Home » Trade Marks » That’s not mine! – Action checklist for marks registered by third parties in China.

That’s not mine! – Action checklist for marks registered by third parties in China.

Keltie LLP

K2 IP Limited

About IPcopy

IPcopy is an intellectual property related news site covering a wide variety of IP related news and issues. We will also take the odd lighthearted look at IP. Feel free to contact us via the details on the About Us page.

Disclaimer: Unless stated otherwise, the contributors to IPcopy (the "IPcopy writers") are patent and trade mark attorneys or patent and trade mark assistants at Keltie LLP or are network attorneys at K2 IP Limited. Guest contributors will be identified.

This news site is the personal site of the contributors and is not edited by the authors' employer in any way. From time to time however IPcopy may publish practice notes, legal updates and marketing news from Keltie LLP or K2 IP Limited. Any such posts will be clearly marked.

This news site is for information purposes only. Information posted to this news site is not legal advice and should not be taken as such. If you require IP related legal advice please contact your legal representative.

For the avoidance of doubt Keltie LLP and K2 IP Limited have no liability as to the content of IPcopy and any related tweets or social media posts.

Privacy Policy

IPcopy’s Privacy Policy can be viewed here.

Great WallIf your brand has been registered in China without your authorisation or before you have even considered trade mark protection there, it can be very difficult to win the rights back, particularly if your mark has no current presence in the Chinese market.

We have put together a check list of the action that you would need to consider if you are in this difficult position.

1)      Proprietor Search – find out who filed the applications and if they have filed any other marks that belong to you.

2)      Online investigations – it is useful to conduct some investigations into the third party who has registered your mark. This can also reveal whether they are using the mark or whether the third party has simply registered the mark with the intention of selling it back to you. If they are using the mark, such use may constitute an infringement of your rights (if earlier rights are owned in China) and can provide good evidence to submit into proceedings. These investigations might also reveal whether there are any personnel or commercial relationships with your company.

3)      Warning letter – if the investigations reveal that third party has not yet started using the mark, it can be useful to send an initial warning letter with an undertaking to inform the party of your rights. This might include a request to withdraw the application or a warning not to begin use of the proposed mark. This is also a useful tool in initiating negotiations.

4)      Negotiations – if budgets permit, the third parties can be approached to see if they are willing to assign the mark. In most instances the third parties will ask for a substantial amount, particularly if they know the status of a brand in other jurisdictions. In order to hide the true owner and in an attempt to reduce the costs of obtaining the mark these approaches can be made by local associates who use anonymous companies to make the first contact.

5)      Opposition – this is the most popular way of cancelling a trade mark application but it is reliant on having earlier rights in China. The rights to rely on could be earlier registered copyright (which is available and relatively inexpensive in China), trade mark or design in China.

6)      If the mark has been registered for more than 3 years and has not been used, consider non-use revocation proceedings as an alternative to negotiating its purchase.

7)      Prior Use in China – if you have used your mark in China, such use can be relied upon for the purposes of an opposition. However there are three important elements to consider:

–          The use must have occurred in Mainland China

–          It must be prior to the application

–          It must show use on the goods/services covered by the conflicting application

8)      Well-known trade marks/ Well-known companies – if the marks has been used but for different goods or services, we must prove that the mark is well-known in China. Proving this would depend on the level of evidence available in China. In addition, if a company is well-known in a particular area or has a known association in China this can be used to oppose a trade mark application

9)      Bad Faith – if the mark was registered by a party which has some business relationship with your company, this can be used to show that the mark was filed in bad faith. Evidence of such a relationship would need to be shown.

As fighting an unauthorised trade mark application in China can be a long and expensive process, it is vital to weigh up the strength of arguments available to you. This checklist can be used as a guide in assessing whether action can, or should be taken. The best practice remains that of applying to register your mark in China as soon as early as possible and, ideally, before it is launched on the marketplace anywhere in the world.

Azhar Sadique    9 January 2013

1 Comment

  1. seocafest says:


Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out /  Change )

Twitter picture

You are commenting using your Twitter account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

Connecting to %s

This site uses Akismet to reduce spam. Learn how your comment data is processed.

%d bloggers like this: