Discussion of the Protection of the Unregistered Trademark in China

The rights holder should first know the potential risks of using an unregistered trademark in China, for example:

• The trademark being used by the rights holder may be preemptively registered by others, especially if the rights holder’s trademark has already obtained a certain degree of reputation and influence after use and publicity;
• It would be difficult to prevent others from using the identical or highly similar trademark;
• An unregistered trademark is open to abuse and is likely to be diluted or generic; and
• Using an unregistered trademark may infringe upon the prior trademark rights owned by others.

There are lots of risks to using unregistered trademarks, while there are also some provisions, as shown below, regarding the protection of unregistered trademarks.

• If the trademark is registered by the rights holder’s representative, commercial partner, etc., a bad faith filing is not allowed to be registered;
• If a third party preemptively registers a trademark that has been used by the rights holder and has obtained a certain degree of influence after long-term use and publicity, the third party’s mark is not allowed to be registered; and
• If a third party preemptively registers a trademark that is well known in China, the third party’s mark is not allowed to be registered.

Note that rights holder bears the burden of proof for the above claims. That is, they should submit sufficient evidence proving they have a special relationship with the applicant of the trademark, their trademark has been used in China and has obtained some influence, or their trademark is a well-known trademark, etc. But sometimes it is not easy for the rights holder to collect and submit sufficient evidence and bad faith filings are finally approved for registration. Under this circumstance, the rights holder has to take further actions which could take a long time, or just cease to act.

So, obviously, under the current trademark law of China, protection for unregistered trademarks is very limited. Rights holders should be aware of this and try to avoid the difficulties caused by using an unregistered trademark.

Solutions

Considering the “first-to-file” principle and the disadvantages of using unregistered trademarks, we highly recommend filing a trademark for registration as early as possible. Of course, conducting clearance searches before filing so as to locate possible obstacles and take action against them in advance is also advisable.

Regarding the trademark which is lacking distinctiveness and has been refused for registration by the China IP Office, if the rights holder does not intend to change it, they may continue using it for years and properly keep evidence of its use. If there is sufficient evidence proving the trademark has obtained distinctiveness after long-term use and is able to identify the source of the goods/services, they could refile it for registration.

To sum up, “Trademark life lies in use,” and also filing a trademark registration as early as possible should not be taken lightly. The rights holder should take two “Use” and “Registration” measures to protect their legal interests in China.