Are you thinking of entering the Chinese market or have you already sold your products in this territory? Are you thinking of filing and registering your trademarks in order to be protected? And there, surprise, your trademark is already filed or registered by an unknown person in China. You are then the victim of the “Trademark Squatting”.
Are you keen to get your trademark back or maybe you have already received emails from agencies in China who advising you to buy this registered trademark in China at a high price and think the chances of success are pessimistic if you take action? (because you have limited or no proof of use of your mark in this country to demonstrate your reputation and prove that the trademark was filed in bad faith with the aim of taking advantage of your reputation).
We advise you today to pay attention particularly about the purchase of a brand with a high price offered by agencies in China because these could be collaborators of applicants in bad faith. The application was indeed made to resell the mark at a high price.
It is true that to oppose or cancel the disputed mark in China, Chinese law and legal practice generally requires a certain reputation of your trademark in this country to be justified by evidence of use before the date of the filing of the disputed mark.
The justification of certain reputation causes great difficulties for holders who have limited proof of use or even sometimes have no proof of use to bring down the trademark filed or registered in bad faith.
In order to improve the situation and better fight against trademark squatting in China, over the past two years, the CNIPA (China National Intellectual Property Administration) and the Intellectual Property Courts have applied and interpreted new criteria to recognize the bad faith of the applicant. In particular, the CNIPA published certain important communications in 2022 and 2023 to fight against trademark squatting. These criteria is independent of your brand's reputation in that country.
Consequently, today, with little or even no proof of use of your trademark, we can bring down the trademark registered in bad faith as soon as we can prove the bad faith of the applicant according to the criteria established by the case law and communications published by CNIPA.
We consider that each file is different, and with our expertise, we help you analyze your chances of success to get your brand back by following new criteria, in particular:
Carry out in-depth investigations into the bad faith of the depositor
In the event that the bad faith is less obvious and you have little use of the mark in China, we help you to:
Demonstrate your reputation in China with research and establishment of evidence accepted by the Chinese Trademark Office or the Court of Intellectual Property.
Zhengnan GONG
Attorney at Law at Paris and Chinese Bars