After pending in draft form for 16 years, the Shanghai Municipal Measures for the Recognition and Protection of Famous Trademarks were released in February, 2012. They offer protection to Shanghai to local enterprises and individuals for marks that qualify for “famous” trademark status. Although not yet open to foreign trademark owners, foreign nationals with a residence permit in Shanghai and foreign invested companies (including wholly foreign-owned companies) in Shanghai can apply to qualify marks they own as famous trademarks. This local protection is not the same as well-known trademark status under the Trademark Law of the PRC at the national level.
To qualify as a “famous” trademark, the mark must be known by the relevant public, highly reputable in the Shanghai market and meet the requirements of the Shanghai Measures. An applicant must show that sales, profits, taxes and other economic indicators for the past three years support the leading position of the product in Shanghai. Recognized marks are acknowledged publicly and issued a certificate, and may be identified as a “famous trademark in Shanghai”. Other parties are prohibited from using famous marks as a name (including registration as a company name), on packaging, etc., if such use causes confusion to the public.
Two changes were made from the draft version of these Measures - elimination of a requirement that a company not have a financial loss, and also deletion of rescission of “famous” status due to declining quality. A key benefit of “famous” status is that the Shanghai Administration for Industry and Commerce (SAIC) is empowered to punish use of identical or similar marks on packaging, etc. Further, the SAIC cannot approve similar registrations in other trademark or service mark categories. These protections go beyond the protections afforded by the Trademark Law of the PRC.
Famous trademark status provides substantial benefits, but it does not afford the reputation of well-known trademark status under the national law. For foreign companies, well-known trademark status may be the only protection available if they do not qualify to gain recognition for the marks as famous marks in Shanghai or under similar programs in other local jurisdictions.
Questions? Contact Allan Marson at firstname.lastname@example.org for a complimentary response.