On July 18, 2024, the “Key Issues and Solutions in the Protection of Well-Known Trademarks” business seminar, jointly organized by the Trademark Law Committee of the Guangdong Lawyers Association and Longan (Guangzhou) Law Firm in Beijing, was successfully held. The event featured keynote presentations by Wu Rangjun, Deputy Director of the Copyright Law Committee of the Guangdong Lawyers Association, Deputy Director of the Longan Guangzhou Management Committee, and senior partner, and Qiu Binbin, Secretary-General of the Trademark Law Committee of the Guangdong Lawyers Association and senior partner at Guangdong Hanrui Law Firm. He Jun, Deputy Director of the Trademark Law Committee of the Guangdong Lawyers Association and managing partner at Guangdong Fangtu Law Firm, served as the moderator of the event. The seminar focused on typical cases and in-depth discussions on current key issues and challenges in the protection of well-known trademarks.
He Jun, Lawyer
Deputy Director of the Trademark Law Committee of the Guangdong Lawyers Association
Managing Partner at Guangdong Fangtu Law Firm
He Jun pointed out that the event mainly focused on key issues and challenges in the protection of well-known trademarks. The two speakers—Wu Rangjun and Qiu Binbin—have extensive legal and practical experience in the field of intellectual property. He was very eager to hear the insightful presentations by Wu and Qiu.
Keynote Presentation
Wu Rangjun, Lawyer
Deputy Director of the Copyright Law Committee of the Guangdong Lawyers Association
Deputy Director of the Longan Guangzhou Management Committee, Senior Partner
Wu Rangjun presented his topic as “Overcoming Several Challenges in the Recognition of Well-Known Trademarks: Experiences from Two Judicial Cases”. Using data from the Guangdong Higher People’s Court and the Guangzhou Intellectual Property Court from 2016 to 2020, he highlighted the high standards required in judicial practices for recognizing well-known trademarks. Then, through a detailed analysis of two cases involving the recognition of well-known trademarks, Wu outlined “two theories, three methods, four principles, and five scenarios”. The two theories are the confusion theory and the dilution theory; the three methods are authorization, administrative investigation, and judicial recognition; the four principles are the passive recognition principle, the requirement-based recognition principle, the case-specific recognition principle, and the principle of good faith; the five scenarios are similar registered well-known trademarks, cross-category registered well-known trademarks, domain names vs. well-known trademarks, business names vs. well-known trademarks, and registered trademarks vs. well-known trademarks. In terms of judicial practices, Wu suggested that one should choose the appropriate scenario and method for recognizing well-known trademarks, while also paying attention to obstacles such as similar registrations, prior rulings, prohibited rights, and time-related issues. Finally, Wu concluded that in cases involving the recognition of well-known trademarks, it is important to carefully choose the scenario, method, defendant, court, and client. It is necessary to have a comprehensive understanding of the theory, as well as certain methods and techniques, so as to better carry out the recognition and protection of well-known trademarks.
Qiu Binbin, Lawyer
Secretary-General of the Trademark Law Committee of the Guangdong Lawyers Association
Senior Partner at Guangdong Hanrui Law Firm
Qiu Binbin presented her topic as “Key Points and Trends in the Judicial Protection of Well-Known Trademarks Through Typical Cases”. Starting with several classic trademark infringement cases, she identified the issues in the protection of well-known trademarks, including the boundaries between cross-category and full-category protection in judicial practices, as well as the definition of infringement related to confusion, dilution, parody, and other forms of damage to the interests of the trademark owner. She also analyzed the increasingly clear issues in the judicial protection of well-known trademarks, such as the expanded protection for already registered well-known trademarks, which not only involves cross-category protection but also includes actions that may cause confusion, dilution, degradation, or imitation. Then, Qiu analyzed three aspects: examples of expanded protection, situations where the trademark is registered for similar goods and is properly applied, and whether the right to claim well-known trademarks across categories can be applied when holding similar trademarks. She also shared the relevant provisions in the draft amendment to the Trademark Law.
Roundtable Discussion
During the interactive discussion session, under the chairmanship of He Jun, Wu Rangjun, Qiu Binbin, Tan Xianbin, and He Hualing discussed issues such as the choice of court and changes in judicial operations in cases involving well-known trademarks. This sparked lively discussions among the participants regarding issues related to the protection and recognition of well-known trademarks.
The “Key Issues and Solutions in the Protection of Well-Known Trademarks” seminar was jointly organized by the Trademark Committee of the Guangdong Lawyers Association and Longan Guangzhou. This event effectively promoted discussions on issues related to the recognition and protection of well-known trademarks, and enhanced the exchange of practical experience. In the future, Longan Guangzhou will continue to work closely with various entities to carry out more professional sharing and exchanges in the field of intellectual property, thereby improving the professional capabilities of Longan lawyers.