3. Comparative Studies on Well-Known Mark''s Protection System between the US and China
3.1. Two Different Legal Theory Foundations
The United States
As a general rule, trademark infringement is intended only to protect consumers from confusion. It offers no protection for the diminution in value of a trademark to its owner resulting from competing marks that dilute its effectiveness. Dilution theory, however, steps in to fill the gap left by trademark infringement law. The dilution of a trademark represents a serious injury to a trademark because it damages a mark''s capacity to identify a particular source.
The origin trademark dilution theory is generally attributable to Frank I. Schechter. He advocated eliminating the consumer confusion model of trademark law entirely, instead, recognizing distinctive trademarks as a property right in gross.
Based on such a rationale, the goal of trademark legislation in the US is to protect trademarks from being diluted. Under the new Revision Act, there is no requirement of trademark''s "actual dilution". As long as "a likelihood of trademark dilution" occurs, the infringer can be held responsible. In this manner, we may see the fundamental philosophy in the context of well-known mark''s protection under US laws stems from the idea that, well-known mark has been regarded as trademark holder''s private property and personal asset. Consequently, well-known mark''s protection is insurances of individual property. It places top-level priority to individuals'' private rights, reflecting typical characteristic of western values.
China
China''s well-known mark''s protection legislation is far cry from the US. China laws incline to solely protect consumers'' interest. Hence, the rationale behind the well-known mark''s protection lies in prevention of consumers'' confusion. Well-known marks are not perceived as private property as perceived in the US. Trademark infringement is not caused if there is no consumers'' confusion of the trademark. The objective of this protection is limited to maintain market order and the rights of the general public. In other words, it places emphasis on public interest rather than individual rights.
It is understandable if we trace back to Chinese traditional cultural background. The Chinese people are guided by a tradition which encourages individuals to understand their responsibilities and obligations to others and be prepared to take into consideration the views of others, in order to avoid confrontation and create a harmonious society.
In a Confucian society motivated by a sense of loyalty to human relations, there was little demand for a system of litigation to protect individual rights, including intellectual property rights.
Asian tradition, including China, thus did not generate a notion of individual rights or ''droits subjectifs'' and it has even been said that the notion of individual autonomy, unresponsiveness to others, is suggestive of ''idiocy or immorality''.
In consideration of China''s traditional cultural views, it would help to understand why intellectual property rights, including trademark right are much less important in most Chinese people''s minds than they are in the US. With this old mindset, it is doubted that trademark law would be fully applied to hinder infringement.
3.2. Comparison of Protection Scope
The United States
The United States trademark protection derives from common law rather than from legislation or from constitutional provisions like patents and copyrights.
The common law remains a basic source of protection for trademarks, but trademarks today can also be protected by both federal and state statutes.
Thus, where trademark problems arise there is often a complex interplay between common law rules and statutory provisions.
In the US, assuming that a trademark qualifies for protection, rights to a trademark can be acquired in one of two ways: (1) by being the first to use the mark in commerce; or (2) by being the first to register the mark with the U.S. Patent and Trademark Office ("PTO").
But registration with the PTO is not required for a trademark to be protected, however, registration does confer a number of benefits to the registering party. The advantage of having a registered mark is that after five years of unopposed use, the mark becomes "uncontestable". An uncontestable mark cannot be attacked for the reason that it is descriptive. Even without incontestability, a registered mark has a presumption of being a valid trademark, placing the burden on the plaintiff to attack the defendant''s mark.
