What Is A Well-Known Trademark (WKTM)?

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by Fabio Giacopello

 

Reading article 14 TML, we understand that a WKTM is a trademark that is extensively used and advertised, and enjoys high reputation in its field…

Chinese Trademark Law (TML) does not give a precise definition but it can be easily implied from the requirements posed for its recognition. Reading Article 14 TML, HFG Law & Intellectual Property it is understood that a WKTM is a trademark that is extensively used and advertised, and enjoys high reputation in its field[i].

Why Is Having A Well-Known Trademark Important?

From a merely legal point of view – leaving apart marketing considerations – the well-known trademark is a super hero, in the sense that it has “special powers” that “normal” trademarks don’t have. Such special powers are described in Article 13 of TML and are different, based on the fact that the WKTM is already registered or not in China. Provided below is a graphic representation to better explain the statute of rights or scope of protection granted to registered or unregistered WKTM.

Trademarks

A Well-Known Trademark That Is Not Registered In China Must Be Protected For Goods That Are Identical Or Similar To The Goods For Which The WKTM Is Famous.

Special powers consist in obtaining a protection identical to that granted to a registered trademark in the lack of registration and this is a big exception. Indeed a nonregistered and non-WKTM has almost zero rights. In any case, it is to be noted that having a non-registered WKTM is a very rare circumstance: the trademark shall be reputed, widely used and advertised, but its owner has not applied and registered it as a trademark.

More interestingly, the second part of Article art.13 takes into consideration the case of a Well-Known Trademark that is already registered. In such case, the special power granted is the so-called cross-class protection.

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OEM Manufacturing and Trademark Infringement in China

“Made in China 2025” policy forced Supreme People’s Court to Change Direction on OEM Manufacturing Exception to Trademark Infringement

Introduction

For years Western companies have relied on Chinese factories to manufacture their products at low cost and export them back to other markets to be sold with high margin of profit. This is normally referred to as OEM manufacturing, where OEM stands for Original Equipment Manufacturer. This was for decades the main business model for China’s industrial and economic development and it earned China the nickname of “World’s Factory”. In recent years, things have changed. China is now a market with hundreds of millions of consumers buying foreign products online or traveling and shopping abroad, while cheap manufacturing is moving elsewhere to be replaced by High-Tech businesses. In this evolving socio-economic landscape, OEM manufacturing has lost its prior standing in the government policies. China is now projected towards a further integration of its economy into the global capital system. Aside from the already renown “Belt & Road” initiative, China has recently launched “Made in China 2025”, a new grand plan to showcase China’s own brands and industries to the world and move away from being the world’s “factory” to an economy producing higher value products and services.

This policy change embodied in the “Made in China 2025” program, is also reflected in the recent legal developments concerning the relation between OEM manufacturing and trademark infringement. This article will explore the evolution of such relation and will comment on the most recent leading decision on this topic issued by the Supreme People’s Court this October 2019.

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