Nuestros abogados especializados en marcas registradas a nivel internacional han ganado recientemente un recurso contra una denegación previa de una solicitud de registro de marca en China. Este caso pone de manifiesto las complejas estrategias que a menudo se requieren para garantizar la protección de las marcas en China. Dado que la aplicación de estas estrategias puede llevar tiempo, es probable que las marcas dispuestas a adoptar una perspectiva a largo plazo obtengan mejores resultados.
When our client, a German company, sought to register its trademark in China, we found that an unrelated Chinese company had previously filed a registration application in bad faith. Unfortunately, this is a common scenario that prevents legitimate brand owners from gaining trademark protection in China. Other than praying for a refusal by the China National Intellectual Property Administration (CNIPA), the only practical step a brand owner can take in these situations is to oppose the application.
Given our client’s manufacturing activities in China prior to the filing of the bad faith application, they were in a strong position to oppose that application. Accordingly, the first step taken by our team was to file an opposition against the bad-faith application. At the same time, we filed an application for the client to register its trademark.
Applications to register trademarks are processed relatively quickly by CNIPA, while oppositions take longer. This meant that when CNIPA examined our client’s application, it was blocked by the Chinese company’s bad faith application — which, though opposed by our client — was first in line vis-à-vis our client’s application. Expectedly, CNIPA rejected our client’s application.
We immediately filed a new application to keep our client’s place in line. In these situations, it is essential to take swift action, either appealing the refusal or filing a new application. Otherwise, a third party could have potentially filed its own application, meaning that our client would have had two trademark applications ahead of them in the line. For more on this risk, check out our post, Consolidation of Trademark Actions.
When the time came for CNIPA to examine our client’s second application, our opposition was still pending. After that second application was refused, we appealed that decision. While that appeal was pending, the opposition was decided in our client’s favor. That in turn meant that when our appeal was finally considered, the Chinese company’s bad faith application was no longer in the way of our client’s application.
As you can see, our client’s path to trademark protection was not straightforward. Yet their patience ultimately paid off. After a successful appeal, the trademark has now been published on behalf of our client and we anticipate its China trademark registration will be completed within the next few months.
