Should China Protect Trademarks against Dilution? A Critical Look at the Experience of the United States and the Prospects for Application in China
MIPLC Master Thesis Series (2009/10)
57 Pages Posted: 27 Sep 2010 Last revised: 23 Mar 2013
Anti-dilution law is the main tool for protecting famous marks in the US. Some Chinese commentators have suggested that China should follow the US model. However, those suggestions are based solely on readings of US statutory language, without a careful analysis of the actual situation in either the US or China. This article attempts to provide such an analysis.
The article first considers the treaty obligations of China, and concludes that they do not require China to adopt anti-dilution protection. It then critically examines anti-dilution law as it has actually been applied in the US. It contends that US anti-dilution law has led to a variety of disputes that have not yet been resolved. The law has not only been unable to find a stable policy ground, but has also given rise to some concerns about suppression of competition. Moreover, empirical studies have suggested that anti-dilution law does not play an important role independent from anti-confusion law in practice. Thus, US anti-dilution law is not yet a matured system; while it may become a model in the future, it is of questionable value at this time.
The article then turns to considering circumstances in China. It argues that the background and circumstances of well-known mark protection in China is very different from that in the US. Well-known trademarks in China are protected on the theory of expanding the scope of anti-confusion protection rather than on anti-dilution protection, and this theory works well in most cases. Furthermore, there are thousands of marks officially recognized as “well-known” in China, under criteria and for purposes unrelated to anti-dilution protection, and some of them clearly do not qualify even under those criteria. At the same time, due to characteristics of the Chinese language that are different from those of Western languages, there is a more limited number of Chinese words preferred for use as trademarks, which makes the multiple use of brand names inevitable. As a result, combining anti-dilution protection with the existing system of recognizing well-known marks would produce an unprincipled hybrid that would unduly constrict the supply of words available as brand names in China.
Based on academic quality and relevance of topic, this paper has been selected for inclusion in the 2009/10 Munich Intellectual Property Law Center (MIPLC) Master Thesis Series.
Keywords: MIPLC, well-known trademarks, dilution, US law, Chinese law, Trademark law, IP
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