In China’s trademark law covering dilution principles, a famous mark is one that is well-known among the consuming public in China. China has a broad definition of the consuming public, which includes both the consumers themselves and the workers involved in distributing or providing services to consumers. Famous marks are different from ordinary trademarks in that they are offered protection across multiple classes of goods and services.
Determination of Famous Mark Status
Determinations are made on a case-by-case basis whenever the holder of a famous mark alleges infringement under the Trademark Act and based on the individual facts of the case.
Passive protection is where the trademark office does not take action of its own accord, but rather waits until it receives a complaint in a dispute before making a determination as to famous mark status according to the parties’ requests.
As-needed determinations are made in response to a request by the famous mark’s owner during a case for protection or dispute resolution, which does not constitute an administrative action.
Comparison to Renown Marks
China has a separate distinction for brands that have recognition only in local provinces. Designating a mark as renown is used primarily as an honor bestowed on businesses in provinces and home-rule cities, as well as by local governments to improve the competitiveness of trusted brands.
Comparative Law
The Chinese concept of a famous mark was introduced through 19th-century Chinese legal scholars’ research into European law. Currently, marks in China must be extremely famous to qualify for protection.
North America’s trademark term “famous mark” is known as a “well-known trademark” in the United Kingdom and European English. German trademarks scholar Annette Kur has famously noted that the American concept of the famous trademark was directly copied from German jurisprudence by Harvard Law professor Frank Schechter, by way of reference to the Swiss “Odol” case in his influential 1927 article “The Rational Basis of Trademark Protection.” As NYU Law’s Professor Barton Beebe has noted, the article “implied that dilution was a home-grown American idea – Indeed, that it was Schechter’s own,” even though jurisprudentially and functionally, it was a German invention, not American.
The word “famous” as used in the US Trademark Act does not mean what “famous” typically means in English. Instead, it means that the mark is well-known, without requiring the positive connotations famousness requires.
https://www.cambridge.org/core/books/abs/transition-and-coherence-in-intellectual-property-law/german-misappropriation-origins-of- trademark-antidilution-doctrine-a-translation-of-the-1924-odol-opinion-of-the-elberfeld-landgericht/ 327679a23c0575abf117225d8923dadd
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