The problem of someone else registering your brand in China is a common one, because of China’s first to file trade mark registration system.
The main reasons a person may register your trade mark in China include:
- a genuine need to use that trade mark for their products or services
- an intent to produce replicas of your products
- an ill-intent to sell you the right to use the trade mark.
The one exception to the first to file rule is that if you can prove that someone else has registered your trade mark in bad faith. In rare instances, you might be able to recover the trade mark through legal action, however this can be very costly and time consuming.
Legal action for replica trade marks
If you feel your mark has been registered to reproduce replica products or services, you will need to provide the following evidence to take legal action:
- Prove that you owned the trade mark in another country before the trade mark application was made in China.
- Prove that you have a history of use in China prior to the Chinese trade mark application.
If you produce goods sold in China, you should be able to easily provide invoices, customs records, contracts, advertisement campaigns or websites translated into Chinese.
Legal action where your trade mark is held to ransom
If the trade mark holder is not using the trade mark and wants you to buy it from them, you have two options, depending on how long the trade mark has been registered.
- If the trade mark has been registered for more than three years, you can apply for the cancellation of the trade mark or use the cancellation procedure as a leverage to have the owner sell the mark to you.
- If the trade mark has been registered for less than three years, the cancellation procedure is not available. The options are to buy it back or to choose a new brand for use in the Chinese market.
Being proactive with your IP strategy before you engage with the Chinese market is strongly advised as taking legal action is time consuming and costly.