Registering your trademarks is a crucial step in the process of entering the China market by establishing a business here. Even if your trademark was previously registered abroad, you still need to do it in China to safeguard the IP there.
If your trademarks are already registered, what happens? We shall examine your possibilities in this blog.
What Should You Do If Your Chinese Trademark Has Been Registered?
You can “lose” your trademarks if you are not aggressive in registering them because the registration process for trademarks in China is “first-to-file,” or practically first-come, first-served. If your business, brand, or product is well-known, there is a higher chance that someone else will register your trademark before you. You must run a trademark search in China to find out if your trademark is registered by someone else.
Run A Trademark Search in China
It’s frequently required to hire a recognized agency to research on your behalf because overseas businesses without a physical presence in China might not do so. You are permitted to search, albeit you will need to be well-versed in both trademark law and the Chinese language if you own a China-based business. If all goes well, you’ll discover that no one has registered your trademarks, in which case you can go ahead and do so.
However, if a match does occur, you can follow these steps.
Check the Date of Trademark Registration
After receiving your registration application, the SAIC will provide preliminary approval and publish the proposed trademark in the China Trademark Gazette. You will have three months from the publication date to file an appeal.
Appeal the Registered Trademark
Use a registered agency to file an appeal if someone attempts to register your trademark(s). A local specialist will be able to negotiate this for you because it will become complicated, and a lot of paperwork and bureaucracy will be involved. In other words, you and the person opposing you in the trademark registration process must establish their case. After consideration, the SAIC will determine whether to approve or reject the request. Additional appeals may be made twice, once to the People’s court and once to the Trademark Review and Adjudication Board (TRAB). This might be both expensive and time-consuming, as you could expect.
If you require assistance with the trademark appeal process, please get in touch with us. One more choice is available if the trademark has already been formally registered in China or if the appeal was unsuccessful.
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.
- Please pay them 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?
Protecting your intellectual property may be expensive and time-consuming, but it will be worthwhile.
“The Beijing [number 1 intermediate] court (which hears around 10% of all China IP matters) has seen its caseload climb from “4,748 cases in 2008 to 11,305 in 2012, an increase of over 150%,” with copyright cases making up about half of the total,” according to Dan Harris of China Law Blog.
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.”
IP protection is improving, but it will still be a challenging route that could be costly and time-consuming. Therefore, it is safe to assume that if your organization has a real reason to feel aggrieved, filing a lawsuit—even as a last resort—will most likely result in the proper outcome.
Additionally, on December 13, 2021, the China National IP Protection Administration (CNIPA) published new trademark regulations that became effective on January 1, 2022. In essence, ten types of trademark infringement and illegal behavior were outlined in the enforcement criteria.
Registering a Trademark in China
The first step in avoiding issues is awareness of the dangers of not registering trademarks in China. Thank goodness, there is a brief three-month window to file an appeal against individuals attempting to register property that is rightfully ours.
There are methods, albeit expensive ones, for China litigation and reclaiming rights from individuals who are perceived to have lawfully registered them. The best course of action is registering in advance and safeguarding ourselves from these problems.