MAY 2008
Beat the first filing blues in China
More and more brand owners are discovering that someone else has managed to register their trade marks in China. Catherine Sun explains how they should deal with the problem
| One-minute read |
| One of the most easily avoidable, but nevertheless common, problems that brand owners face in China is finding that another party has already registered their trade marks. As China has a first-to-file system for trade marks, this can create a big problem for IP owners. Catherine Sun sets out a typical scenario involving a US bread making company whose distributor in China has already registered the English and Chinese versions of its trade mark and is copying the company's machines. Sun explains the classic mistakes the company has made and outlines the steps it needs to take to remedy the situation. These involve a series of administrative opposition, invalidation and cancellation actions, as well as going to court and ensuring that that the trade marks are recognized as well known. |
A growing number of domestic trade mark owners are becoming adept at playing first-to-file games with their foreign counterparts. This trend is borne out by the statistics: over the past three years, foreign brand owners have filed more than 70,000 trade mark applications each year in China, both directly and using the Madrid Protocol. Their Chinese counterparts have filed about 600,000 applications every year, which makes foreign filing about 10% of domestic annual filing. Statistics also show that in 2005 there were 1,374 trade mark invalidation actions filed at the Trademark Review and Adjudication Board (TRAB) by domestic brand owners. However, foreign brand owners filed 895 cases at the TRAB that year, which is more than 65% of domestic cases. These numbers indicate that foreign trade mark owners face and initiate more trade mark disputes in China than their domestic counterparts proportionally. A growing number of these cases are the result of Chinese companies and individuals registering trade marks that belong to foreign businesses. This partly explains why such a high percentage of invalidation cases have been filed by foreign brand owners in China.
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