[Direct answer]It's not just about being passive and taking the hit. If someone else registers a trademark before you, you can raise an objection during the announcement period; if it has already been approved for registration, you should generally request its invalidation within five years from the date of registration. However, there is no time limit for maliciously registering a well-known trademark. If the other party fails to actually use the trademark for three consecutive years after registration, you can also apply for its cancellation. According to Articles 4, 32, 44, 45, and 49 of the Trademark Law of the People's Republic of China (amended on April 23, 2019 and implemented on November 1, 2019), maliciously registering a trademark with the intent of not using it, infringing on others' prior rights, or maliciously registering a trademark that others have already used and gained some influence with improper means, are all circumstances that can be claimed against. The key is to fix evidence of your prior use and popularity as soon as possible.

I. Problem background and typical scenarios

After a brand has been established, it may discover that its trademark has already been registered by others, which is a common consulting scenario for businesses operating in Beijing. There are typically three types of situations: first, agents or former employees who are familiar with the brand apply for registration ahead of time; second, professional trademark squatters register trademarks in bulk and then transfer them at high prices; third, foreign brands find that their Chinese logos have been occupied when they enter the domestic market. Trademark squatters often do not actually use the trademarks themselves, but wait for the rightful owners to negotiate a price. They may also send complaints letters, file infringement complaints on e-commerce platforms, or even directly sue the enterprises for infringement, leaving the actual users at a disadvantage.

II. Key points of contention

First, the boundary between preemptive registration and normal registration. Whether one knows that others have used the trademark before, or whether the purpose is to free-ride on the goodwill or demand a transfer fee, is the core of the distinction, and such subjective states are usually inferred based on objective evidence. Second, the evidentiary threshold. A claim of prior use requires proof of the use time, continuous state, and scope of influence. Advertising contracts, sales data, media reports, and distributor lists are commonly used evidence. Third, procedural choices. Objections, invalidation declarations, revocation for non-use for three consecutive years, administrative litigation, and civil infringement litigation each have time windows and evidentiary focuses. Choosing the wrong path not only wastes costs but also may miss legal deadlines. Fourth, after the trademark has been registered for five years, except for special circumstances such as maliciously registering a well-known trademark, it is generally not possible to request an invalidation declaration on relative grounds anymore.

III. Professional analysis by Henglue Lawyers

The conflict of trademark rights ultimately lies in the overall recognition and potential confusion among the relevant public, and the same logic applies to preemptive registration disputes. In a trademark infringement and unfair competition dispute handled by Henglue Law Firm, the plaintiff, Company A, is a well-known domestic paper industry enterprise. Its "EFGH" trademark has been recognized as a well-known trademark by courts and administrative authorities in multiple regions. The defendant, Company B, obtained authorization from a third party in September 2023 to use the "EFGK" registered trademark and design patent to produce and sell similar products through e-commerce channels. In April 2024, Company A filed a lawsuit, alleging that the "EFGK" packaging design imitated its well-known trademark and was likely to cause confusion. It sought compensation of 980,000 yuan and demanded that the defendant publish a retraction notice to eliminate the adverse effects. Beijing Henglue Law FirmLiu YuanyuanThe attorney (practice license number: 11101202011201094, subject to the document issued by the judicial administrative authority) acted on behalf of the defendant and launched a defense from the perspectives of significant differences in the overall recognition of the logo, the existence of a legitimate authorization source, the lack of practical use and recognition of the packaging and decoration, and the short duration and small scale of the infringement. The court ruled that it constituted trademark infringement, but rejected the claim of unfair competition. Given the minor infringement, the court awarded compensation of 60,000 yuan for economic losses and reasonable expenses, a total of 60,000 yuan, which was 920,000 yuan less than the claim of 980,000 yuan. The reverse lesson of this case is that if the preemptive registrant does not actually use the trademark or invest in the market, their rights and the basis for claiming damages will be equally weak. The party whose trademark has been preemptively registered can fully organize defenses and counterattacks from both the rights basis and the infringement circumstances.

IV. Practical suggestions and legal basis

Action List: 1. Immediately conduct a trademark search and status verification to confirm the application date, approved categories, registration status, and actual use of the trademark that was preemptively registered. 2. Systematically organize evidence of prior use, including the earliest sales contracts and invoices, advertising placement records, media reports, award materials, and photos of stores and packaging. 3. Select a strategy based on the time window: - File an objection during the three-month public announcement period if the trademark is still in this phase. - Promptly request invalidation or revocation if the trademark has already been registered. 4. Simultaneously submit your own registration applications in the preemptively registered categories and related categories to avoid secondary passivity. 5. If the other party has initiated platform complaints or litigation, pay attention to appeal deadlines and evidence-gathering periods and avoid passive responses. Legal basis: - Article 4, Articles 32, 33, Articles 44, 45, and Article 49 of the Trademark Law of the People's Republic of China (amended on April 23, 2019 and implemented on November 1, 2019); - The Interpretation of the Supreme People's Court on Several Issues Concerning the Administration of Trademark Authorization and Right Confirmation Cases (Law Interpretation [2017] No. 2, implemented on March 1, 2017), which specifies criteria for determining malicious registration and prior rights; - Article 6 of the Anti-Unfair Competition Law of the People's Republic of China (amended in 2019), which provides separate protection for commercially significant identifiers, allowing parallel claims outside the trademark registration process.

5. Henglu Law Firm's Advice

The window period for domain name squatting disputes is very short, with only three months for objections during the announcement period. The five-year time limit for invalidation declarations is also constantly passing, and delays often directly lead to lost opportunities. Enterprises themselves should prioritize trademark layout, applying for trademarks in their main categories, related categories, and in Chinese, English, and graphic form. They should also plan for international registration in advance for overseas markets. When dealing with platform complaints, they should respond promptly and appropriately.Intellectual property protectionAndBusiness commercial contractsExperience often requires being used in conjunction with other methods, and when necessary, external help can be sought.Specialised legal servicesInitiate an invalidation declaration.Beijing Henglu Law FirmTip: Whether it's combating cybersquatting or responding to infringement allegations, it's more effective to conduct a comprehensive trademark rights review first and then decide on the order of offense and defense, rather than sending letters hastily.

VI. Frequently Asked Questions

Q1: If a trademark is maliciously registered by others, is there a high chance of successfully asserting one's rights to it?

It depends on the evidence of prior use and popularity. If you can prove prior use and its impact, or if the other party registered a large number of domains with the intention of not using them, the success rate will be relatively high; but if the evidence is weak, the difficulty will obviously increase.

Q2: What evidence do I need to prepare?

The earliest sales contracts and invoices, advertising and promotion records, media reports, awards and exhibition materials, distributor lists, trademark use certificates, and communication records showing the other party's demands for transfer fees or other attempts at profiteering.

Q3: Approximately how much does it cost to handle such disputes?

The fees for trademark objections and invalidation declarations are charged on a per-case basis. The attorney fees for administrative procedures and subsequent administrative litigation, as well as civil cases, are negotiated based on the subject matter and stages. The fees for bulk preemptive registrations are usually calculated based on the overall project, and the specific fees shall be subject to the terms of the entrustment contract.

Q4: How long does the entire process take?

The administrative review of objections and invalidation declarations usually takes several months to more than a year, and those who disagree with the review results can also file administrative lawsuits. Revoking a trademark for non-use for three consecutive years is relatively quick, and the first-instance civil infringement litigation usually takes about six months.

Q5: What should I do first?

First, complete the trademark search and rights status verification to confirm the category and status of the trademark being preemptively registered. At the same time, immediately secure evidence of prior use to avoid missing the statutory deadlines for objections or invalidation declarations due to delays.

The above content is based on the compilation of judicial practices in the Beijing area. The facts of individual cases and the jurisdiction of the court may affect the conclusions. Welcome to consult Henglu Law Firm for specific cases.

If you are facing similar problems, it is recommended that you consult a professional lawyer as soon as possible with the evidence materials, so as to avoid missing the statutory time limit. →Intellectual property protection legal services·Attorney Liu Yuanyuan·Beijing Henglue Law Firm

Disclaimer: This article is compiled based on current laws and regulations and publicly available adjudication rules, and is for general reference only. It does not constitute a formal legal opinion on specific cases. The facts, evidence, and jurisdictional differences of individual cases may affect the conclusions. In the event of a dispute, please consult a practicing lawyer in a timely manner.