Since the promulgation of the new Trademark Law, there has been a double track system in trademark''s protection. Courts are authorized to determine a "well-known" mark, and also authorized to order an infringing party to cease its use and in some cases order property preservation. Now trademark owners can choose to enforce their rights through administrative measures before the Administration for Industry and Commerce(AIC), or through court actions. Comparing the two paths, judicial protection is more stable, specific, effective and standard. But it is time-consuming, complicated and costly. On the other hand, administrative actions are quick and cheap. The evidence requirement is low but officials often are willing to act only on clear-cut cases. The major downside for administrative actions is that success is often short-lived. As far as an infringement case is concerned, only one track could be initiated at the same time.
The so-called double track protection mechanism, reflects China''s strong administrative power, in the meantime, indicating such power is weakening overtime.
3.4. Dissimilarity in Burden of Proof
The United States
Under the New Revision Act, once the prerequisites for a dilution claim are satisfied, the owner of a mark can bring an action against any use of that mark which dilutes the mark''s distinctive quality, either through "blurring" or "tarnishment". "Blurring" occurs when the power of the mark is weakened through its identification with dissimilar goods. "Tarnishment" occurs when the mark is cast in an unflattering light, typically through its association with inferior or unseemly products or services. Unlike an infringement claim, likelihood of confusion is not necessary. Instead, "likelihood of dilution" is sufficient to bring an action against the infringer. And it is "likelihood of dilution" that becomes the focus in proving trademark infringement. In the judicial practice, a considerable of sophisticated factors are involved in considering the criteria of "likelihood of dilution".
China
As aforementioned, consumer''s confusion is the focal point to initiate an action against trademark infringement in China. As a result, as long as a trademark has been determined as a well-known mark by AIC, if it runs into conflict with an enterprise name, the well-known mark owner may apply to the competent authorities for canceling the enterprise name if it believes that another person''s registration of its well-known mark as an enterprise name is likely to deceive or confuse the public, and the competent authorities must examine the enterprise name under the Provisions on Registration and Administration of Enterprise Names to find out the circumstance of "being likely to deceive or confuse the public." Or the second choice is to let the court to judge, with rigid and strictly complied legal procedures. The burden of proof on the plaintiff is much heavier.
3.5. Comparison of Enforcement in Well-Known Mark''s Infringement
The United States
Successful plaintiffs are entitled to a wide range of remedies under federal law. Such plaintiffs are routinely awarded injunctions against further infringing or diluting use of the trademark. In trademark infringement suits, monetary relief may also be available, including: (1) defendant''s profits, (2) damages sustained by the plaintiff, and (3) the costs of the action. Damages may be trebled upon showing of bad faith. In trademark dilution suits, however, damages are available only if the defendant willfully traded on the plaintiff''s goodwill in using the mark. Otherwise, plaintiffs in a dilution action are limited to injunctive relief.
China
Although China has made significant progress in the laws governing trademarks, China has not yet established an effective enforcement system to protect trademarks. It is said that the vast majority of problems which arise regarding IP enforcement are due not to deficiencies in the law itself, but to inconsistencies or weaknesses in the administrative enforcement bodies or the courts.
This raises serious concerns for foreign investors because enforcement is the key element of intellectual property right''s protection in China.
In general, well-known mark''s enforcement in China varies depending on it is registered or non-registered well-known mark. Infringement of a non-registered well-known mark is imposed the civil liability for ceasing the infringement, while infringement of a registered well-known mark is imposed all sorts of the civil liabilities, including damages.
The failure of effective enforcement could ascribe to the enforcement structure. Firstly, there can be long delays in enforcement actions and court rulings but remaining little likelihood of criminal prosecution. Secondly, enforcement actions are commonly considered as arbitrary and non-transparent. For instance, the regional AICs have weak administrative powers compared to the central AIC, and actions of municipal governmental may offset them in any case. In addition, municipal government officials may prefer to allocate resources to objectives other than IPR enforcement.
