Question and answer of Key Questions in the Guide to Trademark Examination and Trial - Examination and trial of well-known trademarks-Q&A.-Shenzhen deep trust patent Agency Co., LTD

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Question and answer of Key Questions in the Guide to Trademark Examination and Trial - Examination and trial of well-known trademarks

Release Time：

2022-02-08

In order to facilitate the public and trademark practitioners to better understand the Guide to Trademark Examination and Adjudication (hereinafter referred to as the Guide) and respond to social concerns, the Trademark Office of the State Intellectual Property Office has sorted out questions and answers on some key issues in the formulation of the Guide.

The tenth chapter of the "Guide" is "Examination and trial of well-known trademarks", which has been enriched and improved on the basis of the corresponding content of the "Trademark Examination and Trial Standards" (formulated and issued in 2005, the first revision in 2016, hereinafter referred to as the 2016 "Standards"). In the process of formulating the Guide, this chapter has received high attention, and the relevant issues are interpreted as follows:

1. Q: How to understand the principle of "on-demand recognition" in the recognition of well-known trademarks in the Guide?

A: Well-known trademark recognition should be due to the "handling of cases" and not other needs. The understanding and recognition of the principle of "on-demand recognition" of well-known trademarks have experienced a process of development. On April 23, 2009, the Supreme People's Court issued the "Interpretation on Several Issues concerning the Application of Law in the Trial of Civil Disputes involving the Protection of Well-known Trademarks" (Legal Interpretation (2009) No. 3), in which Article 2, paragraph 1, stipulates that "in the following civil dispute cases, the parties take the well-known trademark as the factual basis, and the people's court shall, according to the specific circumstances of the case, If it is considered necessary, it shall determine whether the trademark involved is well-known ", that is, in a civil dispute case, whether the trademark involved is well-known shall meet the requirements of necessity and necessity. In 2013, the third amendment of the Trademark Law elaborated the principle of "on-demand identification" to a considerable extent in the form of law, that is, "well-known trademarks shall be identified according to the request of the parties, as the facts to be identified in handling cases involving trademarks." On July 3, 2014, the former State Administration for Industry and Commerce published the Provisions on the Recognition and Protection of Well-known Trademarks (Order No. 66 of the State Administration for Industry and Commerce), of which the principles of the recognition of well-known trademarks listed in Article 4 are "the principles of case recognition and passive protection", but at the same time, Article 3 stipulates that The recognition of well-known trademarks shall be "based on the request of the parties and the need to examine and handle the case." Based on the above legislative and judicial development, after many studies and discussions, the 2016 Standard lists the principle of "on-demand recognition" as the basic principle of well-known trademark recognition, alongside the principle of case recognition and passive protection, and its content is expressed as "if the contested trademark is significantly different from others' trademarks, Or the goods/services designated for use of the disputed trademark and the goods/services designated for use by others are quite different, and the application for registration of the disputed trademark will not lead to confusion, or mislead the public, resulting in the interests of the well-known trademark registrant may be damaged ", there is no need to identify whether the other's trademark is well-known.

With the continuous standardization of well-known trademark recognition and protection practice, the understanding of the principle of "on-demand recognition" of well-known trademarks has become deeper, the concept of "necessary for the case" or "necessary for handling cases" has been continuously strengthened, and the understanding of "needs" has become more consistent with the purpose of the well-known trademark recognition system. In the practice of trademark authorization confirmation, a consensus has been formed, that is, the implementation of the "on-demand identification" principle should adhere to the protection oriented and result-oriented, in the recognition of well-known trademarks, it should not only adhere to the "necessary to handle the case", "meet the statutory requirements", but also follow the premise of "exhaustion of other means can not be remedies". Therefore, the Guide amended the expression of the principle of "on-demand determination" in the 2016 Standard, making it clear that the so-called "on-demand determination" means that "if other provisions of the Trademark Law can be applied to protect the party's trademark according to the evidence on the record, or the registered use of the contested trademark will not lead to confusion or misleading the public, so that the interests of the party may be harmed," The trademark registration department does not need to determine whether the party's trademark is well-known."

2. Q: How to understand the new principle of good faith in the recognition of well-known trademarks in the Guide?

A: The principle of good faith is the basic principle of civil and commercial law, and also the basic moral code in market economic activities. The principle of good faith requires all market participants to pursue their own interests without harming the interests of others and the common good of society. Article 8 of the Provisions on the Recognition and Protection of Well-known Trademarks published on July 3, 2014 stipulates that "the parties requesting the protection of well-known trademarks shall follow the principle of good faith and be responsible for the truth of the facts and the evidentiary materials submitted." In cases requesting recognition of well-known trademarks, the parties generally make statements of specific facts and submit a large number of evidentiary materials, which are precisely the statements of facts and evidentiary materials in reviewing such cases to determine whether the party's trademark has reached the level of well-known, and whether the registration and use of the contested trademark will cause confusion or mislead the public. The key basis that the interests of the parties may be harmed. In addition, at present, China is vigorously building a social credit system, the implementation of joint punishment of dishonest behavior, preventing the bad consequences of dishonest behavior is one of the important measures. Therefore, the parties who request the protection of well-known trademarks are responsible for the authenticity, accuracy and integrity of the facts and evidence submitted, and no longer identify whether the trademarks of the parties involved in the serious breach of trust are well-known, which is the due meaning of the implementation of the principle of good faith.

3. Q: What changes have been made to the evidence requirements for the recognition of well-known trademarks in the Guide?

A: In order to further deepen the reform of "management service", better suit the actual business conditions of the parties, and facilitate the collection and submission of evidence by the parties, the Well-known trademark recognition part of the Guide has updated the scope of submission of some evidence, recognized the use evidence formed by non-traditional business methods and non-traditional media, and increased the forms of submission of some evidence according to the actual situation. For example, in addition to traditional evidence such as contracts, invoices, bills of lading, bank statements, import and export credentials, etc., online e-commerce sales records and other related materials are added as evidence of trademark use; When reviewing the relevant evidence of sales area scope, sales network distribution and sales channels and methods, it clearly includes traditional and non-traditional business methods; When reviewing media advertisements, reviews, reports, rankings and other campaign materials, explicitly include both traditional and non-traditional media; When examining the evidence related to the amount of tax paid, in addition to the original tax certificate issued by the tax authority and the notarized copy of the tax certificate, a notarized electronic version of the tax certificate is added.

4. Q: What other amendments on the recognition of well-known trademarks in the Guide need the attention of applicants and agents?

A: There are three other amendments to the chapter of the Guide for trademark examiners and relevant practitioners to pay attention to.

The first is to increase the relevant provisions for the re-protection of the recognized well-known trademark, specifying the specific application conditions and the evidence that the holder of a well-known trademark needs to submit a request for the protection of a well-known trademark, which specifically specifies the evidence that the holder of a well-known trademark should submit the well-known status of the trademark when it is protected as a well-known trademark.

Second, combined with practice, the definition of "translation" of other well-known trademarks has been refined. Where the contested trademark expresses the well-known trademark of another person in a different language or text, if the language or text has established a corresponding relationship with the well-known trademark of another person and is well known or habitually used by the relevant public, it constitutes a "translation" referred to in Article 13, paragraph 2, of the Trademark Law, if the language or text is easy to cause the relevant public to believe that there is a considerable degree of connection with the well-known trademark of another person, Also constitutes "translation".

Third, it is no longer a clear division of "confusion" and "misleading", and the specific situation is combined to express it, so as to better meet the requirements of trademark examination and trial practice.

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