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3.1 Well-Known Trademark Protection under the Paris Convention

3.1.1 Background

Although there have been at least sixty-nine bilateral treaties which in one way or another are related to trademark laws, the‘Paris Convention for the Protection of Industrial Property’(hereinafter referred to as‘Paris Convention’)was the first multilateral treaty specifically concentrating on IPRs protection including the protection of trademarks. China became the member of the Paris Convention (as amended) in 1985.

The Chinese government believes that IPRs have significant power to boost the development of science and technology.The prosperity of China's culture and more importantly its economy cannot be guaranteed without the support of a well-established IPRs protection system.The success of the socialist market economy relies on IPRs and they also form the foundation for China's international communication and cooperation in terms of science,technology,economy and culture.The accession to main IP international treaties is a prime mission the Chinese government has aimed to complete since the late 1970s when China begun to implement its ‘Reform and Opening-up'policy.It was the membership of the Paris Convention that pioneered this goal.

China had no choice but to join the Paris Convention in the 1980s for four reasons.First,after the promulgation of China's Trademark Law in 1982 and later its Patent Law in 1984,western countries were urging the Chinese government to join the Paris Convention so that their interests in China could be secured in accordance with the common principles as set in the Paris Convention.Second,both trademark registration and patent applications from foreign countries cannot be made without the Paris Convention.Bilateral treaties on the basis of reciprocity can achieve the same effect but are more costly and time-consuming to implement.Third,the Paris Convention forms the foundation of the WIPO and all international treaties concerning the protection of industrial property which are administered by the WIPO are only open to Member States of the Paris Convention.As these treaties are supportive of perfecting legal framework in terms of patent,trademark,and more in China,it impels China to join the Paris Convention if it wants to qualify for other WIPO-administered treaties.Finally,the Paris Convention enables China to exchange any patent files needed with other Member States freely and expeditiously. [1]

3.1.2 Art.6 bis

The original 1883 Paris Convention did not contain any provisions concerning well-known trademarks.In 1911,France proposed incorporating provisions regarding the protection of well-known trademarks but the proposal ultimately failed due to the opposition from other Union members.In 1925,the Netherlands and the United International Bureau of the Protection of Industrial Property jointly proposed a provision regarding well-known trademarks. [2] The adoption in 1925,of art.6 bis of the Paris Convention marked the first recognition of an obligation to provide protection for well-known trademarks at the international level. Art.6 bis represented a milestone in the history of international protection for well-known trademarks,although it is not without flaws.

Art.6 bis of the Paris Convention provides,

The countries of the Union undertake,ex officio if their legislation so permits,or at the request of an interested party,to refuse or to cancelthe registration ,and to prohibit the use ,of a trademark which constitutes a reproduction,an imitation,or a translation, liable to create confusion ,of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similargoods .These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith. [3] (emphasis added)

A critical point resulting from art.6 bis is that well-known trademarks must be given a certain level of protection regardless of whether they have been registered.In other words,trademark registration is not a prerequisite for protection of a well-known trademark.

There are three major drawbacks to the provision.Firstly,art.6 bis only demands protection to which a mark is applied for identical or similar goods .Although keeping protection narrow in this way seemed sufficient at a time when practices like brand extension and brand stretching were rare,it becomes problematic in the modern era when there have been significant changes in marketing practices and in the ways familiar trademarks are used in marketing.Secondly,art.6 bis provides no protection to service marks Thirdly,neither the definition nor parameters of the concept of a well-known trademark is given in art.6 bis [4]

[1] Yuanguo Zhao,‘A Review of China's Accession to“Paris Convention for the Protection of Industrial Property”’ China Daily (Beijing,19 March 2010)〈http://ip.people.com.cn/GB/11176312.html〉accessed 5 March 2016.

[2] Any new provisions which did not fit into the old article of the Paris Convention was inserted as a new article by numbering French ordinal suffixes bis ter quinter quinquies sexies ,and septies since the Washington Conference(1911).See John B.Pegram,‘Trademark Law Revision’:Section 44(1988)78 TRADEMARK REP.141,154.

[3] Art.6 bis ,Paris Convention.

[4] Andrew Halper,‘Starbucks Wars:Chinese Courts Say “No Hitch-Hiking Allowed”’(2006) The China Quarterly 1155,1158. a/f7qfJKnr/gnoGO46iTbRKIMT7EDNL/8Diijvx4OEpik5ZNkUU5QH4uy4+3aj6i

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