paragraphs:
- Paragraph 2: where a trademark applied for on identical or similar goods is a reproduction, imitation, or translation of another party's well-known trademark not registered in China and is likely to cause confusion, it shall not be registered and its use shall be prohibited;
- Paragraph 3: where a trademark applied for on dissimilar goods is a reproduction, imitation, or translation of another party's well-known trademark already registered in China, misleading the public such that the interests of the registrant of that well-known trademark may be damaged, it shall not be registered and its use shall be prohibited.
On this basis, the opponent may file an opposition against an announced trademark under Article 33.
Where Does the "Special" Protection Lie
- Cross-class: an ordinary prior trademark can only intercept similar trademarks on identical or similar goods, whereas a registered well-known trademark can intercept cross-class applications—for example, a well-known clothing trademark blocking an imitative application in the food class;
- Protection even without registration: a trademark that is well-known but not registered in China is equally protected on identical or similar goods—treatment unavailable to ordinary trademarks;
- In invalidation proceedings, the owner of a well-known trademark is not bound by the five-year time limit in the case of bad-faith registration.
Case-by-Case Recognition, Protection on Demand
Well-known trademarks follow the principles of "case-by-case recognition, passive protection, and recognition on demand": it is not a once-and-for-all title—well-known status must be re-proven in each case, showing that the trademark was already well-known before the opposed trademark's filing date. Evidence typically includes: duration and scope of continuous use, sales scale and territory, advertising investment, market share, and protection records (earlier decisions or judgments recognizing the trademark as well-known).
Practical Tips
Claiming well-known status is a heavy evidentiary undertaking, and the materials often run to hundreds of pages. If the opposition can be resolved with an ordinary prior trademark, there is no need to insist on well-known recognition; the well-known path is worth the investment only for cross-class interception or where no prior registration is available.
If you are unsure about the above issues, you may first handle an opposition defense on MyTMBee and act after a registered agent has provided an analysis.