If 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