Trademark Office of State Administration for Industry and Commerce recently issued, with respect to our US client's trademark opposition case represented by our firm, the decision in favor of our client and ruled that the opposed No. 4369887 "BIAMP" trademark is not approved to register in China. Then our client successfully opposes the trademark application filed by others and is able to get back its trademark exclusive rights in China.

Brief information about the case:

Our US client's parent company registered the trademark in USA for its brand twenty years ago. However, before the US client filed a trademark registration application in China, a Chinese has pre-emptively filed an application for registering the trademark.

The US company previously found that a Chinese company registered a domain name with the US company's brand at .com.cn, at the website directed by which the Chinese company sold similar products with such brand. We represented the client and filed the complaint to Domain Name Dispute Resolution Center of CIETAC and requested to transfer this domain name to our client. The Panel of the Center determined upon examination that our client has legitimate rights on the brand, and therefore directs the disputed domain name biamp.com.cn be transferred to our client.

Later, the US company found that another Chinese company registered a domain name with the US company's brand at .net, at the website directed by which this another Chinese company sold similar products with such brand. We again represented our client to file the complaint to Asian Domain Name Dispute Resolution Center, and request to transfer this domain name to our client. The Panel of the Center determined upon examination that our client has legitimate rights on the brand, and therefore directs the disputed domain name biamp.net be transferred to our client.

During the investigation for the above two cases, we found that the Chinese company registering biamp.com.cn and the another Chinese company registering biamp.net have the same operator who actually filed the application pre-emptively to register the biamp mark in China.

We represented the client to file before the Trademark Office the opposition against the preliminarily approval on the biamp mark filed by the Chinese operator and provided sufficient evidence and detailed grounds. The Office upon examination decided that our grounds are tenable and the opposed mark biamp is not approved for registration. Thereby, our US client has cleared the obstacle for its registration of its mark.

Attorney's comments:

In this case, when getting into the Chinese market the client found that its brand has been registered in the domain name biamp.com.cn and later biamp.net, and applied for trademark registration by others. China follows first-to-file rule for trademark registration applications, so the first to file the application will obtain the trademark exclusive rights. Generally if others pre-emptively apply and obtain the registration of the mark and domain name, it would be very hard for the true right-holder to get back the mark and domain name. However, in this case since during the careful investigation the evidence for bad faith is found and collected and the domain name arbitrations and trademark opposition are filed timely and properly, so our client can get back the domain names and oppose the mark registration successfully. Thus it is crucial to register marks and domain names in China as earlier as possible in order to protect the IP rights here. Of course, it is very important to closely watch the market, monitor any possible infringement, and then take actions when necessary.