what we think

By Fabian Knopf

Introduction

Foreign companies with brand visibility in China are vulnerable to trademark filings by unauthorized third parties. Such registrations can block legitimate market entry, disrupt business strategy, and trigger costly disputes. A recent case illustrates how China's first-to-file system operates in practice, and the mechanisms available to brand owners to protect their rights.

The Unauthorized Filing

In 2022, a third party applied for a trademark identical to that of an existing international brand. The application successfully passed preliminary examination and entered the opposition period. Without intervention, approval of the application would have prevented the brand owner from registering and using its mark in China.

Procedural Steps and Challenges

• Opposition and Defensive Filings: The rightful brand owner opposed the unauthorized application during the statutory period and simultaneously filed its own applications for the same mark. This dual-track approach ensured both defensive action against the third party and the establishment of the brand owner's own priority claims.

• Partial Rejection and Appeal: In 2023, the brand owner's new applications were partially rejected due to the unauthorized filing (pending). The rejection did not end the process, as Chinese law provides for appeals and the possibility to submit fresh applications.

• Resolution of the Opposition: Later in 2023, the unauthorized application was rejected based on the filed opposition. This eliminated the key obstacle and allowed the legitimate applications to proceed.

Outcome

By 2024, the brand owner's trademarks were officially registered, securing exclusive rights in China for the following ten years.

Significance

This case highlights several important trends in Chinese trademark practice:

• It shows the effectiveness of opposition proceedings as a tool for blocking bad-faith or unauthorized filings, even after an application has cleared preliminary examination.
• It underscores that a rejection is not final; persistence through appeals and re-filings can ultimately secure protection.
• It confirms that China's first-to-file system remains high-risk for companies that delay registration, making proactive filings essential for international businesses.
• More broadly, it reflects the increasing reliability of procedural mechanisms in China for defending legitimate trademark rights, even when disputes are protracted.

Key Takeaways

1. Register trademarks in China early to avoid opportunistic filings.
2. Use opposition proceedings strategically, combined with parallel applications and potentially non-used cancellation filings, to maximize protection.
3. Treat setbacks such as rejections as procedural steps rather than final defeats.
4. Maintain ongoing trademark monitoring to detect risks at the earliest stage.

Conclusion

This case demonstrates that while China's trademark system can be procedurally complex, it provides effective remedies for rights holders who act proactively and persistently. For international companies, it reinforces the dual lessons of early registration and procedural perseverance as critical safeguards in protecting brands in the Chinese market.

For support to build and protect your trademark portfolio in China, please contact [email protected] or your trusted contact at R&P. Our IP team focuses on portfolio management and disputes, and the enforcement of trademarks and other intellectual property rights in China.