November 27, 2020
For many years China was notorious for the lack of solid IP protection available to western brands. Squatters have been abusing the Chinese first-to-file trade mark system for years, obtaining trade marks for well-known brands in various classes – both important to the brands in questions and less relevant – to try and sell the prior rights to the brands when they were keen to enter the Chinese market. In China there are no requirements to show evidence of use or ownership when applying for a trade mark, and therefore anyone could obtain a trade mark even for some of the world’s famous brands.
Last year a long-awaited change was introduced to the Trademark Law in China, whereby “[a]ny bad faith trademark applications without intent to use shall be refused.” The brands can now oppose the pending applications or apply to invalidate the squatter’s registered trade marks claiming that these were registered in bad faith.
There have been a few successful cases since the introduction of this amendment on 1 November 2019. For example, the Italian luxury fashion brand Bottega Veneta was successful in their bad faith claim against a trade mark for “葆蝶家 BOTEGA” in Class 10. The applicant has filed over 50 applications for in China, many of which were identical or similar to famous brands. Even though Bottega Veneta did not have a trade mark in class 10, the Chinese National Intellectual Property Administration (CNIPA) found that the application was made in bad faith and was therefore refused.
This gives the brands some level of comfort that if anyone tries to register their trade mark in China, they will have a recourse against them – whether they have their own registered trade marks in China in the classes applied for by the squatter or not. However, we continue to recommend brands to register their trade marks in China as early as possible and to cover a broad range of goods and services. Even though there is a new avenue available to the brand owners against trade mark squatters in China, the bad faith opposition or invalidation proceedings can still be quite expensive and time-consuming, and as such it will be easier and more cost-effective in the long run to pre-emptively protect your brand there.
Briffa, being expert in all aspects of intellectual property law and practice, will be happy to help you put a IP protection strategy in place. If you would like to discuss protection of your IP rights in China (whether you are expanding your business there or manufacture or sell your goods there), please drop us an email or give us a call and we will be happy to arrange a free consultation with one of our specialist IP lawyers.
Written by Anastasia Troshkova, Solicitor
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