At the end of 2016, the registration of CALISSONS D’AIX as a trademark in China for confectioneries by a Chinese company led to the reaction of the Union of Manufacturers of the Calissons d’Aix owner of the corresponding collective trademark in France since 1991.
This registration is certainly opportunistic and interested, but is it cancellable?
Yes, if it is still possible to oppose to the contested mark. To fight against the piracy trend in China, several bases of opposition may be raised alternatively or cumulatively:
- Prior use and certain reputation in Mainland China before the application date of the opposed mark, including the reporting of Chinese media on promoting or introducing the brand internationally used;
- Bad faith of the applicant, if the applicant is a former business partner of the legitimate owner, or if the applicant already filed many other famous trademarks (conducting a trademark proprietor search in the name of the applicant is very useful);
- Copyright infringement on figurative elements if any.
Besides, if the legitimate owner is considering China as a main destination of interest for future investments, new applications for the trademark and its Chinese equivalents should be filed in China as soon as possible.
Otherwise, when trademark owners postpone filing their trademarks in China and come second, after someone else has already filed the exact same trademarks, which would tend to reveal the fraudulent nature of these filings, they find themselves in an awkward situation.
It will be impossible for them, as rightful owners, to obtain directly the registration of their trademarks since the Chinese examiners perform both an examination on the absolute grounds and on the relative grounds and so they cite systematically the earlier trademarks barring registration. If the earlier marks have been filed by third parties in the same field of activity, the new applications are provisionally refused, regardless of the legitimacy of the applicants to hold their own marks in China and regardless of their trademark rights abroad.
Obtaining the cancellation of the earlier trademarks will be the challenge. Legitimate owners must prove that their marks are known in China, or that they are sufficiently known because of international publications or advertisements, in order to claim and support the bad faith of the earlier applicants. And it is only once the earlier trademarks are cancelled that the second marks can be registered.
Such procedures require time (to gather convincing evidence), and obviously significant budgets.
The simplest way to avoid this is of course to be the first to file.
Waiting to have established business before filing a trademark in China is consequently a high-risk strategy. The most secure and effective approach is to file one’s mark as early as possible, preferably within the priority period of the first filing.
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