Bad faith trademark registration in china [With Tutorial]

Last updated : Aug 12, 2022

What is bad faith in trademark?

Bad faith is recognised as an autonomous concept of EU law that must be given an independent and uniform interpretation throughout the European Union, taking into account the context of the provision and the objective of the relevant trademark legislation.

Does China care about trademarks?

If you are manufacturing but not selling in China, trademark protection is required. While most businesses agree to obtain trademark protection in China if they sell their goods there, many foreign companies fail to realize that trademark protection is also required if their goods are manufactured there.

How do you oppose a trademark in China?

An opposition can be based on a number of grounds, including prior use of the trademark before the applicant. Commencing an opposition involves filing a complaint at the China Trademark Trial and Appeal Board. The Applicant must file an "answer" or default and lose the application.

What is trademark squatting in China?

Trademark squatting, in which someone else registers your trademark, suddenly prevents you from using your brand in China. In case you do use your brand, you can be charged with infringement actions, and can be asked to pay compensation to the trademark squatter who lawfully holds your trademark.

Do I need to register trademark in China?

If you are operating in China, you need to protect your unique brand, product and company through trademark registration. While you may already have many trademarks for which you own the rights abroad, essentially all bets are off upon entering the China market.

How can I protect my brand in China?

1. Register trade marks early.
2. Territorial registration.
3. Register trade marks in English and Chinese.
4. Mitigate risks through vigilance.
5. Educate employees.
6. Consider the applicable jurisdiction in disputes.
7. Utilise available enforcement procedures.

How much does it cost to trademark in China?

Typically, the cost to register a trademark in China is $850 in legal fees for applications in one class. Chinese government fees are $50 per class.

How long is the trademark opposition period in China?

Within a period of 3 months from the date of the publication, any interested party may file an opposition against a Chinese trademark application. No official grant fee is stipulated. A trademark in China is valid for ten years from the date of registration.

Are there squatters in China?

In China, squatters may not just be local competitors but also syndicates operating as a giant profit-making machine, and they are upping their game as the Chinese government and brand owners have both increased their efforts in defending legitimate trademark rights.

Can you squat on a trademark?

Trademark squatting can be done to sell the trademarks back to the original owners for a high price, to sell counterfeits, or to impersonate the brand in order to damage its brand reputation.

How do I register a trademark in China?

Filing the application. The company must either directly file an application with the China Trade Mark Office (CTMO) or file the application through the World Intellectual Property Organization (WIPO). If choosing the latter, the trademark application must be based in the country where the mark is currently registered.

How long does it take to get a Chinese trademark?

The process to register for a trademark takes around 16-24 months, be sure to start the process well in advance. If you're not resident in China or have a foreign company, you're obliged to work with a local trademark agent who will help you to register the trademark.

How do I register a product in China?

1. Application form for licence.
2. Product ingredients information.
3. Active ingredients, evidence of use and inspection methods.
4. Manufacturing technique and diagram.
5. Product quality standard.
6. Testing report from a testing laboratory approved by SFDA and related materials.

How do Chinese protect their intellectual property?

1. Register your IP.
2. Perform Takedowns on Chinese Websites.
3. Register with Customs.
4. Engage a Brand Monitoring Service.
5. Monitor Chinese TM Filings.

How does copyright work in China?

Copyright Law of the People's Republic of China In most cases the copyright term is the life of the author plus 50 years, but for cinematographic and photographic works and works created by a company or organization the term is 50 years after first publication.

How do you protect your brand?

The most common way to legally protect your brand is to register a trademark or copyright, or both, to put the entire world on notice of your claim to the exclusive rights in the registered mark or work.

How do I search trademarks in China?

Chinese Trademark Office website The Chinese Trademark Office provides a free online search tool at http://wcjs.sbj.cnipa.gov.cn/ - click the 'English' link at the upper right of the page.

What are trademark bandits or squatter '?

What are trademark 'bandits' or 'squatter'? Companies that file for a trademark in their home country using a trademark already filed in another country. Which legal system is most frequently found in the United States, U.K., and the U.K.'s former colonies? Common.

How do I register a trademark internationally?

You can apply for international trademark protection by filing an MM2 form, which is available on the WIPO website. Then, you can submit a hard copy to the U.S. office. There are 113 countries that currently offer protection under the Madrid Agreement, including China, France, Italy, Australia and the European Union.

How long does trademark last?

A federal trademark lasts 10 years from the date of registration, with 10-year renewal terms. Between the fifth and sixth year after the registration date, the registrant must file an affidavit to state that the mark is still in use.

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welcome and thank you for standing by at this time all participants are in a listen-only mode anytime throughout the conference if you have a question you may press star 1 today's conference is being recorded and at just how much from the comb to Janice Wingo international trade administration you may begin thank you welcome this morning for our presentation on bad-faith trademarks this morning were very lucky to have that for a second time a Joe Simone who is the practitioner in China based in China American partition who has over 25 years experience and has handled probably thousands of trademark opposition pages in his 25 year career Joe received his undergraduate degree from Penn and a law degree from American universities been practicing in China for 25 years in old China hands spoken to us before back in 2011 and this is an update on his presentation with bad self trademark Joe thanks Janice hello all I as I said that as a Janice that I've given this presentation before and I was able to dust off my old presentation and regrettably not too much too much has changed but definitely there have been changes and for the for the positives I think we're headed into positive territory as well with them impending amendment of the trademark law perhaps later this year that's them I'm going to click for the first slide there it is I'm going to give you the key stuff we need to know in two slides in a nutshell and then if you're busy then feel free to do other things I'll just be going into further detail and all these topics here basically has virtually everybody's they dealt with trademark registration in China knows piracy at the register is common predictable I'm going to try to demonstrate that for you and through some examples will later one must remember that that the targets of piracy are not just your english-language marks its logos it's also Chinese language versions of your trademarks and many clients that I've worked with in the past of new to trademarks in China don't even know they have Chinese marks many people will will start selling and then find out only years later that the distributor or just the public in general have adopted a name or maybe multiple names and they'll find those two apart after you know if they haven't been registered early by the trademark owner there are legal tools for dealing with with parted marks through opposition's ie before registration during the opposition period after it gives Idol or through cancellations but the laws basically unpredictable and we'll go into a little more detail and all that on how all that and they risks posed by Parsi the register are potentially very severe you you will typically have have pirates who will who will do nothing will just sit on the mark and and there'll be an implied threat of action in that that's often a motivating enough after one hears about these risks the actual the more concrete risks and they include obviously threats being made by Pirates to your suppliers or your distributors once those suppliers and distributors start complaining about threats they will put a lot of commercial pressure on the only trademark owner to do something a pirate who's particularly aggressive might register their record their rights with seat with Chinese customs and they'd end up with seizures by Chinese customs and indeed by other enforcement authorities in China there as a result of all this you may end up with interruption of exports of legitimate product that you're having made in in China by local factories and that can obviously impact dramatically on on your supply chain and then of course if you end up them with with seizures they and you could end up with you know actually a more permanent consequence including civil damages injunctions administrative fines or even possibly criminal penalty so though I have to say I haven't quite heard yet of any any good-faith trademark owner who's ended up having to you know suffer from criminal penalties as a result of one of these sort of cases usually they're settled and that the Pirates goal is to is to settle in and squeeze some money out of it usually so in a nutshell unless he'll the best practices now can't repeat it enough file your own applications as soon as you can generally if you're thinking of launching any new brand in the u.s. there and you're going to get some notoriety then file as soon as possible in China as well if you're going to be producing in China for sale just in the US file in China for sure because production in China is arguably a sort of use of the markings and you know local factories and and people in the trade will will become aware of your you know of your production in China so that that can attract pirates file broadly as well covering a wide range of goods and services the decision in that regard is going to be case by case but you go unlike the u.s. you will go beyond the scope of goods that you're actually using and you'll want to file more broadly you know outside that circle of what you're actually producing and selling as I alluded earlier you know create and register Chinese language versions of your marks as early as possible if you're going to be launching and trying to conduct periodic audits to identify problems like you know pirates that that may not have gotten their marks because added yet you can do searches of the trademark offices database and identify problem marks within a couple months after they've been filed so and it usually takes about you know 10 months to a year for them to because edit internet audit your own trademark registrations periodically to make sure your coverage is keeping up with your your actual use of your plan to use and then when you do discover piracy the way the options carefully get some good advice typically we would recommend investigating the pirate as much as possible the more information you have the better your strategy is going to be more effective it is file opposition's file translations obviously if you're if you've got the patience and you don't have commercial pressures and maybe sit around and wait perhaps an on use cancellation might be viable after three years of registration of a pirate market of course that's not wise if you're actually producing and selling in China and be prepared to purchase the mark and pay a reasonable amount of money be prepared for the worst case scenarios and lineup management they need to know that there's there is a sort of value there's a market price for marks big and small and it's a lot that usually a lot more than you would like to pay so you can purchase directly in your own name or through Council or you can do it indirectly and have an investigator usually hired by Council set up the front company and they'll go and basically pretend to be another pirate and that often works so that's that's the core best practices and nature the problem so let me kind of wind it back and I'm going to move through as quickly as I can through these slides about 22 to go I generally find people are interested in this topic already know quite a lot so I'm very happy of course to talk offline about these issue

Thanks for your comment Bob Laursen, have a nice day.
- Mercy Cilek, Staff Member

welcome and thank you for standing by at this time all participants are in a listen-only mode if you would like to ask a question at any time throughout the duration of today's conference you may press star 1 on your touch-tone phone and unmute your line and record your name today's conference is being recorded if you have any objections you may disconnect at this time now I will turn the meeting over to miss Janice Wingo with the international trade administration good morning welcome today's webinar on bad faith trademark filings in China today we're very lucky to have josephson mountains a partner at Baker Mackenzie in Hong Kong Joe has over 25 years experience in IP registration and enforcement and I think we can great gain some wonderful wisdom of grains of wisdom from him mr Sandman has been very very gracious to say he'd be willing to listen take questions during his presentation and anybody who's listening on the audio cast they can also email mr. Simone his email will be at the end of the program and he said you'd be willing to take your questions as well so Joe thanks a lot Janice let me just delve right into it and to simplify for those who are just interested in the top line I've like to put are the takeaways first and we'll go into detail in a lot of these points but in a nutshell if you don't already know piracy at the register is extremely common and fairly predictable even for small brands in American brands European even for Chinese it's a problem lack of certain provisions in law general lack of development in certain legal concepts including that bad faith which I'll discuss a little bit more later and the you know it's kind of reflection of the developing legal system in general in China but it's also partly because there's a lot of enterprising folks there who just you know looking to take advantage of some weaknesses on the lawn it's a kind of human nature i guess to a degree anyway the one must keep in mind this whole phenomenon that although you may be really very focused on your English mark your English trademark pirates are also going after your Chinese versions of your marks we're going to have two logos and of course the main names and company names i'm going to just focus my mind a discussion today on English on the trademarks which is the English Chinese marks and logos it is possible once you find these marks to oppose them before they're registered in the digital phase and to cancel them after they're registered but I won't go into too much detail on those procedures I could I can provide a some basic material matter if anybody would like standard memo stuff but bottom line is we'll go we'll go into more detail on the you know the basic chinese laws on these one on it can be used as a basis for opposing cancelling but bottom line is your outcomes most of the time are going to be uncertain if you haven't already registered your mark in china somebody's gotten there first probably means you haven't gotten a lot of use of your mark in china a lot of advertising sales etc and it probably means and with the lack of a kind of reputation in china it makes the outcome uncertain and we will discuss how to dress that just a moment next you know the Pirates work and will have how can they hurt you well they can stop you from selling and as a practical matter a lot of people go ahead and sell anyway and they take a lot of risk in doing so but they can you know go after you they can go after your your vendors in China they can even threaten criminal action so it's a serious situation for companies particularly since we have been out here a long time and you know when i started twenty something years ago folks for china's like a third tier market now it's it's the hope of the whole company and so one plans ahead five to ten years even if today China is important you'll probably would be feeling it's important in five to ten years so again pirates can stop you from from selling and that's something better dealt with earlier rather than later next pirates can not just stop you from selling domestically in China they can stop you from having your product produced in China for export back to the States or other countries and this is probably the biggest concern that I see would come with SMAS small medium-sized companies from the US and elsewhere they have product produced in China and they may do it directly or they may do it through an intermediary somebody in Hong Kong or or Taiwan hua ranges production their factory in China so there are consequences for when a pirate has a registration and you know you may not be interested in selling but you want to keep producing for export through your OEM suppliers so this is another big risk and it's another reason to really be focused on this sort of issue quickly earlier resin later as I said pirates can and do sue the owners of the real owners of the mark so dealing with that kind of threat of litigation and trying to negotiate your way out of it and trying to resolve these disputes is part of what i want to discuss today and there's some best practices i'd like to offer and two in a nutshell for the best practices i just lift them up here as in this slide as a file early and broadly you're going to hear this from my IT a USPTA all kinds of associations that whenever you hear about china file early it's a first-to-file system there's lots of countries like that china is an unusual basically means whoever gets there first to the register has rights anybody who uses a mark earlier is not presumed to have any kind of Rights so and you know you prior use can be useful in an opposition or cancellation but it's by no means a slam dunk you'll have to produce more than just evidence of basic uses and to generate a lot of evidence of reputation and other things will get into that few more later next when as I mentioned the Pirates will go after a chinese-language mark and a best practice for avoiding piracy is to create and register your own Chinese mark and in China as early as possible we found very recently even our firm that few of the sort of smaller up-and-coming clothing brands in the US have been producing in China for a long time they know they still have no interest in selling in China and on the next few years and they find that their brand has already been reported on in the Chinese financial press and then eventually there's been mail order type sales and you when you do a search you find it was maybe three or four different Chinese versions of the brand already in circulation brannhard it and didn't even know about it well very likely you know in situational because somebody didn't China is going to figure out not only that they should be registering English mark take advantage of a loophole but one of these Chinese marks so again it's good to focus on Chinese branding earlier rather than later next is conducted the conducted he bought it and in all classes in China it's not that hard I'll explain how that can be done cheaply and just do it on your own your own without even a lawyer helping please get yourself started in the process but do an audit and then if you fi

Thanks gilannol9 your participation is very much appreciated
- Mercy Cilek

About the author

Mercy Cilek

I've studied nanoengineering at Northwood University in Midland and I am an expert in archaeomythology. I usually feel stressed. My previous job was landscape architect I held this position for 11 years, I love talking about fingerprint collecting and banjo. Huge fan of Amy Poehler I practice parallel bars and collect patches (also badges).