China is one of the world's largest markets - and an attractive destination for companies looking to expand internationally. But this is precisely where a major danger lurks: so-called trademark grabbers.
Trademark grabbers are companies that systematically monitor the European market and register trademarks in China that have a certain potential but have not yet been registered in China. Their aim is either to sell the trademark at a high price to the actual rights holder or to profit from its popularity.
How can you protect yourself from trademark snatchers?
1. early trademark registration: The best protection against trademark grabbers is to file a trademark application in China at an early stage. Chinese trademark law follows the "first-to-file" principle, i.e. the first application filed counts. First come, first served - regardless of whether the trademark already exists elsewhere.
2. strategy for Chinese trademarks: Companies should not only register their original trademark, but also have a Chinese version of the trademark protected. Trademarks are often translated into Chinese characters by third parties and registered separately.
3. monitoring the market: regular trademark monitoring can be used to check whether third parties are attempting to register identical or similar trademarks in China. This allows countermeasures to be initiated at an early stage.
Legal action against trademark grabbers
If a trademark has already been registered by a third party, there are several legal options available to the companies concerned:
1. opposition against the trademark application: If the trademark application has not yet been finally registered, an opposition can be filed with the Chinese Trademark Office (CNIPA). A legitimate interest must be proven for this.
2. application for cancellation due to application in bad faith: If the trademark has already been registered, an application for cancellation can be filed on the grounds of application in bad faith. This is particularly promising if the trademark grabber has registered a large number of third-party trademarks.
3. application for cancellation due to non-use: According to Chinese trademark law, a registered trademark can be canceled if it has not been seriously used within a period of three years after registration. Companies that have been victimized by trademark grabbers can use this provision to challenge the unlawfully registered trademark and apply for its cancellation.
4. negotiation or repurchase of the trademark: In some cases, it may make economic sense to buy back the trademark from the trademark grabber - especially if legal action takes too long or is uncertain.
5 Judicial measures: The last option is to bring an action before a Chinese court. However, this can be time-consuming and costly, which is why careful consideration is required beforehand.
Conclusion
Trademark grabbers in China are a serious problem that can cost companies dearly. The best protection is a proactive trademark strategy with early registration. If a trademark has nevertheless been registered unlawfully, there are legal options to take action against it - from oppositions and cancellation proceedings to legal action.
We will be happy to advise you and help you find the best strategy for your trademark.
