When Your Trademark is Already Registered in China: Strategic Pathways for Foreign Brands to Regain Control-Industry News-Shenzhen deep trust patent Agency Co., LTD

News Updates

NEWS CENTER

Core Principle: China’s First-to-File System

In China, trademark rights are established primarily through registration, not use. Simply owning a famous brand abroad or having used the mark in other countries provides no automatic protection within China. This system makes proactive registration critical, but also means that later arrivals must navigate conflicts through established legal channels.

First Step: Conduct a Strategic Assessment

Before acting, brand owners must analyze the situation along key dimensions:

Mark Similarity: Is the conflicting mark identical, closely similar, or merely reminiscent of yours?
Goods/Services Similarity: Are the registered classes identical, related, or wholly unrelated to your business?
Status of the Conflicting Mark: Is it still under application or already registered?
Use by the Registrant: Has the registrant genuinely used the mark in commerce, or is it dormant?
Relationship with the Registrant: Is there a history of business dealings, negotiation, or contact that could indicate bad faith?

The answers to these questions will determine the most viable and cost-effective strategy.

Action Plan: When the Conflicting Mark is Still an Application

If the mark is still under examination or within the 3-month opposition period after publication, you can act pre-registration.

Filing an Opposition: You can oppose the application with the China National Intellectual Property Administration (CNIPA). Effective grounds include:
- Likelihood of confusion with your prior trademark application or rights.
- Conflict with your prior copyright, trade name, or other prior rights.
- Bad faith filing, especially if the applicant has a contractual or business relationship with you, or has hoarded multiple trademarks without intent to use.
Parallel Filing Strategy: While opposing, simultaneously file your own application for:
- The mark in related classes or sub-classes.
- Key Chinese-language versions of your brand.
- Defensive marks to secure your peripheral IP territory.
  This ensures you maintain a position in the register during the opposition process.

Action Plan: When the Conflicting Mark is Already Registered

Once registered, the strategy shifts to post-registration challenges.

Invalidation Action: You can petition CNIPA to invalidate the registered mark. Common grounds are:
- Registration obtained by fraud or illegitimate means.
- Bad faith registration without intent to use.
- Infringement of your prior rights (e.g., copyright, design patent, trade name with reputation).
- Note that invalidation based on relative grounds (like prior rights) may be subject to a 5-year time limit from the registration date, with exceptions for bad-faith filings.
Non-Use Cancellation: If the trademark has not been used for three consecutive years on the approved goods/services, you can apply for its cancellation. This is a powerful tool against squatters, as the burden of proof for use lies with the registrant. Preparation involves investigating the market for any evidence of genuine use.
Judicial Actions: In egregious cases involving consumer deception or clear free-riding on your reputation, civil litigation based on unfair competition or trademark infringement can be pursued, often in tandem with administrative actions.

Commercial and Negotiated Solutions

Legal routes can be lengthy. Commercial negotiations often provide a faster resolution.

Acquisition: Purchasing the trademark from the registrant. While straightforward, it risks encouraging further squatting and requires careful transfer procedures.
Coexistence Agreement: Negotiating a formal agreement to permit both parties' use under specified conditions. This requires CNIPA's approval and must not cause consumer confusion.
Rebranding/Localization: Adapting or modifying your brand for the Chinese market. This is a last resort but can be a strategic pivot if the legal battle is too costly or uncertain.

Proactive Prevention: Building a Defensive IP Portfolio

The best strategy is to prevent conflicts altogether by:

Filing Early: Register your core marks and their Chinese variants before public disclosure or market entry.
Conducting Thorough Clearance Searches: Prior to filing, ensure no identical or similar marks exist in relevant classes.
Implementing Trademark Watch Services: Monitor new filings that resemble your brand to identify potential conflicts early.
Registering Broadly: Cover key classes, sub-classes, and associated Chinese logograms/translations.

Conclusion

Encountering a pre-emptive trademark registration in China is a significant challenge, but it is far from insurmountable. By systematically assessing the conflict, understanding the available administrative and judicial mechanisms, and considering negotiated settlements, foreign brands can effectively navigate this complexity. With prompt action, robust evidence, and guidance from local IP professionals, companies can often regain control of their brand identity, securing a stable foundation for their business in the Chinese market.