Recently we've noticed that more and more often we are asked by companies what options they have to obtain the successful registration of a trademark in China in the case such trademark (or a similar one) has already been taken by others.
Well, let's start saying that not every battle worth to be fought. I don't mean that we shall immediately give up without even trying but there are few evaluations that shall be carefully considered.
Registering a trademark in China is not as expensive as other countries; however that is only true if the registration goes smoothly from filing to granting stage. In case your choice is already taken by identical or highly similar marks is indeed possible that smooth registration won't happen.
Please also consider that there were 7,289,583 applications for trademark registrations filed in 2018, representing an increase of 24% compared with the trademarks filed in 2017 and an increase of more than 50% compared to 2016.
All the prior trademarks -filed and still pending or registered - constitute an obstacle to the registration of a new identical or similar trademark for same of similar goods/services.
Let's say, for instance, that around 9 months after our application for trademark registration, we receive a notification from the Chinese Trademark Office (CTMO) which states that the application did not pass the substantive examination because prior similar marks have been detected and, due to the similarity, block our application.
In this scenario, we would still have few options:
- Filing a rejection appeal before the Trademark Review and Adjudication Board “TRAB”;
- Filing a lawsuit before the Beijing IP against TRAB rejection;
- Filing opposition against the application which block our application (if we are in the right time-frame which allows us to pursue this action);
- Filing invalidation against the registered trademark which block our application (if we are within 5 years from its registration date);
- Filing non-use cancellation against the trademark which block our application (if this trademark has been registered for more than three years).
- Purchase the trademark or give up.
As a general rule we would suggest registering your trademark as soon as possible in order to avoid copy cats and, at the same time, be original but simple (indeed complicate logos are more easily subject to refusals).
As you may see from the quick summary above it's all about options (and time).
During the next 5 weeks we will try to give a brief explanation for each of the above actions, so stay tuned and keep following.