What is the principle of active examination in the judicial recognition of well known trademarks?

In well-known trademark cases, a proactive ex officio review should be taken for well-known facts. If, after investigation, there are still doubts about the main evidence, well-known facts should not be determined. The principle of active examination requires trademark owners to enhance their awareness of evidence, strengthen their burden of proof, and supplement it with necessary court investigations, so as to effectively avoid being misled by certain evidence with defective probative force, thereby strengthening the reliability and authority of the recognition of well-known trademarks.

Paragraph 2 of Article 22 of the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Civil Trademark Dispute Cases stipulates that "the determination of a well-known trademark shall be carried out in accordance with the provisions of Article 14 of the Trademark Law. ”

Article 14 of the Trademark Law stipulates that "the following factors shall be considered in determining a well-known trademark:

1) the degree of awareness of the relevant public about the trademark;

2) the duration of use of the trademark;

iii) the duration, extent and geographical scope of any publicity work for the trademark;

4) a record of the trademark being protected as a well-known trademark;

5) Other factors that make the trademark well-known. ”

Materials that shall be provided for judicial determinations.

1. Relevant materials to prove the degree of awareness of the relevant public about the trademark;

2. Relevant materials to prove the duration of use of the trademark, including the relevant materials of the history and scope of the use and registration of the trademark;

3. Relevant materials to prove the duration, extent and geographical scope of any publicity work of the trademark, including the manner, geographical scope, type of publicity and advertising volume of advertising and other relevant materials;

4. Relevant materials to prove the protection record of the trademark as a well-known trademark, including the relevant materials that the trademark has been protected as a well-known trademark in China or other countries and regions;

5. Other evidentiary materials to prove that the trademark is well-known, including the output, sales volume, sales revenue, profits and taxes, sales area and other relevant materials of the main commodities using the trademark in the past three years.

The people's court shall determine whether it is a well-known trademark based on the materials provided.

In the examination of whether a trademark is well-known, the authority of the people's court is the main one, and the parties' arguments and opinions are secondary, and the defense and cross-examination opinions of the alleged infringer shall not have a final impact on the determination of the well-known trademark, even if the alleged infringer recognizes the claims and evidence of the trademark owner, or even recognizes that the trademark is well-known, whether the trademark is well-known or not should still be a fact that the people's court must ascertain, and the trademark owner should still bear the corresponding burden of proof, if it fails to provide evidence to prove the fact, shall bear the legal consequences of failing to provide evidence.

1. Procedures for judicial recognition of well-known trademarks and what issues should be paid attention to.

If an enterprise needs to apply for recognition of a well-known trademark, it must submit relevant materials through the Administration for Industry and Commerce of the province, autonomous region or municipality directly under the Central Government (hereinafter referred to as the provincial-level industrial and commercial bureau). For the relevant materials of the enterprise's application for recognition of a well-known trademark, the provincial industrial and commercial bureaus shall conduct a preliminary examination and sign an opinion. The provincial-level industrial and commercial bureaus shall submit the relevant application materials that have passed their preliminary examination and signed opinions to the State Administration for Industry and Commerce in a timely manner by mail.

When an enterprise applies for recognition of a well-known trademark, it shall submit an application report for recognition of a well-known trademark, and shall provide evidence of the infringement of its trademark rights and interests in the report. At the same time, the Application Form for Recognition of Well-known Trademarks should be filled in truthfully and the corresponding supporting materials should be provided. These supporting materials mainly include:

1. A copy of the copy of the business license of the applicant for the recognition of well-known trademarks;

2. If the applicant for the recognition of a well-known trademark entrusts the trademark ** agency to take care of it, it shall provide a power of attorney signed by the applicant, or an entrustment agreement (contract) signed between the applicant and the trademark ** agency;

3. The main economic indicators of the main goods or services using the trademark in recent years (copies of the annual financial statements or other statements stamped with the special seal of the applicant's financial department and the special seal of the local finance and taxation departments shall be provided, and the industry certification materials shall be issued by the national industry association or the national industry administrative department);

4. The sales or cover operation of the main goods or services using the trademark at home and abroad (copies of the relevant main sales invoices or sales contracts should be provided);

5. The registration of the trademark at home and abroad (the registration of the trademark in all categories of goods or services and in the country or region where it is located should be listed, and a copy of the corresponding trademark registration certificate should be provided);

7. The earliest and continuous use time of the trademark (the earliest sales invoice or contract for the goods or services using the trademark or the earliest advertising or trademark registration certificate of the trademark shall be provided);

8. Other supporting documents related to the well-known trademark (such as a copy of the provincial famous trademark, etc.).

Enterprises applying for recognition of well-known trademarks can prepare application materials on their own, or they can entrust a trademark agency approved by the State Administration for Industry and Commerce. The provincial industrial and commercial bureaus will not accept the application materials for the recognition of well-known trademarks submitted by institutions or individuals that do not have the qualifications of trademarks. A trademark agency entrusted by an enterprise to handle matters related to the application for recognition of a well-known trademark shall not charge any other fees to the client except for the appropriate ** fee.

Legal analysis: The following issues should be considered in the judicial recognition of well-known trademarks: First, it is necessary to accurately grasp the criteria for the recognition of well-known trademarks to ensure the authority and credibility of the judicial recognition of well-known trademarks.

Second, intellectual property dispute cases involving the recognition of well-known trademarks should be strictly examined, and the parties should be resolutely prevented from obtaining the recognition of well-known trademarks through "false litigation" or "fictitious litigation". Third, it is necessary to strictly follow the provisions of the law and relevant judicial interpretations to hear cases involving the recognition of well-known trademarks, and only when it is truly necessary to recognize well-known trademarks.

Legal basis: Article 14 of the Trademark Law of the People's Republic of China A well-known trademark shall be recognized as a fact that needs to be determined in handling a trademark case at the request of the parties. The following factors shall be considered in the recognition of a well-known trademark:

1) the degree of awareness of the relevant public about the trademark; 2) the duration of use of the trademark; iii) the duration, extent and geographical scope of any publicity work for the trademark; 4) a record of the trademark being protected as a well-known trademark; 5) Other factors that make the trademark well-known. In the course of trademark registration examination and investigation and handling of trademark infringement cases by the administrative department for industry and commerce, if a party claims rights in accordance with Article 13 of this Law, the Trademark Office may, according to the needs of examination and handling of the case, make a determination of the well-known status of the trademark. In the course of handling trademark disputes, if a party claims rights in accordance with Article 13 of this Law, the Trademark Review and Adjudication Board may, according to the needs of handling the case, make a determination of the well-known nature of the trademark.

In the course of adjudicating a civil or administrative trademark case, if a party claims rights in accordance with Article 13 of this Law, the people's court designated by the High People's Court may, according to the needs of the case, make a determination of the well-known nature of the trademark. Producers and operators shall not use the words "well-known trademark" on goods, commodity packaging or containers, or in advertising, exhibitions and other commercial activities.

The constituent elements of a trademark under the Trademark Law are: words, graphics, letters, numerals, three-dimensional signs, color combinations and sounds, or a combination of the above-mentioned elements. It can be seen that there are many statutory constituent elements of a trademark, but if the constituent elements of the trademark contain variant Chinese characters, or if the trademark is composed of short pure numbers or letters, it will be difficult for the trademark to pass the substantive examination.

Substantive examination is an examination of whether a trademark meets the requirements for registration. Whether the trademark applied for registration can be preliminarily examined and published depends on whether it has passed the substantive examination.

Substantive examination includes the following aspects:

1. Whether the trademark violates the prohibition clause of the Trademark Law.

2. Whether the trademark has statutory constituent elements and whether it has distinctive features.

3. Whether the trademark is confused with the trademark registered by others on the same or similar goods, and whether it is confused with the trademark that has been applied for earlier and the registered trademark that has been cancelled or invalidated for less than one year.

In this way, China's well-known trademark recognition authorities include administrative organs and judicial organs, which has changed the situation in which the administrative organs took charge of the overall situation in the past. Therefore, the corresponding well-known trademark recognition channels can also be divided into administrative recognition and judicial recognition: 1. Administrative recognition method 2) Application to the industrial and commercial department for recognition of a well-known trademarkIn the course of trademark management, if the party concerned believes that the trademark used by others falls under the circumstances specified in Article 13 of the Trademark Law, it may submit a written request to the administrative department for industry and commerce at or above the municipal, prefecture or state level where the case occurred to prohibit the use, and submit relevant materials to prove that the trademark is well-known.

The administrative department for industry and commerce will conduct an examination and report to the Trademark Office step by step, and finally the Trademark Office will make a determination within 6 months. 3. If the party applying to the Trademark Office for recognition of a well-known trademark believes that the trademark of another person that has been preliminarily approved and published violates the provisions of Article 13 of the Trademark Law, it may file an objection with the Trademark Office within three months in accordance with the provisions of the Trademark Law and its implementing regulations, and submit relevant materials to prove that the trademark is well-known, and may apply for recognition of well-known trademark at the same time. 4. Application to the Trademark Review and Adjudication Board for recognition of a well-known trademark means that if a party believes that a trademark registered by another person violates Article 13 of the Trademark Law, it may apply to the Trademark Review and Adjudication Board for a ruling to cancel the registered trademark in accordance with the provisions of the Trademark Law and its implementing regulations, and submit relevant materials to prove that the trademark is well-known, and may apply for recognition of a well-known trademark at the same time.

5. Judicial recognition channel: apply to the people's court for recognition of well-known trademarks. A party that has registered a well-known trademark believes that the trademark used by another person falls under the circumstances stipulated in Article 13 of the Trademark Law, and may directly file a lawsuit with the people's court and apply to the court for recognition of the well-known trademark. In addition, if there is an objection to a well-known trademark that has been recognized by the Trademark Office or the Trademark Review and Adjudication Board, the party concerned may request examination from the people's court.

Therefore, the people's court not only has the right to recognize well-known trademarks, but also has the right of judicial review of the recognition of well-known trademarks by trademark administrative organs. This is more conducive to ensuring the fairness, openness and reasonableness of the recognition of well-known trademarks. At the same time, it should be noted that different recognition paths are for different situations and occur at different stages (during the application or after the trademark is registered).

The time limit for the recognition of different well-known trademarks also varies: the time limit for the Trademark Office is 6 months, and for the opposition application, it is 1 and a half years; The Trademark Review and Adjudication Board has a ruling time of 2 years; The people's courts are to follow the first-instance and second-instance trial procedures for a total of 9 months. In addition, the effectiveness of the various pathways is different:

The determination of the administrative organ is not a final ruling, and if the parties have objections, they may continue to request the judicial organs to conduct a review; The judgment of the people's court is final.

The examination of trademark novelty usually starts with the whole or part of the words, graphics or a combination of the two used in the trademark, and compares them according to the following four situations:

1) Compare whether two trademarks are identical on the same goods;

2) Compare whether two trademarks are similar on the same kind of goods;

3) Compare whether the two trademarks are identical on similar goods;

4) Compare whether two trademarks are similar on similar goods. According to Article 17 of the Trademark Law of the People's Republic of China, "if the trademark applied for registration does not comply with the relevant provisions of this Law or is identical or similar to the trademark that has been registered or preliminarily approved by another person on the same or similar goods, the Trademark Office shall reject the application and shall not publish it." ”

According to the provisions of the Trademark Law, China implements the principle of examination of applied trademarks, and the Trademark Office appoints an examiner to conduct the examination. The examination consists of two steps: formal examination and substantive examination. a. Formal examination is the examination of whether the documents of the trademark registration application can be accepted.

The formal examination includes the examination of the qualifications of the trademark registration applicant and whether the filling in of the trademark registration application is true, correct, accurate, clear and complete, that is, whether the documents comply with the provisions and whether the procedures are complete. b. Substantive examination is an examination of whether the trademark meets the conditions for registration. Substantive examination is mainly conducted from two aspects:

The examination of an absolute reason for refusal of trademark registration is mainly to examine whether the trademark is distinctive, whether it violates the prohibition clause of the law; The second is the examination of the relative reasons for refusal of trademark registration, which is mainly to examine the conflict between the trademark and the trademark rights of the earlier application or registration, also known as the examination of novelty. Meng Huimin.