MAINLAND CHINA

I want to recover my trademark

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Trademark recovery in China

An entrepreneur or individual whose trademark has been registered in China by an unauthorised person and who has lost the use of his or her own trademark has a chance to recover it.

Loss of trademark rights due to registration by an unauthorised third party or simple failure to register in advance are the most common reasons for fighting to regain trademark rights. This raises the dilemma of which strategy to adopt.

The first situation, the registration of the mark by a third party, is paradoxically the best that can happen. This is because as long as the legitimate trademark owner properly documents the bad faith of the applicant, it has a chance of recovering its trademark. Recent amendments to China’s Trademark Law support the recovery of trademarks in such a situation, although of course the law itself does not guarantee anything, but only provides tools.

An entrepreneur who has failed to act beforehand by not filing his trademark in time is in a more difficult situation. This is because, in order to recover a trademark in such a situation, the rights to the trademark to be registered must first be cancelled and then the trademark must be re-registered. Cancellation on the grounds of non-use is one of the formal procedures that can be carried out under the law. The Office will cancel the legal protection of the trade mark as long as it has not actually been used. The next step is to apply for protection of your own mark.

The process of recovering a trade mark consists of several steps – procedures. The first is to cancel the registration of the trademark you want to register and then apply for your own trademark. In mainland China, it is not possible to do this in a single procedure. Reclaiming a trademark in China requires the involvement of a professional representative. Firstly, because all documentation should be prepared by a competent lawyer, and secondly, because it must be in Chinese. Trademark Partners has many years of experience in this area – we know how to make a sound analysis of the situation. If you are wondering whether you should fight for the recovery of your trademark in China, please contact us. There is much we can suggest.

When can I try to recover a trademark in China?

You can fight for the recovery of a trademark at any time, with a real chance of recovery if you are able to prove bad faith on the part of the company or person who applied for the trademark in proceedings before the Chinese Trademark Office (CNIPA). Alternatively, you can succeed in cancelling protection rights to the trademark. The success of the second procedure is possible if the registered trademark has not actually been used in the three years prior to your application for cancellation.

How do you fight to recover a trademark in China?

Fighting to recover a trademark in China is a multi-step process. It should always start with a good analysis of the situation. At the outset, it is important to check whether you have a chance in the proceedings and what the best strategy is. It will certainly be necessary to consider whether there is a case for filing an invalidity action based on the allegation of bad faith. It is possible that a market analysis of the use of the mark or records in the trademark database will be required on the Chinese side. This is best outsourced to a professional attorney. At Trademark Partners, we have experience in this area and can effectively handle such projects. If you would like to discuss your case, please do not hesitate to contact us.

How long does it take to recover a trademark in China?

The battle to recover a trademark in China cannot be settled with a single application. Ideally, you will need to either invalidate your existing trademark rights or have them cancelled through a non-use cancellation procedure and then apply for your trademark. If all goes according to plan, you will need approximately 20 months to obtain the trademark rights in your favour. However, this situation is subject to a number of considerations and is relatively rare. Of course, it all depends on the specific case, but realistically you should expect a battle of about three years.

Trademark recovery in China – professional assistance

Trademark recovery in China is one of our core areas of expertise. More than once we have been faced with a situation where a trademark has been registered by people who have no right to it. We know what needs to be done, step by step, to help the rightful owner. We know this because we are a team of experienced experts in the field of securing trademark rights in China and other Far East Asian countries.

We are aware that many companies have encountered the process of registering a trademark in bad faith. Even the largest companies are affected by this problem. All of our assistance to companies in recovering their trademarks is through the legal process. We are aware that the payment of an exemption is appalling and unfair. However, it does raise legitimate concerns. If you need assistance with trademark recovery in China, we encourage you to contact us.

In the event that you learn that an unauthorised third party has registered your trademark, you should know that it is possible to file a trademark invitation application in China. In situations where our trademark has been filed for protection in China and has been pre-approved by the Trademark Office, we have three months from the date of publication of the intention to grant protection to file an opposition. However, it is important to provide proper justification and evidence. Trademark Partners assists its clients in preparing such documents.
Trademark registration in China is on a “first come, first served” basis. Therefore, the Trademark Office will first consider the application of the first person to file such an application.

It is often the case that third parties register trademarks of European and American companies in China in order to, for example, sell them for large sums of money, to force exclusive distribution or simply to block the export of products from China under a particular brand.

Trademark Partners – why use our services?

We are a team of experts specialising in trademark protection in China and other Far East Asian countries. We specialise in the registration and recovery of trademarks registered in China against the will of the owner. Trademark Partners also creates Chinese counterparts to trade marks. We have the expertise to manage entire trade mark portfolios in Asia.

Trademark recovery in China is not an easy matter, but our knowledge and skills allow us to provide professional assistance to our clients. Our project partners are experienced lawyers and patent agents. Trademark Partners’ long experience, local presence in China and numerous successes encourage you to use our services. We are efficient in our operations and take an individual approach to each of our clients. We are committed and punctual. Our extensive knowledge of business in Asia enables us to provide advice at the highest level. If you would like to find out more about what we can do for you, please contact us by email or telephone.

Let us recover your brand.
We know how to do it well.

Quick knowledge station

Is it even possible to recover a trademark in China?

Yes, it is possible, but it requires legal action and proof of prior rights. The easier it will be for you to recover your trademark, the more convincing you are to the China Trademark Office (CNIPA), the more qualitative evidence you can provide to prove your rights to the trademark and the bad faith of the applicant who has previously obtained rights to your trademark.

How to recover a trademark in China?

There are two options for action. Either to buy back from the current owner or to bring the protective rights to you as a result of the legal procedures provided for in the law.

How long does it take to recover a brand in China?

The whole process usually takes from 1.5 years to several years. In the best case scenario, it should take at least 2 years.

Can I recover a trademark if someone else has already registered it in China?

Yes, it is possible, but it requires legal action and proof of prior rights. The easier it will be for you to recover your trademark, the more convincing you are to the Patent Office, the more qualitative evidence you can provide to prove your rights to the trademark and the bad faith of the applicant who has previously obtained rights to your trademark.

Is it possible to buy back the rights to the mark instead of fighting to get it back?

Of course, if the current owner is willing to sell, you can buy it back. This is the quickest way to acquire the rights to the mark. However, you must be prepared to pay the fee, administrative and legal costs of transferring the rights to the trademark.

How can I prove that I have previously acquired trademark rights in China?

You can prove this by providing evidence of its market position, international promotion and, for example, rights acquired in other territories. This will only help if you can prove that your trademark was registered in China in bad faith.

#File1st® File your trademark for protection

FAQ - Frequently asked questions

1. What are the chances of recovering my trademark in China? 

It all depends on the situation. If someone has registered a trademark in word and figurative form that is identical to yours for the same goods or services, the chances are pretty good. On the other hand, if it is a word mark applied for by someone you have never dealt with or done business with, and your mark is not protected in your home territory or is new, the chances are very slim.

2. Is there any guarantee that I will be able to recover the trademark if I can document my previously acquired rights to it or the bad faith of the Chinese company that registered it?  

There is no such guarantee. Despite your best efforts, you may not be able to recover the rights to your trademark. We know how to fight for your rights, but no one can give you guarantees.

3. Jak długo trwa proces odzyskiwania znaku towarowego? 

Cały proces trwa zazwyczaj od 1,5 roku nawet do kilku lat. W najlepszym przypadku należy przyjąć minimum 2 lata.

4. Does the invalidation of a trademark previously filed in China in bad faith by an unauthorised person guarantee the right of the rightful owner to take possession of it? 

No, there is no such guarantee. The recovery of a trademark involves at least two legal actions. The first is to cancel the existing registration of the mark. The second is the filing of a new application, this time for you.

You need to know that each application for protection is assessed individually according to the current situation in the trademark database. This means that the registrability of a trademark years ago, on the day it was filed by an unauthorised person, may be different from today, when you finally file your trademark for protection. In other words, just because someone managed to register a trademark years ago, it does not mean that the examination of the application will go smoothly if it is filed today. You must also take into account the possibility of third party oppositions at the publication stage, which, if effective, may block your application for registration.

5. Can I recover a trademark in China without the help of a local agent? 

You cannot go it alone. You need the help of a professional representative. Let us know, we know how to help.

6. Is it possible to recover a trademark in China after a bad faith applicant has sold his rights? 

It is possible, although it depends on many details of the sale transaction and the market position of your brand. In other words, the matter should first be analysed in order to prepare a good strategy. Let us know, we know how to help.

7. How to protect against brand theft in China? 

Protecting against the loss of brand rights is a challenge in the age of the open internet. When you present your offer on your website, your trademarks are available to the whole world. The most effective way to protect them is to apply for protection before you make them public on the internet or at trade fairs.

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