Under Article 69 of the revised Chinese trademark law, parties may now petition CNIPA to issue confirmation that a mark is well-known among the relevant public within China. Robert Chan and Ura Wang explain how this could help overseas brand owners in trademark disputes in China.
Trademark squatting by domestic market participants constitutes one of the most prevalent trademark-related matters handled on behalf of foreign brand owners establishing a presence in China. While many overseas rights‑holders possess substantial global brand recognition, they frequently maintain incomplete domestic trademark portfolios. When confronted with pre-emptive malicious registrations, the practical impediment for such parties rarely stems from statutory deficiencies, but rather from the limited probative weight accorded to extraterritorial reputation evidence within Chinese administrative adjudication. Taking effect in January 2027, Article 69 of the revised Chinese trademark law introduces a novel procedural mechanism: in the context of ongoing trademark proceedings, parties may petition the China National Intellectual Property Administration (CNIPA) to issue an official confirmation that a mark is well-known among the relevant public within China. For intellectual property practitioners advising foreign clients, this mechanism delivers tangible procedural benefits; nonetheless, it entails material operational constraints and ought not to be represented as a universal remedy for trademark squatting.
The evidential obstacles confronting foreign brand owners are grounded in concrete real-world practice. Take the example of a well-established European or Southeast Asian brand with a limited Chinese market footprint, whose exposure to domestic stakeholders derives primarily from cross-border ecommerce, parallel imports or ad hoc trade show participation, absent formal local market entry. Where a third-party bad faith registration emerges, the rights holder typically seeks protection for its unregistered well-known mark by initiating opposition or invalidation proceedings. To succeed, the applicant is required to substantiate that the mark has attained recognition among China’s relevant public.
Rights holders commonly submit extraterritorial source materials, including home-jurisdiction sales statistics, international media coverage and overseas social media performance metrics. Such documentation is subject to onerous formalization requirements: notarization, consular legalization and translation into Chinese, incurring considerable cost and ordinarily requiring two to four months to complete. Even upon full compliance with evidentiary formalities, adjudicators place primary emphasis on reputation cultivated within Chinese territory. A significant number of proceedings have failed owing to submissions consisting predominantly of overseas-generated exhibits lacking corroborative evidence of domestic exposure. Rights holders are consequently left with constrained options: to enter into onerous settlement arrangements for trademark assignment, or to relinquish their claims entirely. Article 69 is intended to mitigate these practical hardships.
Under Article 69, an application for well-known‑mark confirmation may only be lodged in conjunction with pending trademark proceedings, such as oppositions, invalidation actions or administrative infringement cases. For foreign rights holders, the principal advantage lies in reduced reliance on voluminous bundles of formally legalized extraterritorial exhibits. A formal confirmation issued by CNIPA carries considerable probative force as official administrative output, surpassing the evidential weight of unilateral commercial materials adduced by the brand‑owner.
Legal practitioners must clearly articulate three non-negotiable limitations to overseas clients. First, proactive applications for a standalone “well-known mark certificate” for prospective use are impermissible. A live, pending trademark proceeding in China is a condition precedent to filing. Second, the confirmation assesses brand reputation exclusively within Chinese territory. Global renown per se carries minimal bearing. Absent domestic sales activity, Chinese-language marketing initiatives, trade show attendance or local distribution records, a positive confirmation will be declined, consistent with the foundational principle of trademark territoriality. Third, a favourable confirmation does not equate to a guaranteed outcome. It functions merely as material supporting evidence; adjudicators will independently evaluate mark similarity, likelihood of consumer confusion and the respondent’s subjective bad faith.
The practical value of Article 69 differs materially across brand segments. Consumer-facing brands that have achieved moderate domestic visibility via cross-border ecommerce, local-language social media channels or trade show participation – notwithstanding delayed trademark filing – stand to benefit from this procedure following the commencement of opposition or invalidation, which may streamline evidential preparation and shorten procedural timelines.
Conversely, B2B industrial and equipment brands whose reputation is confined to specialized niche sectors ought to manage expectations prudently. Notwithstanding an Article 69 application, such rights holders are still required to adduce robust domestic corroboration, including industry contracts, trade show documentation and trade publication coverage. Global sectoral prestige alone will seldom suffice to secure a positive confirmation.
Three procedural recommendations are proposed for counsel acting for foreign clients. Firstly, prioritize the compilation of domestic evidentiary materials, such as local social media outputs, cross‑border transaction records and Chinese-language trade show documentation, rather than immediately assembling comprehensive extraterritorial evidence sets. Secondly, assess eligibility for Article 69 only after an opposition or invalidation has been duly instituted; under no circumstances should practitioners pre-commit clients to a favourable confirmation prior to case commencement. Thirdly, maintain realistic client expectations by framing the mechanism as an evidential reinforcement tool rather than a guarantee of success. Certain overseas-sourced exhibits may still require full legalization.
In conclusion, Article 69 affords rights holders a new procedural alternative capable of alleviating evidential burdens in appropriate factual scenarios. It addresses procedural aspects of evidence submission but cannot manufacture domestic brand recognition where it is factually absent. When representing overseas brand owners, practitioners should anchor case strategy in factual evidence and refrain from overstating the remedial scope of this new statutory provision.
