Article 32 of the Chinese Trademark Law provides: “No trademark application shall infringe upon other party’s existing prior rights. Nor shall an applicant register in an unfair means a mark that is already in use by another party and has certain influence”. The preemptive registration in this article refers to the latter part of this article, namely, “register in an unfair means a mark that is already in use by another party and has certain influence”.
In recent years, the trademark preemption has become more and more serious in China. Many prior users do not register their mark in time, nor take measures to remedy after the preemptive registration, so their brands fall into others’ pocket or get back with a very high cost. So, it is advised for the owners,, when your trademark is preempted, you should analyze the situation and take timely, flexible, and combinative methods to cope with it, here we present six ways for reference,
1. Submit a new trademark application immediately.
When a preemptive trademark registration by others is found in China, the first important is to file a new application for the mark immediately. Although such application will be refused due to the earlier preemption, it is possibly get registered in the following appeal or court procedure, if the preemption could be cancelled during this period, and this new application can also avoid others from registering the mark again effectively.
2. Cancel the Preemptive mark through Trademark Office (CTMO) or Tradmark Review and Ajudication Board (TRAB)
If the preemptive mark is still in the three-month publication period, an opposition against it should be filed immediately with the CTMO. If the opposition succeeds, the preemptive mark will not be approved.
If the mark has been approved to registration but for less than five years, the owner of the mark or the other interested persons could file a cancellation application with the TRAB requesting to cancel the registration. The well-known trademark shall not be limited by the five-year period.
For opposition or cancellation through TRAB, the evidences with regard to “reputation though use” of the mark and the “bad faith” of the preemptor, are very essential. Many cases failed for the lack of relevant evidence.
3. Settle the dispute by raising a trademark lawsuit
If both the above mentioned deadlines are missed and infringements occur, the lawsuit in the court might be considered.
No matter the administrative relief in No.2 or the legal relief in No.3, they are all ex post facto, the cycle of them is often long, and the requirements of evidence for “certain influence” “bad faith” are much higher.
4. Negotiate for an Assignment or Coexistence Agreement
Many of the trademark preemptors are for high transfer fees, particularly those individual/self-employed applicants or whose business scope is very different from the goods or services indicated in the applications. The prior user can try to contact the preemptor for an agreement of assignment or achieve symbiosis to obtain a portion right of the mark.
5. Replace the trademark by a new one
In light of the use of the mark, the collection of the evidence and the judgment of the preemptor, if the measures No.2-No.4 are found all difficult to follow, or beyond the affordable cost, the prior user could consider changing his mark to another one. Procedures like opposition, review for opposition and so on could be used to delay the preemptive registration and to get more time to prepare for the change.
6. Cancel the preemptive registration on basis of non-use
Since many preemptors have no intention to use the registered mark in practice, the trademark prior user could watch the actual use of the mark, once it ceases to be used over continuous three years, a cancellation application against it could be filed.