More than once, when our clients finally decided to register their trademark in China, they found it’s been registered by someone else already!
Can I claim it back by showing that we have owned and used the trademark for hundred years in our home country? They asked.
Unfortunately, the answer is no, they can’t.
China apply the “first-to-file” system in trademark application. It means the first applicant of a trademark will get it, despite the fact that someone else has used it for many years.
Is there any way to get it back?
It depends. If the current owner doesn’t use it at all, you probably have two options to get the brand.
1. Buying back the Trademark in China
You may try to buy it back, because someone register other people’s trademark to sell it someday to make money. That’s called “malicious squatting”. The price could vary from five digital till seven digital.
The good news is that the China Trademark Office (CTMO) in Beijing has adopted stronger action to curb squatting in trademark registration, such as Non-use cancellation . So, you have another option:
2. Filing for Non-use cancellation
You may choose to file for Non-use cancellation based on the fact that the current owner didn’t use it for three consecutive years. CTMO will ask the current owner to provide evidence to prove that they are using the trademark. Otherwise, CTMO will cancel the brand in nine months.
However, usually it’s hard to tell if the current owner has used the trademark actually before we file for Non-use cancellation.
We will check the following aspects to help us to decide:
- If the current owner is individual, the chance for him/her to use it properly is less;
- If certain qualification or permission is needed to sell the commodity the trademark is applied to, or such business is not included in the businesses listed in the business license of current owner (if the owner is an entity);
The above matters will help us to decide if we can make it.
But cancelling the brand can’t guarantee you definitely could get the trademark. You have to be the first applicant to get it.
Timing is very important at this point.
Usually, our routine is:
- Apply for the trademark, and at the same time, file for Non-use cancellation.
- The application would be rejected because it has been registered already. Let’s continue. Apply for review of the application with the Trademark and Adjudication Board (TRAB).
- If the TMO hasn’t cancelled the trademark, apply for suspension of the review until the decision of Non-use cancelling is made.
In this way, we can make sure our client is the first applicant once the Non-use cancellation is done.
However, the Non-use cancellation procedure could last more than three or four years or even longer, if the current owner decides go through whole proceedings. Not to mention the fee involved.
You can see, buy it back or file for Non-use cancellation both are time consuming and expensive.
So our repeated suggestion is: if you want to register your trademark in China, do it now！For more info, you may check our post: Trademark Registration in China – Procedure or Two Ways of Trademark Registration in China
Useful link:
TRADEMARK OFFICE OF NATIONAL INTELLECTUAL PROPERTY ADMINISTRATION, PRC
