Asia IP

China’s trademark regulations are often unclear and confusing to foreign brand owners given that they are unfamiliar with the system. Many brand owners are surprised to hear that China has a first-to-file system and, upon further investigation, may learn that someone has already registered their trademark, according to Brandy E Baker, a foreign counsel at Kangxin Partners in Beijing. “China’s regulations in general tend to be vague. We look to see how law is put into practice but with new regulations, it takes time to see how the regulations will be implemented. Further, confusion is added by the often inconsistent implementation of law in different provinces and localities,” she says.

Baker says brand owners can often regain their rights from trademark squatters through opposition, cancellation proceedings (non-use and dispute cancellation) and settlement negotiations. However, brand owners now have another option – well-known status – to regain trademark control.

A trademark recognized as “well-known” is actually afforded a legal status which offers broader protection than normally given to trademarks. The protections offered to well-known trademarks include the following:

• Unregistered rights, meaning that the owner of a well-known trademark would have priority over parties who are first-to-file;

• Cross-class protection, allowing owners to block third-party registrations in both similar/identical classes and some dissimilar classes of goods/ services;

• An extended time period to bring cancellation proceedings against conflicting trademarks;

• Protection beyond the normal trademark laws, allowing for the cancellation of the registration of an enterprise name which uses the wellknown trademark;

• Protection over the Chinese translation of a well-known trademark;

• Domain name protection, allowing the owner to block use of its well-known trademark in domain names.

To successfully register as a wellknown trademark, owners could go through two paths, administrative or judicial, lasting six months to two years depending on the path taken. However, Baker says that although the well-known method is worth trying, it will likely be difficult to obtain. “I would not say that well-known status should be widely available. However, the authorities need to continue to promote other options for legitimate brand owners to fight bad faith registrants in China,” she says.

Baker says to obtain the status, the first step for owners is to familiarize themselves with the current regulations and requirements to obtain this status to better understand if it’s a real option for them. Further, while doing business in China, brand owners need to keep good records of the use of their trademark in China so this can later be easily collected for proceedings where they are seeking well-known status (and potentially for other legal proceedings they may be involved in). “It’s important to remember that the trademark must be wellknown throughout China (prior to the registration of the opposing trademark), so while you cannot promote your mark after the fact in hopes of winning well known status, if you want to prepare for future issues, China-wide promotion of your brand is key.”