Guidance on attacking a trademark preemptively registered by an affiliated party in China.
Written by: GoldenGate
| With the integration of the global economy and the development of more and more advanced Internet technology, people can conveniently access any public information and use such information to gain illegitimate benefits. This also frequently happens in the trademark field. For example, you may at first register your trademark and use it in commercial activities only in your own country, but then plan to expand to the Chinese market and find that your trademark has been registered by a third party. If you know the third party but do not have a close connection with it, how can you remove the copycat trademark? One effective way is to attack it on the grounds of the relationship between you and the third party. We have handled many such cases and would like to give some guidance in this area. | |
| In order to attack the copycat trademark, the following requirements should be met:
1.The third party must have had contact with you before the date on which they applied for the copycat If you have had business dealings with the third party and have signed contracts with them, these contracts would be the most favorable evidence of the connections between the two of you. Even if there has been no formal business cooperation, correspondence between your side and the third party could be used as evidence of the contact. 2.Your trademark has been used before the date on which the application was made for the copycat trademark If there is any evidence of use of your trademark generated in China, this would be preferable, but if your trademark has not been used in China, evidence of use in your own country is fine. Besides, you just need to provide evidence that your trademark has been used before the application was made for the copycat: there is no need to prove that your trademark has obtained fame and influence. 3.The copycat should be similar to your trademark and apply to similar goods/services The function of a trademark is to distinguish the source of goods or services. If the two trademarks, or the goods and services, are not similar, there will be no possibility of confusion. Preemptively registering the trademark of the partner in a cooperation is obviously a breach of good faith, which is not allowed by the Trademark Law of China. The China IP Office therefore usually adopts broad principles when it considers the phrases “certain affiliated party†and “prior use†of the trademark, and the similarity of the marks involved. If you encounter this kind of case, please take action immediately to preserve your position and protect your legal rights in China.  In addition, we recommend paying more attention to preserving evidence of use, which is very important in allowing an owner to protect its trademark rights. We also highly recommend filing new applications in China as early as possible, because the China IP Office adopts the “first-to-file†principle for trademark registrations. |
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