The First Thing To Do When Someone Has Your China Trademark

It used to be rare for one of our clients to be unable to secure a desired trademark in China because someone had beaten them to it. With the proliferation of trademark filings in China over the last 3-5 years, those halcyon days are over.

When our pre-application screening turns up a conflict with a previously registered trademark, we often suggest determining whether the preexisting trademark has been abandoned. Under Chinese trademark law, failing to use a China trademark in commerce at least once every three years puts the trademark at risk of cancellation. I use the words “at risk” because in China a trademark is presumptively valid throughout its term unless someone files a non-use cancellation against it (or otherwise challenges its validity). Of late, our China trademark lawyers have been fielding a bunch of inquiries regarding non-use cancellations.

Before we file a non-use cancellation, we gather up our own evidence regarding non-use, usually using Baidu for the initial search. If something shows up on Baidu indicating the trademark has in fact been used recently, our work is done and securing a non-use cancellation will likely not be possible. If we do not find anything on Baidu, we generally expand our search until we either find evidence of trademark usage or become convinced that filing a non-use cancellation is the way to go.

Filing a non-use cancellation in China is fast and easy, but as with pretty much everything involving the Chinese Trademark Office these days, the rest of the process is often delayed. The good news is that with most of our non-use cancellations, the trademark owner never responds and, once the CTMO processes the filing, the “offending” trademark is cancelled, clearing the way for our client’s own China trademark application.

We will be discussing the practical aspects of Chinese law and how it impacts business there. We will be telling you what works and what does not and what you as a businessperson can do to use the law to your advantage. Our aim is to assist businesses already in China or planning to go into China, not to break new ground in legal theory or policy.