The China National Intellectual Property Administration (“CNIPA”) examines around 10 million trade mark applications annually. At the end of 2022, the Chinese Trade Marks Register stood at around 42 million trade mark registrations.
Against the backdrop of these numbers, businesses too often enter the Chinese market without having properly thought about brand protection – only to discover that their trade marks, branding and name are already owned by a local third party. When this has happened, it is very difficult to rectify.
This article discusses the main strategies for protecting a business’s branding in China and the options that are available.
Filing trade mark applications
Before entering any discussions regarding the export of products to China, you should prioritise clearing your brand for use in China and applying to register the relevant trade marks.
China is a first-to-file trade mark country. This means whoever applies to register a trade mark first is regarded as the owner of the mark, not the party who uses the mark first. Consequently, opportunists in China search for brands all over the world and register them with the goal of making money – either by selling the trade mark back to the true owner or by selling cheap goods under the mark in China and other parts of Asia.
Applying to register trade marks early will therefore protect your business from the misappropriation of its trade marks.
Filing copyright applications
If your business intends to register a logo or image trade mark, you can add a further layer of protection by filing an application to register the copyright in that mark.
In China, it is possible to register the copyright in an artwork, including logos and images that might be used as a trade mark. A registered copyright proves ownership of the copyright work, and more importantly, it is an official endorsement of that ownership. It provides an effective ground for opposing another party’s attempt to register your stylised brand, logo or image mark. It is relatively straightforward to take down infringing copies of a stylised trade mark if you can show official recognition of your ownership of the copyright in your trade mark with a copyright registration.
Cancelling third party trade mark registrations
If your business files an application to register a trade mark and the CNIPA cites an identical/similar trade mark registration as an obstacle, you can file proceedings to cancel the citation for non-use. Unless the similarity is coincidental, it is highly likely that the identical/similar trade mark registration was obtained in bad faith. In such circumstances, the non-use cancellation proceedings will usually not be defended by the owner of the cited trade mark registration, particularly if the owner is an individual.
Procedurally non-use cancellation proceedings are easy to launch. You do not need to provide any evidence or arguments in support: the burden of proving that a trade mark is in use falls on the owner of the cited registration.
Opposing third party trade mark applications
If you discover that a third party has filed an application to register a trade mark that is identical or confusingly similar to your own trade mark, you can file opposition proceedings with the CNIPA when the application is advertised for opposition purposes.
To succeed in an opposition proceeding you must show the trade marks:
(a) are identical and/or very similar and
(b) cover overlapping goods and services (as defined by the CNIPA’s trade mark guidelines).
The CNIPA is very prescriptive and will accept trade marks that are identical/similar if either of these grounds are not made out.
Invalidating third party trade mark registrations
If non-use cancellation and opposition proceedings are unsuccessful or unavailable, invalidation proceedings may be an option.
In contrast to non-use cancellation proceedings, you will need to provide comprehensive evidence of your business’s reputation in its brand in China. Invalidation proceedings are usually based on a claim that the trade mark has a significant reputation in China and it is therefore likely the third party acted in bad faith by trying to register and take advantage of that well known trade mark. In the first half of 2023, the CNIPA revoked around 56,000 registrations on this basis.
It is difficult to succeed in invalidation proceedings unless you can prove your business has reputation in China.
Conducting trade mark watches
Once your business’s trade marks have been registered, best practice is to monitor the Chinese Trade Marks Register and watch for the acceptance of applications to register trade marks that are identical/similar to your own.
Due to the sheer volume of trade mark applications being filed, and the thousands of examiners with different levels of experience examining those applications, there is no certainty that the CNIPA will refuse an application to register a trade mark that is the same or confusingly similar to your own.
Conclusion
Brand protection in China is complex and requires you to strategically consider the value of the trade marks involved, your budget, what your business wants to achieve and how likely your business will be a target of opportunists in China.
Should trade mark owners require assistance with any of the above, James & Wells has a dedicated bi-lingual Asia Team which is highly experienced in branding prosecution and protection in China, including all the options mentioned in this article.
