Someone has registered my trademark in China, what can I do?
When I was planning to explore the Chinese market, I discovered that my trademark had already been registered. Is it possible to get my trademark back? This is indeed a tricky problem, but there are solutions.
Through the investigation of the target company and the target trademark, it is judged whether the trademark belongs to “malicious registration”. The investigation result and your product evidence, trademark evidence and the other party’s malicious evidence chain are highly likely to invalidate the other party’s trademark.
1. What is malicious registration?
Generally speaking, maliciousness is more difficult to define. This also brings difficulties to trademark rights protection. In 2019, the China Trademark Office issued regulations, the “Regulations Regarding the Registration Behavior of Trademark Applications”, which define the boundaries of malicious registration.
The following actions are considered to be manifestations of malicious registration:
- Do not apply for trademark registration in bad faith for the purpose of use;
- Copying, imitating or translating others’ well-known trademarks;
- Agents or representatives apply for the registration of the trademark of the principal or the representative without authorization; apply for the registration of the trademark based on contracts, business relationships or other relationships that know the existence of a trademark previously used by others;
- Damage to the existing prior rights of others or preemptively register trademarks that others have already used and have certain influence by improper means;
- Applying for trademark registration by deception or other improper means;
- Other violations of the principle of good faith, violation of public order and good customs, or other adverse effects.
2. How does the Trademark Office handle malicious registration?
For unregistered trademarks, if the trademark registration department finds that the relevant application is a malicious trademark registration application not intended for use as stipulated in Article 4 of the Trademark Law based on public opinion and reporting clues during the review process, it shall be rejected according to law and shall not be announced;
If an objection is raised during the preliminary review and announcement period, the trademark registration department shall, upon examination, find that the reason for the objection is established, and shall make a decision not to register.
For a registered trademark, the relevant right holder may file an application for declaring the registered trademark invalid in accordance with the law.
If the reason for invalidation is established after examination, the trademark registration department shall make a ruling to declare the registered trademark invalid in accordance with the law; the registered trademark has no legitimate reasons for three consecutive years If it is not used, any unit or individual may apply to the trademark registration department to cancel the registered trademark.
Those who are dissatisfied with the above-mentioned decision or ruling may initiate a reexamination and litigation procedures in accordance with the law.
3. In practice, how will the trademark registration department examine whether the trademark registration application is a malicious application for trademark registration that is not intended for use?
In the review practice, if the trademark registration department finds that the applicant for trademark registration has applied for trademark registration, traded trademarks, occupied public resources in large numbers without justified reasons, and repeatedly preemptively registered other people’s trademarks on non-similar goods or services, it will Continue to review whether the application is a malicious application for trademark registration not for the purpose of use.
Specifically, when determining whether it constitutes a malicious application, the examiner needs to analyze and judge a number of consideration factors and case evidence, such as using the trademark examination system to query the applicant’s application history, transfer status and other related matters, and screen well-known trademarks , Well-known place names and other prohibited words; inquire about the industry, illegal records, etc.
Through business licenses, corporate information publicity systems, etc. In addition, during the review process, if the examiner believes that the applicant is suspected of applying maliciously or hoarding registration, he may request relevant explanations.
Therefore, if your trademark is registered in China, on the one hand, you need to provide evidence that is beneficial to you, including but not limited to:
- Introduce your brand to prove your brand’s “knownness” in China. Such as advertising, sales records, sales area, sales amount, etc.
- Provide a copy of the foreign trademark registration certificate.
- Evidence that the trademark was used in China before the filing date of the relevant trademark. This includes product catalogs, advertisements, brochures or invoices.
- Evidence that the other party has maliciously registered, such as cooperation records or business contacts between the other party and the other party, for example, the other party and your company are in the same business field and have an understanding of your brand;
- If your trademark is specially designed by someone or has a specific meaning, please provide design specifications and proof of use for the first time.
On the other hand, entrust a Chinese lawyer (like us) to investigate the trademark holder, collect relevant information and evidence of the trademark holder, whether it is in the same field as your company, whether it sells the same products, whether it has been an agent, and whether it has other malicious The act of applying for a trademark, etc.
These evidences are helpful for invalidating the trademark, and you are also highly likely to invalidate the trademark, so as to obtain the ownership of the trademark through registration.
If you have similar questions, please contact us.
