While corporate identity is crucial when a company enters a new, competitive market, the
issue of trademark infringement in China remains a significant problem, with a high
number of trademark invalidation applications being filed. These difficulties are often
encountered by Polish companies expanding their activities in the Chinese market. The
practice of registering a trademark in bad faith is encouraged by China’s “first-to-file”
principle, according to which the right to use a trademark belongs to the person who first
registered it with the Chinese Trademark Office. However, even if your trademark has
been registered by an unauthorised third party, you still have the option of fighting for its
cancellation. At Trademark Partners, we assist legitimate trademark owners in preparing
and filing a trademark cancellation application and regaining the right to use the
trademark.
What is a trademark invalidation in China?
Trademark invalidation is the legal process by which trademark protection is revoked. It is carried out by the Chinese Trademark Office at the request of the interested party who submits the necessary documents together with relevant evidence that the rights for which invalidation is sought have been granted to the detriment of the interested party and that the trademark registrant has acted in bad faith.
Who can apply for the invalidation of a trademark in China?
Anyone who has had their trademark registered by a third party acting in bad faith and has credible evidence of this fact can file an application for the invalidation of a trademark. The applicant must prove to the relevant office that the person who registered the trademark was already fully aware at the time that he was applying for protection of a trademark that was not actually his property.
At Trademark Partners, we understand that every situation is different and that the process of invalidating a trademark may require slightly different steps. Our many years of experience mean that we are well prepared for different scenarios – in each case we offer professional advice and assistance in the process of applying for the cancellation of a trademark in China.
JHow do I file a Chinese trademark invalidation application?
If your trademark has been filed for protection in China by an unauthorised person and has been pre-approved by the Office, you can file a protest with appropriate justification and evidence within three months from the date of publication of this information. On the other hand, if the trademark has already been registered, you can apply for invalidation of the trademark protection right.
The whole process is easier if the person who filed your trademark was a business partner you know. It is a little more difficult to prove the legitimacy of an application for a declaration of invalidity in a situation where the registration was made by a person with whom you have had no previous business dealings. This does not in any way reduce your chances of a successful invalidity action, but it may involve a longer process, the need to provide more evidence and higher costs. The cost of preparing and filing an application to cancel a trade mark depends mainly on the complexity of the case, the number of classes in which the trade mark is registered and the amount of documentation that needs to be translated. You may also need to legalise some of the evidence before submitting it to the Office.
How is an EU trademark invalidated compared to a Chinese trademark?
The procedure for invalidating an EU trade mark is in principle very similar to the
corresponding procedure in China. In both cases, continuous monitoring of trade mark
registers is crucial to efficiently identify infringements and to act quickly and decisively.
Before initiating the official trademark invalidation procedure, it is worth seeking the
help of specialists. At Trademark Partners, we are able to take immediate legal action
thanks to our excellent legal team and our local presence in China.
