Featuring three essential Q&As on the “on-demand recognition” principle, the use of “well-known trademark” wording, and considerations of “substantial connection”.
As a key indicator of brand value and market influence, the recognition of well-known trademarks plays a vital role in brand protection and enforcement. However, the process of gaining such recognition is often challenging in practice. This chapter explores these difficulties in depth, aiming to clarify the recognition pathway for rights holders, mitigate infringement risks, and support stable progress in a shifting market landscape.
Focusing on core topics such as the “on-demand recognition” principle, the use of “well-known trademark” wording, and considerations of “substantial connection”, we have selected three essential Q&As from Chapter 8: Practical Difficulties in the Recognition of Well-known Trademarks of the Practical Q&A Guide to Cutting-Edge Intellectual Property Issues, co-authored by Wolters Kluwer, Lusheng Law Firm, and its strategic partner Rouse.
The three principles for recognizing well-known trademarks are:
The principle of recognition on demand states that a trademark should only be assessed for well-known status if such recognition is necessary for its protection under Article 13 of the Trademark Law. The trademark registration authority may evaluate whether a trademark qualifies as well-known only when required.
However, if the Trademark Law provides alternative grounds for protecting the trademark based on the available evidence, or if the disputed trademark’s registration and use will not cause public confusion or mislead consumers, the registration authority is not obligated to assess whether the trademark is well-known.
In essence, a trademark should be recognized as well-known only when necessary for resolving a specific case, rather than for any other reason.
As practices surrounding the recognition and protection of well-known trademarks have become more standardized, understanding the on-demand recognition principle has deepened. The concepts of “necessary for the case” and “necessary for handling the case” have been increasingly emphasized, aligning the interpretation of “need” with the intent of the well-known trademark recognition system.
A consensus has emerged in trademark authorization and confirmation practices: implementing the “on-demand recognition” principle should be both protection-oriented and results-driven. In recognizing well-known trademarks, it is essential to adhere not only to the premise of “necessary to handle the case” and “meeting statutory requirements” criteria but also to the “no relief can be achieved after exhausting all other means” criterion.
During the examination of trademark opposition cases, opposition appeal, and invalidation cases, if a party claims that the disputed trademark and their previously registered or applied trademark are similar on identical or related goods, or the disputed trademark was obtained through improper means and further asserts that the disputed mark is a copy, imitation, or translation of a well-known trademark that has already been registered in China, they may further assert that the disputed trademark is a copy, imitation, or translation of a well-known trademark registered in China.The Trademark Office examiner will assess whether or not the evidence on record can be protected under other provisions of the Trademark Law. If the evidence supports the protection of the concerned party’s trademark through these other provisions, the examiner does not need to determine whether the trademark is well-known.
Paragraph 5 of Article 14 of the Trademark Law states that: “Producers and operators shall not use the words 'well-known trademark' on goods, packaging or containers, nor in advertising, exhibitions, or other commercial activities.”
Additionally, Article 53 of the Trademark Law specifies that: “Anyone who violates the provisions of paragraph 5 of Article 14 of this Law shall be ordered to correct the violation by the local administrative department for industry and commerce and may be fined up to 100,000 yuan.”
Clearly, the term “well-known trademark” cannot be used in advertising or other commercial activities, including when a third party is entrusted with such publicity. Violating this rule constitutes a so-called general trademark violation, but this does not mean the term “well-known trademark” cannot be used at all.
In 2016, the Trademark Office of the former State Administration for Industry and Commerce (SAIC) clarified in its response regarding the use of the term “well-known trademark” on enterprise websites by stating that: “If an enterprise makes a factual statement on its website or in other business activities regarding the expanded protection of a well-known trademark, without prominently featuring the term “well-known trademark”, it does not constitute an illegal act under Article 14.5 of the Trademark Law.”
In 2019, the State Intellectual Property Office issued a notice emphasizing the need to regulate the recognition, application, and use of well-known trademarks in a limited manner, stating that: “Enterprises may make factual statements about their trademarks’ well-known status in their business activities.”
However, there is no clear definition of what constitutes a factual statement regarding a well-known trademark, making it challenging to delineate boundaries in practice. A less controversial approach would be to provide a truthful account of the facts surrounding the determination of well-known status and the content of any relevant judgment documents, without emphasizing the term “well-known trademark”.
However, any attempt to use the term “well-known trademark” as an honorary title, to prominently feature it to promote the enterprise or its goods or services, or to mislead consumers about the quality and characteristics of the products, exceeds the legal boundaries of factual statements or fair use.
Paragraph 3 of Article 13 of the Trademark Law stipulates that: “If a trademark applied for registration on non-identical or non-similar class is a replication, imitation, or translation of a well-known trademark already registered in China by another person, which is likely to cause confusion, it shall not be registered and its use shall be prohibited”.
This above clause is the most widely used in practice to request the protection of well-known trademarks. According to this provision, the application for registration of the disputed trademark must apply to trademarks that “mislead the public and cause the interests of the registrant of the well-known trademark to be harmed”.
The main circumstances causing confusion or misleading perceptions include:
(I) The relevant public mistakenly believes that the goods or services bearing the disputed trademark originate from the owner of the well-known trademark.
(II) The disputed trademark creates an impression that the producer or service provider has a connection with the owner of the well-known trademark – such as an investment, licensing, or cooperative relationship.
(III) The disputed trademark is likely to make the relevant public associate it with the well-known trademark, thereby weakening the latter’s distinctiveness.
(IV) The registration and use of the disputed trademark could damage the market reputation of the well-known trademark.
(V) The registration and use of the disputed trademark may unfairly capitalize on the reputation of the well-known trademark.
Among these, (I) and (II) primarily reflect the “substantial degree of connection”, while (III), (IV), and (V) describe the potential consequences of such a connection.
To determine whether the use of the disputed trademark is likely to mislead the public and cause potential harm to the registrant of the well-known trademark, the following factors should be comprehensively assessed:
(I) The degree of similarity between the disputed trademark and the well-known trademark.
(II) The originality of the well-known trademark.
(III)The level of recognition and market reputation of the well-known trademark.
(IV) The relevance between the disputed trademark and the goods or services associated with the well-known trademark.
(V) Other factors that may contribute to confusion or misrepresentation.
Based on the above provisions, recognizing a well-known trademark involves multiple considerations. The two most critical factors are:
1. Determining the popularity of the cited trademark – this requires assessing whether the trademark has reached the level of being well-known.
2. Establishing that the disputed trademark has a substantial degree of connection with the well-known trademark, leading to public confusion and potential harm to the registrant’s interests.
Generally, a trademark’s popularity is assessed through submitted evidence. However, a “substantial degree of connection” does not imply that a well-known trademark is automatically entitled to cross-class protection in all categories. Even if evidence proves the trademark's high public recognition, cross-class protection only applies when the goods or services designated by the disputed trademark are meaningfully related to those of the well-known trademark.
If, based on general public perception and everyday experience, the goods or services designated by the disputed trademark are entirely unrelated to those of the well-known trademark – having little overlap in function, sales channels or target consumers – it becomes difficult for the cited trademark to qualify for well-known status and enjoy cross-class protection.
The scope and strength of cross-class protection for well-known trademarks must be commensurate with their distinctiveness and popularity. Paragraph 2 of Article 9 of the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Civil Dispute Cases Involving the Protection of Well-known Trademarks clarifies this element.
In judicial practice, there are objectively different degrees of well-known registered trademarks, and it is not possible to require the same scope of cross-class protection for registered trademarks with different degrees of well-known reputation. The scope of cross-class protection for well-known trademarks generally corresponds to their level of recognition, with broader protection granted to trademarks that have higher public awareness.
In other words, the recognition of a well-known trademark does not require a uniform degree of popularity. Instead, the scope and strength of its protection should be commensurate with its distinctiveness and popularity. That is, trademarks with higher distinctiveness and recognition should be granted a wider protection scope across more classes and with stronger protection.
In collaboration with our strategic partner Lusheng in China and Wolters Kluwer, Rouse has developed a valuable resource for rightsholders: “The Practical Q&A Guide to Cutting-Edge Intellectual Property Issues in China”. This guide, compiled by over 30 senior China IP experts from the two leading IP firms, addresses the key concerns of businesses by providing insights on patents, trade marks, copyright, trade secrets, internet unfair competition, intellectual property investment, and punitive damages in an accessible Q&A format. It offers readers the latest legal interpretations, case studies, and practical guidance applicable to their operations.
To request a full copy, please complete the form through the link here.
Please note due to publishing restrictions we may not be able to fulfil every request. The application will be reviewed, and the report will only be available to corporate organizations. Thank you for your understanding.
Amanda Yang, Principal, Rouse, ayang@rouse.com
Meryl Wang, Senior Associate, Leader of Administrative Litigation Team, Lusheng Law Firm, mwang3@lushenglawyers.com
Fisher Zhang, Senior Trade Mark Attorney, Rouse, fzhang2@rouse.com
Wang Jing, Trade Mark Attorney, Rouse, mwang@rouse.com