Driving success: Well-known trade mark status in China
Aston Martin successfully obtains "well-known trade mark recognition" in China
14 December 2018
This article considers a recent win by Clifford Chance for its client Aston Martin Lagonda Limited in successfully obtaining "well-known trade mark recognition" in China for the "ASTON MARTIN" mark. The article summarises the factors that helped secure the win and outlines the protection and benefits offered by the status.
Clifford Chance recently assisted Aston Martin Lagonda Limited ("Aston Martin") in successfully obtaining "well-known trade mark recognition" in China for the "ASTON MARTIN" mark. The recognition, issued by the PRC Trademark Review and Adjudication Board ("TRAB"), was part of a decision for a successful invalidation action brought by Aston Martin against a Chinese trade mark squatter.
The recognition was a well-deserved win, particularly in view of the established fame of "ASTON MARTIN" in both China and around the world. Other important factors contributing to the successful outcome were the inclusion of tailored submissions and the comprehensive presentation of evidence highlighting the "fame" of the mark.
Well-known status for foreign brand owners
Well-known trade mark recognition is a very powerful tool for combating infringers and trade mark hijackers as it offers a much broader scope of protection than offered to normal registered trade marks.
The evidentiary burden to obtain well-known trade mark recognition in China is high. Historically, it has always been difficult to obtain well-known trade mark status, especially for foreign brand owners who will have more difficulty in collecting evidence of use and promotion in China. According to statistics from the Chinese Trade Mark Office ("CTMO"), between 2012 and 2013 only around 20 out of 1,300 trade marks recognised as well-known under the old trade mark law originate from foreign brands. Even after the new PRC Trade Mark Law ("TML") came into effect in 2014, foreign brands have continued to experience difficulty in obtaining recognition especially when compared to domestic Chinese brands which naturally have more local presence.
Protection and benefits of well-known trade marks
Under Article 13 of the TML, the degree of protection afforded to well-known trade marks depends on whether the mark is registered in China or not. Both registered and unregistered marks are protected against the use and/or registration of third party marks which are reproductions, imitations or translations of the well-known trade mark. This wording is slightly wider than the usual protection given to prior marks on the register which would be protected against other marks which are "identical or similar".
Well-known trade mark protection is an exception to the "first-to-file" rule and sub-classification system in China. Well-known trade marks registered in China are given cross-class protection: third party marks covering non-identical or dissimilar goods or services will not be allowed to be registered (as long as the use of such marks would confuse the public and prejudice the interests of the registrant of the well-known mark). Protection for unregistered well-known marks extends to identical or similar goods or services.
This proves to be especially helpful in infringement cases. Infringers nowadays have become more sophisticated than ever. Very often infringers do not merely copy famous brands entirely. Instead, they may imitate famous brands by copying some parts of the design with other elements added in; or they may use a pirated (or imitated) mark that is not registered in relation to precisely the same goods/services. When faced with such infringing activities the potential enforcement actions will not be so straight-forward for normal trade marks.
However, owners of well-known trade marks are able to assert their rights against such infringing use with increased chances of success, so long as the infringing use is after the date for which the trade mark has been officially recognised as well-known.
Recognition process and supporting evidence
Well-known trade mark status is determined on a case-by-case basis by the Court or trade mark authorities when considering the merits of infringement cases or oppositions or invalidations in China. A request for the recognition of a well-known trade mark can be made to (i) the CTMO in trade mark opposition cases, (ii) the Administration for Industry & Commerce ("AIC") when trade mark infringement is being investigated, and (iii) the TRAB in trade mark refusal and invalidation cases. Courts may also recognise the well-known status of a trade mark in civil and administrative trade mark cases.
A request for well-known recognition must be supported by ample factual evidence of reputation. Under the "Provisions on the Determination and Protection of Well-Known Trademarks" (which became effective in August 2014), a mark must be shown to be "widely known by the relevant public in China" before well-known recognition is granted. This burden is higher than the standard under previous trade mark laws, which merely required the mark to be "generally known by the relevant public in China and enjoys a relatively higher reputation".
The following evidence is taken into account:
- materials showing the relevant public's knowledge of a mark;
- materials showing the period of use of a mark, such as materials on historical use, scope of use and registration of the mark;
- materials evidencing the duration, intensity and geographical reach of any promotion of the mark, such as materials showing the manner, geographic scope, type of media and the quantity of advertisements in the three years prior to the filing of the mark which is the subject of the case;
- materials showing that the mark has been protected as a well-known trade mark in China, or in any other country or region; and
- other materials showing that the mark is well-known, such as the revenue, market share, net profit, taxes on and sales territories of key products bearing the mark in the three years prior to the filing of the mark which is the subject of the case.
The Aston Martin case
In July 2015, a Shanghai company obtained a registration for "AstonMartin" in Class 10 (the "hijacked mark") covering the goods "medical apparatuses and instruments". Subsequently, in 2016, Clifford Chance on behalf of Aston Martin filed an invalidation application against the hijacked mark with the TRAB.
Amongst other arguments in the invalidation action, Clifford Chance requested that Aston Martin's PRC reg. no. 767245 for "ASTON MARTIN" in Class 12 be recognised as well-known in China. To support this request, various media coverage was produced as evidence, including Chinese materials on the history and background of Aston Martin, marketing brochures and photos of the mark's participation in exhibitions, and registration certificates of ASTON MARTIN marks.
The TRAB accepted the evidence as sufficient to show that the "ASTON MARTIN" mark had achieved well-known status in China in relation to automobile and related accessories prior to the filing date of the hijacked mark. By extension, the mark "ASTON MARTIN" was afforded cross-class protection under the PRC Trademark Law and the hijacked mark was declared invalid.
Enforcement efforts and how you should prepare
Decisions acknowledging the well-known status of trade marks are followed by government departments such as the CTMO, the TRAB and the AIC (unless the opposing party produces sufficient evidence to dispute this finding). These decisions will be useful as evidence in both applications and enforcement cases.
Brand owners who are looking to obtain well-known status protection for their marks in China will need to document and collate evidence of use and promotion in China in a careful and considered manner. In addition, since the recognition is issued as part of the overall decision on the merits of a particular case, it is important to strategically select an appropriate case to enhance the chances of obtaining such recognition. The filing date of the other party's mark will be an important consideration since it will be the reference date used by the Court and the authorities in their assessment as to whether the brand owner has produced evidence of having attained a well-known status.
Despite the need to devote substantial time and effort in collecting evidence and preparing appropriate submissions, obtaining a well-known status mark would greatly facilitate future enforcement actions in China. It should therefore be considered by all brand owners who have substantial presence or fame in China as part of their brand/enforcement strategy in the country.
Key Take-Away Points
- Clifford Chance recently assisted Aston Martin Lagonda Limited in successfully obtaining well-known trade mark recognition in China for the "ASTON MARTIN" mark.
- Well-known trade mark recognition is a powerful tool for combating infringers and trade mark hijackers as it offers a much broader scope of protection than offered to normal registered trade marks.
- Brand owners looking to obtain well-known status protection for their marks need to document and collate evidence of use and promotion in China in a careful and considered manner.