The Protection Of Unregistered Well-known Trademark

Chinese law holds the principle of voluntary in trademark registration, recognizing thelegal status of the unregistered trademarks. From the point of law, to protect the unregisteredwell-known trademark favors the compensation for the inadequacy of the single principle ofregistration, and from the point of fact, comparing with the ordinary registered trademark, theunregistered well-known trademark is more valuable and more likely to be infringed, hence itshould be protected. To protect the unregistered well-known trademark is conducive tomaintaining the legitimate rights of consumers, safeguarding the normal order of marketcompetition, and enhancing our international competitiveness, besides, it has already becomea consensus in countries and is in line with relevant regulations of the international treaties.By emphasizing the legitimacy and necessity of an unregistered well-known trademarkprotection, and focusing on the deficiencies of the existing legal system, this paper, adheringto the existing trademark legal system, puts forward the new standards for identifyingunregistered well-known trademarks and it calls for setting up the Right of Continued Use andmodification of the related law to compensate for lack of the protection of unregisteredwell-known trademark. The paper is divided into five parts:The first part is “analysis of the basic content of unregistered well-known trademark”. Inthis part, it generalizes the concept of the unregistered well-known trademarks on the basis ofthe different definitions of well-known trademark at home and abroad. It thoroughly analysesthe legitimacy and necessity of unregistered well-known trademarks protection, describes thethree stages of China’s protection of unregistered well-known trademark, which are “never tobe protected and used”,“never to be protected but can be used” and “providing limitedprotection”; defines the scope of protection of unregistered well-known trademark in China;and puts forward the legitimacy and feasibility of China’s “domestic standards” after thecomparative research of “world standard” and “domestic standards” for protection ofunregistered well-known trademarks.The second part is “identifying of the unregistered well-known trademark”. To indentifythe unregistered well-known trademark is the premise of legal protection, and only when theidentifying work is well done can the protection of the unregistered well-known trademark besurely implemented. In this part, it introduces judicial determination and administrative determination in China’s protection of unregistered well-known trademarks and clarifies therelationship between the two; defines the three principles of identification which are casesidentification, passive identification and needed identification; and explicates thecircumstances when “well-known” is needed to be indentified or not. Having learned from thestandards for determination of the unregistered well-known trademark in other countries andcombining with our country’s concrete practices, this paper proposes that it should increasenew standards for determination: the quality of goods or services, the significance oftrademark and the relevant value.The third part is “comparative study of the protection of unregistered well-knowntrademark”. The part aims to provide some experience and reference to the legislation andpractice for the protection of unregistered well-known trademark in our country through theanalysis of relevant international treaties and foreign legislation on the protection of theunregistered well-known trademark. An overall view of the world protection of unregisteredwell-known trademarks, there are mainly two modes which are the trademark rights and priorrights. Taking Germany and Japan as examples, this paper specifically elaborates theadvantages and shortcomings of the both modes.The fourth part is “protection of unregistered well-known trademark in our country.”This part discusses the reason why the trademarks have been well-known but have notregistered in China, thoroughly analyzes the current situation of unregistered well-knowntrademark protection in China, and points out that to provide relative protection forunregistered well-known trademarks, in accordance with the provisions of the TrademarkLaw and adhering to the principle of obtaining the trademark right through registration, is thebetter choice for China’s current economic and social development. Besides, it further notesthe inadequacy in the protection efforts and scope of unregistered well-known trademark andadministrative remedies, alienation of above in practice, and all these problems are crying outfor solutions.The fifth part is “a suggestion to establish the proper protection system of unregisteredwell-known trademark in our country”. On the problems with the protection of unregisteredwell-known trademark in our country, this part puts forward the correspondingcountermeasures. First of all, the Trademark Law should confer right of continued use toowners of the unregistered well-known trademark, and explain the scope, conditions andrestrictions of this right, so as to balance the interests between owners of the unregistered well-known trademark and holders of the exclusive rights in trademarks. Secondly, we shouldprovide cross-class protections to unregistered well-known trademarks by the “Anti-UnfairCompetition Law”. Because of the principle of trademark registration, the Trademark Lawhas the plight in providing cross-class protection of unregistered well-known trademarks, butthe legislative purpose and open features of the “Anti-Unfair Competition Law” makes itfeasible. Thirdly, we ought to strengthen the administrative functions, shorten the cycle oftrademark registration, give the right to administrative penalties, and provide the appropriatecustoms protection to improve the administrative protection of unregistered well-knowntrademark, and make both the administrative protection and judicial protection collectivelyplay their due roles. Finally, the section puts forward the corresponding countermeasures todeal with the alienation of the unregistered well-known trademark.