International companies with visibility in China face a persistent risk: third parties registering their brands without their authorization. Such filings can block market entry, disrupt product launches, and lead to costly legal disputes. This case study outlines how we navigated the complex Chinese trademark system to secure a client's rights, overcoming multiple procedural hurdles over nearly two years.
Important to note is that while the client had considered China as a potential market, they had not registered this mark in China – exposing themselves to this risk.
The Threat Emerges
In November 2022, the client noticed that another company had filed a trademark application identical to their own brand in one class. The application had already passed preliminary examination and was published for opposition. While the intent of the third-party applicant was unclear, a successful registration could have prevented our client from using their own brand in China.
The Initial Response
On behalf of the client, we filed a formal opposition to the infringing application within the opposition period and submitted the client's own application for the same mark. This two-track approach was critical to block other unauthorized registrations while establishing our client's own prior rights.
The First Setback
In May 2023, the client's application was partially rejected due to the pending unauthorized application that our client had opposed. Anticipating this possibility, the client agreed to file an appeal to keep the application alive and simultaneously refiled the application as a backup.
Breaking the Logjam
In December 2023, the unauthorized application was rejected based on the opposition. This removed the main obstacle to the client's own registration, significantly improving the chances of approval.
Securing the Rights
The first trademark was officially registered in August 2024, with the second following in November 2024. Each is valid for ten years. The client now holds secure, exclusive rights to its brand in China, with a clear pathway for future renewals.
Conclusion
This case underscores the importance of active trademark monitoring, rapid response to infringing filings, and procedural persistence. In China's first-to-file system, success often hinges on maintaining multiple filings, pursuing appeals, and timing actions to coincide with the resolution of related disputes. A rejection is not the end of the road, but often just part of the journey. By acting decisively and strategically, we transformed a serious brand threat into a complete legal victory.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
