A British homeware brand discovers, three weeks before a Shanghai trade fair, that its name has been registered in Class 21 by an individual in Fujian who has filed for forty other European brands the same year. The brand's London counsel is sympathetic but useless: under English common law, prior use matters. In China, it largely does not. The filing date does.
This is the structural reality every foreign brand owner eventually meets. China's trademark system is first-to-file, and treating it as a paperwork formality — something to attend to once sales justify the cost — is the single most expensive mistake foreign businesses make in the market.
Why first-to-file changes the calculus
In most common law jurisdictions, using a mark in trade generates rights. China does not work that way. With narrow exceptions for well-known marks and certain prior-use defences, the party that files first at the China National Intellectual Property Administration (CNIPA) owns the mark. Reputation built abroad, however substantial, rarely overrides a domestic registration.
The practical consequences are uncomfortable:
- A distributor, former employee, agent or unrelated opportunist can register your mark before you do.
- Once registered, that party can block your imports at customs, demand royalties, or sell the registration back at a premium.
- Recovering the mark through invalidation or non-use cancellation is possible but slow, often eighteen months to three years from filing to final outcome.
- Until recovery, your Chinese-language brand name, your logo, and even transliterations may be off-limits to you in the very market you are trying to enter.
The cheapest moment to address all of this is before you have a problem. The second cheapest is the moment you decide China is on the roadmap, even tentatively.
Nice-class coverage: think defensively, not minimally
China uses the Nice Classification but applies it through its own sub-class system. Two goods within the same Nice class may sit in different Chinese sub-classes and be treated as non-similar — meaning a registration in one sub-class does not necessarily block a later filing in the other. This granularity is where most foreign filing strategies underperform.
A defensible filing programme typically considers:
- Core classes — the goods or services you actually sell. File across every relevant sub-class, not just the headline one.
- Adjacent classes — packaging (Class 16, 20), retail and wholesale services (Class 35), and any class where a counterfeiter would naturally extend your brand.
- Digital and platform classes — Class 9 (software, downloadable content), Class 38 (telecommunications), Class 42 (SaaS, design) are routinely squatted because they are cheap to file and broad in reach.
- Chinese-language equivalents — your transliteration, your phonetic Chinese name, and any nickname the market has already given your brand. If you do not file these, someone else will, and the market name will not be yours to control.
- Defensive registrations — variants, common misspellings, and stylised versions, particularly where your logo carries equity independent of the wordmark.
The instinct to file only in the class that matches today's product line is the instinct that funds squatters. Treat the registry as a perimeter, not a label.
When the mark is already squatted
If you discover a prior registration, the path forward depends on the registration's age, the squatter's portfolio, and the evidence you can assemble. Broadly, the options are:
- Opposition — available during the three-month publication window after preliminary approval. If you catch a hostile application before registration, this is the cleanest route.
- Invalidation — for marks already registered, typically on grounds including bad faith, prior rights, or misappropriation of a known mark. CNIPA and the courts have, in recent years, taken bad-faith filings more seriously, particularly where the squatter has a pattern of hoarding unrelated brands.
- Non-use cancellation — a registered mark unused for three consecutive years can be cancelled on application. Squatters who never intended to trade are vulnerable here, though they sometimes manufacture token evidence.
- Negotiated assignment — sometimes the fastest commercial answer, particularly where a trade fair, listing or launch will not wait. It is also the route that funds the next round of squatting, which is why most counsel advise it only as a last resort.
- Coexistence or rebrand — occasionally the right answer in a class you do not truly need, freeing resources for the classes you do.
A bad faith opposition or invalidation succeeds or fails on evidence. Prior use abroad, media coverage, trade-fair records, distributor contracts, Chinese consumer awareness, and the squatter's own filing history all matter. Assemble them early, in a form a Chinese tribunal will accept — notarised, legalised, and translated.
Building a programme, not a reaction
Foreign brands that defend their China position well tend to share a few habits.
They file before they ship. They monitor the CNIPA gazette monthly, not annually, so oppositions are caught inside the publication window. They register their Chinese-language name deliberately, rather than letting the market choose one for them. They keep a watchlist of known serial squatters in their sector and act on new filings within days. They treat customs recordal as a routine step once registrations issue, not an afterthought. And they retain Chinese counsel who can move at registry speed, because the registry does not pause for foreign decision cycles.
None of this is exotic. It is simply the cost of operating in a first-to-file system where the registry, not the market, decides who owns the brand.
FAQ
Q: We have not launched in China yet. Is it too early to file? A: No — it is the ideal moment. Filing before market entry costs a fraction of recovering a squatted mark, and CNIPA examination itself takes several months, so early filing aligns with, rather than precedes, a sensible launch timeline.
Q: A distributor registered our mark "to protect us". What do we do? A: This is a common and recoverable scenario. Agent or representative misappropriation is a recognised ground for invalidation, but the evidence — distribution agreements, correspondence, payment records — must be preserved and presented carefully. Move quickly; do not sign anything new with the distributor first.
Q: Is registering only the English wordmark enough? A: Almost never. Chinese consumers will use a Chinese name for your brand whether you choose it or not, and unregistered transliterations are routinely squatted. File the English mark, a chosen Chinese-character mark, and the pinyin form together.
For brand owners navigating CNIPA filings, oppositions, or squatter negotiations, Serene Jade's Chinese Lawyer service pairs you with bar-admitted PRC counsel who handle trademark matters end to end.