A former supplier registered your brand in China. What can you do?
There are four routes and they run on different clocks. Opposition works for three months after the preliminary approval announcement. Invalidation on prior-rights grounds runs for five years from registration. A mark unused for three consecutive years can be cancelled by anyone. And prior use of your own may be a defence.
Opposition, invalidation, non-use cancellation and the prior-use defence, with the deadlines each one runs on, from the Trademark Law itself.
First, the bad news about timing
Every route below has a deadline attached, and the cheapest one has usually gone by the time a buyer discovers the problem. Discovery normally happens when goods are stopped, when a factory refuses an order, or when a marketplace listing is taken down. By then the registration is complete and the three-month window has closed.
So read the four routes as a decision tree rather than a menu, and work out which clocks are still running before you spend anything on any of them.
One caveat on the text. The articles quoted here come from the English version of the Trademark Law published on WIPO Lex, and that document states on its first page that the English text is for reference only. For anything you act on, a Chinese-qualified lawyer works from the Chinese text.
The four routes and the clocks they run on
Article 32 is the provision most of these turn on. It says that in trademark registration no applicant may infringe upon another person's existing prior rights, nor may the applicant, by illegitimate means, file preemptive registration of a trademark that is already in use by another person and has certain influence.
Certain influence is the phrase that decides most cases, and it is about your use in China, not your success at home. A brand sold for ten years in Britain and never shipped to a Chinese customer is in a weaker position than one that appeared in Chinese trade press twice.
| Route | When it is available | The clock |
|---|---|---|
| Opposition under Article 33 | Before the mark is registered, after preliminary approval is announced | 3 months from the announcement |
| Invalidation under Article 45, prior rights | After registration, on Article 32 and related grounds | 5 years from registration; no limit where a well-known mark was registered in bad faith |
| Invalidation under Article 44 | Where the mark was registered by fraudulent or other illegitimate means | Stated without the five-year restriction; the office decides within 9 months |
| Non-use cancellation under Article 49 | Where the registered mark has not been used for three consecutive years without a justifiable reason | Any entity or individual may apply; the office decides within 9 months, extendable by 3 |
The route people overlook
Non-use cancellation under Article 49 is the one that gets forgotten, and it is often the most practical. A squatter who registered your brand to block you, or to sell it back to you, frequently never uses it on goods. Where a registered trademark has not been put in use for three consecutive years without a justifiable reason, any entity or individual may apply for revocation, and the office is to decide within nine months of receiving the application, extendable by three months in special circumstances.
It does not depend on proving bad faith, on your reputation in China, or on prior rights. It depends on their inactivity, which is a fact about them rather than an argument about you. That makes it cheaper to run and harder to defend against.
The catch is in the name: three consecutive years. If the registration is eighteen months old, this route is not open yet, and the answer nobody wants to hear is that waiting is part of the strategy.
What you may still be able to do meanwhile
Article 59 contains a defence worth knowing. Where, before the trademark registrant applied, another party had used a trademark of certain influence that is identical or similar on the same or similar goods, the registrant has no right to prohibit that party from continued use within the original scope of use, though they may require the addition of a proper mark for distinguishment.
Original scope is the limiting phrase and it is read narrowly. It protects what you were already doing. It does not authorise the expansion you were planning, and it is a defence rather than a right to register.
The other thing to do immediately is evidence. Dated invoices, dated catalogues, customs records, exhibition entries, Chinese-language coverage. Both the prior-rights route and the prior-use defence turn on proving use with certain influence before their application date, and that evidence is much easier to collect now than in two years.
Here is the sentence that does us no good. The remedy that would have worked costs a few hundred pounds and had to be bought before any of this happened, which is registering the mark in China yourself, and it is covered in protecting your IP. Everything on this page is more expensive and less certain than that was. We also cannot run any of these procedures for you: opposition, invalidation and cancellation are a Chinese trademark attorney's work, and a sourcing agent who offers to handle it is describing somebody else's job. What we can do is gather the use evidence, identify the registrant, and tell you which clocks are still running before you pay anyone.
Frequently asked questions
My supplier registered my brand in China. Is it too late?
Not necessarily. Invalidation on prior-rights grounds runs for five years from the registration date under Article 45, and non-use cancellation under Article 49 opens once the mark has gone three consecutive years without use. Only the three-month opposition window closes quickly. Establish the registration date first.
What is the cheapest route?
Usually non-use cancellation, because it depends on the squatter's inactivity rather than on proving your reputation in China. Article 49 lets any entity or individual apply where a registered mark has not been used for three consecutive years without a justifiable reason. It is unavailable until that three-year period has run.
Can I keep selling while this is resolved?
Possibly, within limits. Article 59 says a registrant cannot prohibit continued use, within the original scope of use, by a party that was already using a mark of certain influence before the application, though the registrant may require a distinguishing mark. It protects what you were doing, not what you planned to do next.
Do I need a Chinese lawyer?
For opposition, invalidation or cancellation, yes. These are filings before the Chinese trademark authorities and they are a qualified attorney's work. A sourcing agent can help you assemble dated evidence of use and identify who holds the registration, which is the preparation, not the procedure.