Australian Business Alert: protect your business from bad-faith trademark registration

May 10 2018

Last month, we came across quite a few cases of Australian trademarks being registered in China in bad-faith by Chinese companies or individuals.

This echoes a recent release by China’s State Administration for Industries and Commerce that hostile trademark registration has picked up significantly in the past 2 years, with some high profile trademarks, both domestic and international, being pre-registered by businesses and individuals in China.
Hostile trademark registration is causing serious damage and disruption to the original trademark owners’ businesses.
There are three major types of hostile trademark registration tactics:
  1. Hostile registration of established brands overseas or brands currently sold to China;
  2. Hostile registrations with the use of generic terms or professional jargons in order to misrepresent public domains and resources
  3. Hostile registration with the use of or inclusion of a celebrity’s names
If an Australian business’ trademark has been registered in bad-faith by a third party in China, there are possibilities of reconciliation through financial measures or winning the trademark by providing proof of bad-faith registration.
It can be a costly exercise, and there is no guarantee of winning the trademark back, as China works on a first-file, first-get system for trademark registration.
Australian businesses need to file their trademark in China now, no matter whether they are working on China market currently or plan to enter China market in five years’ time.
For more information and assistance with China trademark registration and intellectual property protection, please contact our China IP specialists