The myth of the Chinese well-known mark : formation, debunking and judicial practice

Abstract

The third amendment to the Chinese Trademark Law has improved the provisions on well-known mark protection by stipulating detailed procedures for recognising a well-known mark and adding a prohibition on the commercial use of the words “well-known mark”. These revisions aim to solve the problem that emerged in 2004 of more and more businesses excessively and sometimes illegally seeking well-known mark recognition and using the label “Chinese well-known mark” in advertisements. How this problem originated and developed, and how and whether the current legislation and practice have solved it need thorough exploration.

Previous research has not combined analysis of the application of laws in practice with analysis of the institutional foundation and legal system of well-known mark protection. It has lacked a theoretical framework to illustrate the nature of the problem associated with well-known marks. By using the perspective of semiotic analysis, in particular the mythology of Roland Barthes, this thesis illustrates the nature of the problem of well-known marks and contends that the crux of the problem is that the “Chinese well-known mark” label has become a harmful Barthesian myth which has distorted the informative function of the trademark, deceived consumers and harmed firms’ brand building in the long run.

The myth emerged because of China’s specific historical background and has to some extent been debunked following the change in the institutional and legal environment in the country. There are five main actors in the process of its formation: firms as its producers; trademark agencies as the promoters and helpers of the firms; local government policies that provide incentives for the firms to engage in producing the myth; consumers as the myth readers; and the authorities in charge, including the TMO, the TRAB and the people’s courts, which have failed in the role of mythologists to decipher the myth. In order to further debunk the myth, the problems in judicial practice of the people’s courts should be tackled. Provisions that relate to the good-faith competition principle should be developed and effectively enforced to regulate the excessive recognition of well-known marks and fraudulent litigation. Article 9(2) of Interpretation on Well-known Mark (2009) infused the dilution doctrine into well-known mark protection. However, it has an inherent contradiction and is not suitable for the current Chinese legal context. This has done little to help the court debunk and decipher the myth. This thesis suggests dilution doctrine should be cautiously applied, and explores alternative approaches for strengthening the protection of well-known marks.