IPR Hub |Contact Us | Useful Links | Glossary | Privacy Notice    

Manage your Intellectual Property in Mainland China, HongKong, Macao and Taiwan

Cosmetics – Distribution

SME background

Nationality: Italian

Industry: Cosmetics

Status in China: Distributing

Case

An Italian manufacturer of skin products contacts the Helpdesk. The trade mark registration of his products was rejected by the Chinese Trade Mark Bureau as there was a similar registration. The company asked if there is anything they can do.

The Helpdesk asked if there was any relationship between the Chinese company that registered the trade mark and the European company. The European company did not have any business dealings with the Chinese company, therefore unfortunately as registration based upon the principle of bad faith with regard to known associate would not work. Furthermore, the Helpdesk asked if the Chinese company had registered a logo apart from a word mark. The answer was no, the Chinese company had only registered a word mark. Unfortunately, that meant that using copyright as a prior right to a logo could not be brought in as a ground for invalidation of the trade mark. Thirdly, the Helpdesk asked if the European company knew of more registrations the Chinese company might have with regard to trade marks similar to that of already registered in the EU and USA brands. The European company did not know the answer to this. The Helpdesk offered to do a quick search to see if this was the case. From the Chinese Trade Mark Office online Chinese database it turned out that the company had indeed more than fifty registrations of names similar to those of already registered trade marks of European Union and USA companies.

According to the recent practice of the CTMO, if you can prove that a company has registered at least thirty or more trade marks of other companies in the EU or USA etc., then you could ask for invalidation of the trade mark based upon bad faith, i.e. the company knew the existence of the European company and they purposely registered the trade mark so that the European company would have to pay them a sum of money for trade mark transfer and market entrance. The European company took up contact with a trade mark agent and started to file an invalidation request. After the invalidation request was filed, negotiations with the Chinese company also commence to see whether or not the Chinese company would be able to transfer the trade mark for a decent price to the European company.

Lessons learned

Proceed with a broader trade mark search based on the Chinese registrant to collect evidences of bad faith registration.