According the article 13 paragraph 2 of the Trademark Law, “with regards to the applied trademarks that are duplicated, imitated or translated based Well-Known Trademarks already registered in China by others on different or distinct products, that confuse the public, and that incur harm on the benefits of the registrant of the Well-Known Trademarks, registration will not be approved and use will be prohibited.” This indicates that Well-Known Trademarks can be protected across different categories.

Many applicants assume that protection across categories means protection in all categories, and as long as the trademarks are similar, no matter how different the products or services are, the Well-Known Trademarks can be protected. This interpretation is too narrow.

Example: the Trademark Office of the State Administration for Industry & Commerce of the People’s Republic of China ruled in the (2001) trademark opposition no. 02790 “XXXX” trademark opposition adjudication that, “the opposed trademark “XXXX” does not constitute a similar trademark with products or services associated with the priorly registered “XX”, “XX” and other trademarks, cited by the opposer. The opposer’s assertion of the opposed party duplicating, plagiarizing and diminishing its trademark and of the infringement on the right to title and the copyright of the company lacks evidence.

The “XXXX” trademark cited by the applicant of this case was approved as a Well-Known Trademark in the Well-Known Trademark [2005] “Official Reply on the Approval of “XXXX” Trademark as a Well-Know Trademark”, announced on December 31th, 2005, by the Trademark Office of the State Administration for Industry & Commerce of the People’s Republic of China. Although “XXXX” trademark was approved, Trademark Office did not continue to recognize it as a Well-Known Trademark in this case, on the grounds that “the assertion of the opposed party duplicating, plagiarizing and diminishing the Well-Known Trademark lacks evidence”. Because the Trademark Law stated clearly that the precondition of protection of Well-Known Trademark across categories is that the opposed trademark must have “confuse(d) the public, and that incur(red) harm on the benefits of the registrant of the Well-Known Trademarks”, the owner of the Well-Known Trademark must supply the evidence of not only the infringer’s subjective transgression, but also the possibility of the use of the trademark causing confusion in customers of different fields and harming the owner’s benefits. 

In conclusion, as far as the author is concerned, the cross-category protection of Well-Known Trademarks must fulfill the following three conditions:

Firstly, the trademarks are duplicated, imitated or translated based the Well-Known Trademarks already registered in China by others on different or distinct products;

Secondly, the trademarks have confused the public

Thirdly, the benefits of the registrants of the Well-Known Trademarks might be harmed.

Most registrants often focus on the first part but do not know that the second and the third are the key basis for cross-category protection of Well-Known Trademarks