The Trademark law (L.15) prohibits an ‘agent’ or ‘representative’ from registering a trademark in its own name, without the authorisation of the principal. The question of whether a distributor should be considered as an agent or a representative was debated, until the Supreme Court, in a case decided in 2007, ruled in favour of the assimilation of the distributor to the agent.
In this case, therefore, it seems that there is solid ground to oppose (if it is still within the 3 months opposition period) or to ask for cancellation of the trademark (within 5 years following the original registration).
A direct contact with the registrant, with a view to repurchase the mark could also be envisaged. If the price is reasonable, it saves the expenses of a procedure and has the advantage of securing the priority date of the distributor's application.
It is easy to register a trademark in China, in the name of the applicant, as with or without place of business in China. There is no need to seek the ‘assistance’ of a distributor. A power of attorney in favour of a trademark agent is required if the trademark is to be filed directly at the CTMO. It is also possible to file an international extension to China of the original trademark registration, by an application through WIPO (see the trademark section of the website for more on the Madrid agreement/protocol).
If someone else files for the same trademark in China, on the same day, the registration will be granted to the trademark that was used earlier. In this case, it will be necessary to provide evidence of such use. Otherwise, the registration is granted to the trademark that was filed first.
It is not possible to enforce a trademark before it is registered. It is the registration that grants the exclusive right, and therefore, the possibility to enforce that exclusivity and prevent others from using it.
The only exception would be if the trademark, not yet registered in China, is already well known in China. Then it could be possible to enforce it, but it is necessary to obtain recognition of its well‐known status, as a pre‐requisite for the enforcement.
The first step to protect a trademark in China is to file for the registration, either directly with a trademark agent or by using the international extension of the original trademark, through WIPO.
The Trademark law (article 15) prohibits an ‘agent’ or a ‘representative’ from registering a trademark in its own name, without the authorisation of the principal. The question whether a distributor should be considered as an agent or representative was debated, until the Supreme Court, in a case decided in 2007, ruled in favour of the assimilation of the distributor to the agent.
In this case, it should be possible to file an opposition against the trademark application filed by the distributor, provided that the three months period following the publication of the trademark in the Trademark Gazette has not expired. Otherwise, the trademark is registered and it is necessary to file a cancellation application.
As to the other products, it is necessary to verify if they are considered similar to the produced condiment, or if they are different and whether the distributor also filed other trademark applications for such goods. Oppositions or cancellation procedures are certainly available in this case, particularly as it seems that the distributor acted in bad faith, and in full knowledge of the existence of the original trademark owner.
This being said, it is necessary to bear in mind that litigation before the CTMO and the TRAB are extremely lengthy, and that the ‘excessive’ amount requested by the distributor has to be considered in view of the duration of the procedure.