If you've decided to enter the China market by opening a company here, then registering your trademarks is an essential part of this process. If you have already registered your trademark abroad, you still need to register in China to protect the IP here.
But what happens if your trademarks are already registered? In this blog, we will explore your options.
What To Do If Someone Has Registered Your China Trademark
Since the registration system for trademarks in China is 'first-to-file,' essentially first-come, first-served, it is possible for you to 'lose' your trademarks if you are not proactive in registering them. If your company, brand or product is well-known, the risk of someone else registering your trademark before you increases. In order to identify whether your trademark is in fact registered by someone else, you need to conduct a trademark search in China.
Run A Trademark Search in China
It's often necessary to commission a registered agency to search for you as foreign companies without an active presence in China may not undertake one directly. However, if you have a China company, you are free to search, although this will necessitate thorough knowledge of the Chinese language and trademark law. All being well, you will find that no one has registered your trademarks, so in this case, you can go ahead and register your own.
But if a match comes up, you can take the following steps
Check the Date of Trademark Registration
After filing your registration, the SAIC will issue a preliminary approval and publish the proposed trademark in the China Trademark Gazette. You will have 3 months from its publication to appeal against it.Appeal the Registered Trademark
Should someone try to register your trademark/s, you should use a registered agency to appeal against it. It will get complex, and much paperwork and bureaucracy will ensue; therefore, a local expert will be able to negotiate this for you. In short, both you and your counterpart trying to register your trademark will need to prove why they should be granted rights over it. The SAIC will deliberate and decide whether to grant or deny the request. There may also be two further appeals, once to the Trademark Review and Adjudication Board (TRAB) and subsequently once to the People's court. As you can imagine, this could be expensive and very time-consuming.
Please contact us if you need help with the trademark appeal process. If the trademark is already officially registered in China or the appeal has been unsuccessful, there is one more option left.
Pay a Settlement or Regular Trademark Licence Fee
If you are in the position where someone is already using your trademark because they have registered it, then you have 2 options:
- Pay the settlement for them to sign the rights over to you.
- Pay them for a trademark licensing fee to be allowed to use their/your trademark on your goods and services.
If you're lucky, this won't be too expensive, but never underestimate the local drive to 'make a buck’, so don't count on it.
What To Do If Someone Registered Your Trademark in China Illegally
It could be expensive and take some time, but protecting your intellectual property will be worth it.
According to China Law Blog's Dan Harris:
"The Beijing [number 1 intermediate] court (which hears about 10% of all China IP cases) has seen its case load increase from “4,748 cases in 2008 to 11,305 in 2012, an increase of nearly 150%,” with copyright cases representing about half the total."
These statistics demonstrate that:
"IP enforcement/IP protection is improving in China for two main reasons. First, Chinese companies and foreign companies alike are now realizing that it makes sense for them to register their trademarks, copyrights and patents in China so that they have an opportunity at being able to protect them (in the courts, among other places). And two, China’s courts are increasingly realizing the importance of protecting IP in China, largely because Chinese companies increasingly want them to grant IP protections."
Despite the fact this will be a difficult road, possibly fraught with costs and delays, IP protection is improving. And therefore, it's safe to say that litigating, even if it is as a last resort, will yield the correct result more often than not if your company has a legitimate right to feel aggrieved.
Furthermore, the China National IP Protection Administration (CNIPA) released new trademark regulations on December 13, 2021, which took effect on January 1, 2022. Essentially, enforcement criteria were established, outlining 10 forms of trademark infringement and criminal conduct.
Registering a Trademark in China
Being aware of the risks of not registering trademarks in China is the first step in avoiding complications. Thankfully, there is a small 3-month window to appeal against those trying to register what should be ours.
China litigation and regaining rights from those who are seen to have legitimately registered them is somewhat murkier, but there are options, albeit expensive ones. The best option is to register in advance, protecting ourselves from these issues.
What's your take on trademark registration in China? Have you gone through the process? What was difficult or easy about it? Do you have any tips to share that may help our community?
Please leave any comments and questions below in the comments section and we'll be glad to help.
