Some clues to fight against trade mark squatters in China

Filing oppositions/invalidations is a common option when thinking about defence against trade mark squatters. The Chinese authorities do provide legal protection for those trade marks with a certain degree of fame earned in China. However, it is not easy to prove the good reputation of your mark to convince the government to support your claim. Here we provide some guidance in relation to the collection of relevant evidence from the perspective of practical practice.

• Bad faith of the squatters
• The scope of its business licence. For example, if the squatter is a legal entity, the terms under the applications are beyond its business scope, thereby we can assume that the applicant has no intention of promoting the trade mark which it has been filing.
• The amount of the applications under the squatter. For instance, if there are unreasonable amount of filings under the applicant, it is another view to claim bad faith.
• If there are any relationships between the right owner of the trade mark and the squatter, such as being agents or distributors.
• If there are prior legal rights owned by the trade mark’s owner such as copyright or company name, especially for those having no business conduct in China

• Well-known status of your marks
• Sales records such as financial statements, sales contracts and invoices
• Reputation such as awards and honours, industry rankings recognised by local trade associations
• Business reports from neutral parties such as market value assessment reports and market survey reports

Please bear in mind that you cannot rely any single point of view as above, it is sensible to collect as much information as you can to increase the chances of success. To avoid this frustrated situation, it is also advisable to set up trade mark strategies before your brand enters Chinese market or even if you have no intention to conduct business in China in foreseeable timeframe. If your brand is a device mark, filing a copyright registration would be strongly recommended considering the costs much lower than any actions against trade mark disputes.

Written by Yann Tang – Chinese Lawyer

Yann is a Chinese Lawyer and Patent Agent specializing in intellectual property law, arbitration and litigation, and company compliances. She has Lawdit as an incoming Trainee Solicitor with a heavy emphasis on filing trademarks in China including Hong Kong.

She helps clients in growing their business without legal hassles and commercializing their intellectual property. She has obtained Law master degree in Shanghai, China and LLM degree in London, UK.