August 2019
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The Analysis of Well-Known Recognition in China-—Discussion of the SKECHERS Trademark

China currently does not have specific requirements to determine whether a trademark can be recognized as well-known. Obtaining well-known trademark recognition is reasonably difficult. This article will use one of our clients, Skechers, as an example to discuss the challenges and benefits of obtaining well-known trademark recognition in China.

Our law firm recently received five opposition decisions from the China National Intellectual Property Administration (“NIPA”), in which both SKECHERS & 斯凯奇 (SKECHERS in Chinese) were recognized as well-known trademarks. We represented Skechers U.S.A., Inc, II in oppositions against the target marks  (SKECHERS & SKECHERS in Chinese) No. 22824048 in Class 10, No. 22823985 in Class 15, No. 22823268 in Class 31, No. 22823896 in Class 36 and 22822170 in Class 43, all filed by the applicant Shanghai Shell Fishing Investment Center (in Chinese: 上海挖贝投资中心).

Although there is no specific requirement, China’s trademark law does have rules addressing well-known trademarks. According to Article 13 of China Trademark Law,

Where the holder of a trademark which is well known by the relevant public is of the view that its rights are infringed upon, it may request for protection of well-known trademark pursuant to the provisions of this Law.

An application for registration of a trademark which is a replication, imitation or translation of other's well-known trademark not registered in China for use on identical or similar commodities which is easily misleading shall not be registered and the use of such a mark shall be prohibited.

An application for registration of a trademark which is a replication, imitation or translation of other's well-known trademark already registered in China for use on non-identical or non-similar commodities which is misleading to the public and may cause harm to the interests of the trademark registrant of the said well-known trademark shall not be registered and the use of such a mark shall be prohibited.

The significance of well-known trademark recognition lies in the fact that once the client’s trademark is granted well-known recognition in one case, the client will enjoy a lower burden of proof and a higher chance of success in upcoming prosecution cases. Once a trademark is recognized as well-known, all registration and use by other parties for non-identical or non-similar goods can be prohibited, which can save time and cost for trademark prosecution matters. Moreover, this type of recognition can also help support the client’s enforcement cases where cross-class protection is claimed.

In the above oppositions, Chang Tsi & Partners successfully proved that the mark SKECHERS had been used continuously before the opposed trademark was registered, and the mark was therefore recognized in the market. We collected evidence such as sales revenue, sales territory, advertisements, and trademark usage to support the argument of continuous use. In addition, we submitted a comparison of the SKECHERS logo alongside the Opposed party’s logo in order to showcase their similarities. Since the mark “Skechers” and “斯凯奇” contain no literal meaning, it was obvious that the opposed mark was filed in bad faith. Finally, we proved that the opposed party had filed for hundreds of trademarks which were identical to other famous brands. Based on the above evidence, on July 4, 2019, NIPA issued several official decisions, summarized as follows:

The Opponent’s prior Cited Marks  No.696968 and (SKECHERS in Chinese) No. 1717145 are designated on “shoes; caps” in Class 25. For the present case, the evidence provided by the Opponent is sufficient to prove that the Opponent’s trademark “斯凯奇SKECHERS” trademark designated on “shoes for men, women, and children” is well-known among the relevant public and is granted cross-protection as well-known trademarks through long-term use and wide promotion. Though the designated goods of the opposed mark and those of the Opponent’s cited marks are not associated with similar goods, the opposed mark is identical with the opponent’s cited marks with strong uniqueness in letter composition. Thus, the opposed mark constitutes a duplication and imitation of the Opponent’s well-known trademark, and the registration and use of the opposed mark will mislead the general public and damage the Opponent’s interest. Upon examination, it is noted that the opposed party has filed more than 200 trademarks in many classes and services, some of which are highly similar to famous trademarks which have already been opposed by other parties. The opposite party and the Opponent’s cited marks are entirely identical in letter composition, and the opposite party failed to give a reasonable explanation thereof. Based on the above, this Office recognizes that the opposite party harbors the apparent intention of imitating third-party trademarks. This kind of behavior disturbs the standard trademark registration procedure and is detrimental to the competitive market. It is also in violation of the principle of good faith. According to Articles 30 and 35 of China Trademark Law, the Office hereby decides that the Opposed Mark is not approved for registration.

As stated, it is tough for Chinese officials to recognize a trademark as well-known in China. Even though obtaining well-known trademark recognition is beneficial, there remains no specific standard for NIPA and IP courts to determine whether a trademark is well-known. Therefore, it is important to have an experienced firm help with this stage of portfolio management. Over the years, Chang Tsi & Partners has represented enterprises such as Apple Inc., Formula 1, Tiffany & Co., Kohler, Lego, Skechers, Mead Johnson, Air China, Little Swan, Levi’s, Eclairs, and many others to obtain well-known trademark recognition for their respective trademarks. For example, in the case of Apple Inc. and Formula 1, we have helped Apple Inc. obtain recognition of well-known trademarks 74 times, and 88 times for Formula 1.

15th Anniversary of Chang Tsi & Partners --