Why you can lose your trademark before you've even sold in the Chinese market

Written by Ms Aglaya Salvatierra, China IP SME Helpdesk external expert and Founder of LexOrient

In China, whoever registers a trademark first is its legal owner. How the first-to-file system reshapes an entry strategy from the ground up.

China operates under the first-to-file principle: trademark ownership belongs to whoever registers first, not to whoever uses first. This system, the opposite of the Anglo-Saxon first-to-use criterion, shapes every aspect of a protection strategy.

In practice, a company may have operated in Europe for decades under a well-established brand and, on arriving in the Chinese market, discover that a third party has already registered it. Recovering the trademark demands costly negotiations, administrative proceedings and, often, legal action with uncertain outcomes.

The only effective protection is preventive: registering both the original trademark and its Chinese version before any business, trade-fair or communication action in the country. This includes the main name, relevant phonetic variants and, where appropriate, the logo.

Filings should follow the Nice classification as adapted to Chinese practice, which introduces specific sub-classes that don't exist in other jurisdictions. Incomplete protection leaves flanks open to defensive filings by third parties.

The UK government sums it up in a single line: «prevention is better than cure». The upfront investment in registration is always lower than the cost of recovering a trademark filed in bad faith.

LexOrient is a consultancy bridging the gap between branding in China and intellectual property.

This article was first published here: https://www.lexorient.com/en/insights/sistema-first-to-file-marcas-china