18

Well-Known Trademark Protection: A Comparative Study
between Japan and China
Invited Researcher: Mingde Li(*)

While the well-known trademark protection is an important issue in domestic andinternational trade, Paris Convention and TRIPS Agreement oblige members to protect
well-known trademarks under both the doctrine of confusion and the doctrine of dilution. In thisrespect, Japan and China have provided such protection in their trademark law and unfair
competition law. This paper is to compare the legal provisions, practices, and cases related
between Japan and China, and to find some solutions to the problems resulted in China in theprotection of well-known trademarks.
To protect the well-known trademarks under the doctrines of confusion and dilution are thecommon aspects in Japan and China. In comparing the legal provisions, practices, and cases, thepaper suggests that China shall learn some practices from Japan, such as applying the doctrine ofabuse of trademark right, or enabling a court to invalidate a registered trademark so as to protect
unregistered well-known trademarks. The paper as well points out that China should follow theJapanese legislative practice to protect well-known trademarks under the doctrine of dilution inboth trademark law and unfair competition law, rather than only in trademark law.
To deal with the relationship between trade name and well-known trademark, and the effectof the designated well-known trademark, are the special problems resulted in China. The paper
recommends that China shall accept the Japanese view that a trade name has a name aspect anda property aspect, and the former is regulated by the trade name recoding regulation and thelater is regulated by the unfair competition law. The author also suggests that the effective of adesignated well-known trademark in the disputes shall be confined to the specific case, has noting
to do with advertisements and government merits.
The paper concludes that Chinese legislative, administrative, and judicial agencies shalllearn the related legal provision, practice, and cases from Japan, and thereof improve thewell-known trademark protection in China.

Iestablished legislations for well-known
trademark protection.
Since both China and Japan are civil-lawcountries,
theirlegal
provisions forwell-known trademark protection andoperations thereof are relatively similar.
Relevant legislations, court decisions, andacademic theories generated in Japan are ofsignificant value as references for China.

Introduction

The term “well-known trademark” refers
to a trademark, registered or unregistered,
which is known to the public and has arelatively high reputation in a particularcountry or region. On the international level,
the Paris Convention requires the countriesof the Union to protect unregisteredwell-known trademarks. Based on thisrequirement, the TRIPS Agreement further
requests that Members should afford
protection for well-known trademarks underthe doctrine of dilution. In accordance withthis request, both China and Japan haveII

Protection under the doctrine ofConfusion
The doctrine of confusion applies mainly(*) Professor, Institute of Law, Chinese Academy of Social Sciences; Deputy Director, Intellectual Property Center, CASS

1IIP Bulletin 2007

provided by such other person, although it
does not cause confusion among consumers
as to the source of goods or services, it may
cause damage to the well-known trademark
by reducing or diluting the trademark’spower to indicate the source.
Since traditional trademark law isdesigned to protect trademarks for thepurpose of preventing confusion, many
countries
provideforprotectionofwell-known trademarks under the doctrine ofdilution in unfair competition prevention law.
This is because that where a person uses
another person’s well-known trademark or
trademark similar thereto for the purpose ofdiluting the trademark, such use does notcause confusion among consumers but takes
advantage of the goodwill of the well-known
trademark, it constitutes an act of unfair
competition. Some other countries andregions, however, include provisions forpreventing dilution in trademark law. In thisrespect, China provides the protection ofwell-known trademark under both thedoctrine of dilution and the doctrine ofconfusion in the trademark law.
The approach of preventing dilution ofwell-known trademarks in Japan may givesome guidances to China. On the one hand,
the Trademark Act prevents dilution ofwell-known trademark in the examination
procedures. On the other hand, the Unfair
Competition Prevention Act as well prevents
dilution by regulating the use of well-known
trademarks. Therefore in the legislativeaspect and the operational aspect, theTrademark Act and the Unfair Competition
Prevention Act supplement each other andrealize the protection under the doctrine ofdilution to a relatively satisfactory extent.

to the protection of unregistered well-known
trademarks. Both China and Japan upholdthe principle that trademark rights shall beobtained by registration, which is different
from that of the United States where atrademark right is obtained by the use oftrademark. At the same time, China andJapan rely on the doctrine of confusion andprovide for the protection of unregisteredwell-known trademarks in trademark law
and unfair competition prevention law.
Accordingly, the trademark authorities andcourts in these countries protect unregisteredwell-known trademarks in the course of
examinations for registration or judicialproceedings.
However, Japan has some uniquepractices in this respect, which may serve as
helpful references for China. For instance, inthe case where a unregistered well-known
trademark is registered by a party other than
the trademark owner before the ownerobtains registration, Japanese courts afford
necessary protection for the trademark ownerby applying the doctrine of abuse of
trademark right, without making adetermination of the validity of thetrademark right registered by such otherparty. Chinese courts should take thispractice as reference. Furthermore, under
Article 39 of the Trademark Act revised in
2004, Japanese courts are now allowed todirectly deny the validity of a registeredtrademark, without waiting for the JPO trial
board to make an award as to the validity ofthe trademark registration. This revision has
not only simplified the relevant procedures
but also made it possible to protect
unregisteredwell-known
trademarks
effectively. The Chinese legislature should
also learn a lot from this legal reform.

IV Trade Names
Trademarks

III Protection under the Doctrine ofDilution

Well-Known

Trade names are closely related totrademarks. In many cases, trade names
contained in company names also serve ascompanies’ trademarks. Article 8 of the Paris
Convention requires the countries of theAccording to the doctrine of dilution,even if a person uses another’s well-known
trademark or trademark similar thereto forgoods or services that are not similar to those
2IIP Bulletin 2007

andIn principle, a determination is made for eachwell-known trademark, and the effect thereofis defined on a case-by-case basis, having
nothing to do with business advertising.
On the other hand, in China, adetermination of a well-known trademark is
not only related to the solution of a particularcase but also is significant to the extent to go
beyond the case in at least two aspects.
Firstly, it is significant in terms of businessadvertising; once a trademark is determined
to be a well-known trademark in theadministrative or judicial proceedings, theowner of the trademark can advocate inadvertising that his/her trademark is awell-known trademark, thereby acquiring an
advantage in the market. On the other hand,owners of trademarks without suchdetermination
cannotadvertise
theirtrademarks as well-known ones, regardless of
how well-known in fact they are. Secondly,
determinations of well-known trademarks
are significant as a means for the local
governments to proclaim their achievements.
Without the understanding of the true
meaning of making a determination of awell-known
trademark,mostlocal
governments in China have a false idea thatwell-known trademarks are proof of theabilities of the companies in their territories,
and therefore they demonstrate the local
governments’ own achievements. Some local
governments urge competition for having
more well-known trademarks under theslogan of “Create More Well-Known
Trademarks!”
Since well-known trademarks are
significant beyond individual cases, questioneven arises as to who should make adetermination of a well-known trademark
and what standards should apply to making
determination. In this context, the Ministryof Industry and Commerce issued the“Provisions on Determination and Protectionof Well-Known Trademarks” in 2003 and theSupreme
People’s
Court
issuedthe“Notification on the Establishment of theSystemfor
Recording
Judicial
Determinations of Well-Known Trademarks”
in 2006. These are intended to ensure

Union to protect trade names. While mostcountries protect trade names under unfair
competition prevention law, some othercountries have specific legislation to providefor the registration of trade names.
In Japan, a trade name is regarded
separately as name aspect and property
aspect, of which thename aspect isregulated by the commercial registration,and the propertyaspect is regulated by theUnfair Competition Prevention Act. Under
this principle, Japanese courts appropriately
coordinate the relationships between trade
names and well-known trademarks, andbetween well-known trade names andregistered trademarks.
However, in China where a trade name is
not regarded as two aspects as in Japan,
confusion arises in the protection of trade
names and the relationship between tradename and well-known trademark. The
administrative authorities equally treat theeffect of a recorded trade name and the effectof a registered trademark, based on the ideathat the recording of a trade name is thegrant of a right. On the other hand, Chinese
courts sometime hesitate to determine therelationships between trade names andwell-known trademarks, placing emphasis on
the normal use of the recorded trade name.
The administrative authorities, judicial
agencies and academic circles in China
should understand and accept the fact thatJapan applies two approaches of interpretingtrade name for coordinating the relationshipbetween trade name and well-known
trademark,while
providingsufficient
protection of well-known trademark.

V

Effect of Well-Known Trademarks

In Japan, both when the patent officemakes
determinations
ofwell-known
trademarks in the course of the trademark
examination procedure, objection procedureand invalidation proceedings, and whencourts make determination of well-known
trademarks in trademark disputes, they only
focus on the dispute settlement in question.
3IIP Bulletin 2007appropriate determinations of well-known
trademarks.
The administrative authorities, judicial
departments and academic circles in China
should return to the true meaning ofwell-know trademark protection and limit
the effect of determination and protection of awell-known trademark to a particular case ordispute solution.

VI Conclusion
The report is a comparative study oflegal provsions and operations on theprotectionof
well-known
trademarks
between China and Japan, focusing on thefour aspects, namely protection under thedoctrine of confusion, protection under thedoctrine of dilution, the relationship between
trade name and well-known trademark, andthe effect of a well-known trademark. China
and Japan have some features in common inthis area, whereas China has its own
problems. The comparative study has
revealed that the legal provisions on
well-known trademark protection andrelevant theories and practices generated inJapan can be used as references for China inmany ways.
If Chinese legislative, administrativeand judicial bodies as well as academic circles
fully recognize and understand Japan’s legalprovisionson
well-known
trademarkprotection and relevant theories andpractices, they will obviously be able tocorrect and improve relevant legal provisions
and practices in China. When applying suchtheories and practices for well-known
trademark protection imported from Japan,
China will be in accordance with theprinciple of well-known trademark protection
under the Paris Convention and the TRIPS
Agreement.

4IIP Bulletin 2007