China Trade Marks

Deacons can help you navigate the complexities of the Chinese trade mark system.

Deacons’ presence in China dates back to 1986 shortly after China opened up for foreign direct investments. We have been advising clients on China-related intellectual property issues ever since.

Deacons (Beijing) Intellectual Property Agency Company Limited was opened in 2013 in response to increased client demand. The Agency is wholly-owned by Deacons and is licensed to file trade mark applications, oppositions, and invalidations and handle other post grant procedures directly with the China National Intellectual Property Administration (CNIPA), as well as enforcement procedures such as IP protection by the PRC Customs. Members at the Agency work closely with Deacons’ IP team in Hong Kong to provide seamless services to clients.

We have handled numerous high-profile, influential trade mark cases in China, including matters related to trade mark commercialisation or well-known trade mark recognitions, the protection of celebrity names, complex original equipment manufacturer (OEM) business cases, and invalidation cases involving trade mark infringement, malicious pre-emptive trade mark registration and administrative and infringement appeals at the Beijing IP Court and Beijing Higher People’s Court. We have also acted for clients in a few retrial proceedings before the Supreme People’s Court in China. Some of these cases are cited by the Beijing Intellectual Property Court as leading authorities.

China Trade Marks Experience

Represented one of the world’s largest lighting manufacturer in managing and handling their trade mark portfolio and trade mark enforcement matters and advising on various non-contentious and commercial matters in China, including litigations based on trademark infringement and trade name infringement from the Anti-unfair Competition Law’s perspective.

Advised one of the world’s most prominent character-based American entertainment companies on handling trade mark oppositions, cancellations and invalidations regarding its featured characters in China.

Advised a US biotech company on licensing its trademarks and patents in the context of a joint venture with a Chinese biotech company.

Assisted an international dining restaurant chain in conducting administrative raids against a franchise network operating nine shops across different major cities in China, including Tianjin, Beijing, Ningbo and Chengdu. Administrative penalties including fines, seizures and cease and desist orders have been imposed against the infringers.

Represented a US sporting goods company in legal proceedings against a Hong Kong company based on trade mark infringement and passing-off. In the parallel proceedings in Hong Kong, the Hong Kong Court has also recognised the client’s mark as well-known in Hong Kong.

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Represented a merchandise licensing company wholly owned by the estate of a deceased celebrity in a ground-breaking invalidation against a trade mark registered by a Chinese party. We also advised on trademark protection strategy in China.

Advised one of Europe’s leading suppliers of braking and suspension components in defending trade mark infringement actions and taking separate counter-actions (including trade mark invalidation and opposition) in China.

Advising a global leader in genomics and next-generation sequencing on managing its trade mark portfolio and related IP work in China. This includes assisting the client in dealing with CFDA (China Food and Drug Administration) issues and product labelling issues in China.

Assisted a UK footwear brand in applying for a retrial before the Supreme People’s Court of China in relation to the decision of the Trade Mark Office to reject the client’s trademark.

Acted for a UK manufacturer of electronic components in a trade mark, passing off and copyright infringement action spanning the UK, the US, Mainland China and Hong Kong.

Advised a world leader in high performance sports optics on a complex Chinese trade mark enforcement programme including conducting administrative actions with Customs in China and dealing with online complaints with popular e-commerce websites in China.

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