What Happens If My Trademarks Are Already Registered in China?

If you’re planning to expand your business into the Philippines, one of the first things you should do is register your trademark with IPOPHL (Intellectual Property Office of the Philippines). Even if you’ve already registered your mark abroad, it won’t automatically protect you here. Each country has its own system, and in the Philippines, failing to secure your rights early could mean losing them altogether.

But what if you discover that someone else has already registered your trademark? Let’s break down what you can do.

The First-to-File Rule

The Philippines follows a first-to-file system. This means whoever files a trademark application first at IPOPHL generally gets the rights, even if you’ve been using the mark elsewhere for years.

This has caused problems for many businesses. A well-known example is the ZARA case. A local restaurant registered “ZARA” as its name before the global fashion giant officially entered the country. Eventually, IPOPHL and the courts recognized Zara as a well-known mark and gave Inditex (the clothing company) the rights, but not without a long and expensive fight.

The lesson? If your brand is valuable, register it in the Philippines before someone else does.

Step 1: Run a Trademark Search

Start with a search on IPOPHL’s online database. If no one has registered your mark, great—you can file your application right away.

If you find someone has already filed or registered it, don’t panic. You still have options.

Step 2: Check the Status of the Application

• If the trademark is still pending and has just been published in IPOPHL’s E-Gazette, you can file an Opposition within 30 days (extendible by another 30 days).
• If the mark is already registered, you’ll need to consider filing for cancellation or exploring other legal remedies.

Step 3: Oppose or Appeal

If the mark is only at the application stage, you can oppose it before IPOPHL’s Bureau of Legal Affairs (BLA). Grounds include:

• The application was made in bad faith (e.g., they knew your brand already existed).
• The mark is confusingly similar to yours.
• It violates the rules under the Intellectual Property Code (RA 8293).

If your opposition is denied, you can appeal to the IPOPHL Director General, then the Court of Appeals, and even the Supreme Court if necessary.

Step 4: If the Trademark Is Already Registered

If the mark has already been approved, you still have a few paths forward:

1. File a Cancellation Case – You can request IPOPHL to cancel the registration if it was done in bad faith or if your brand is a well-known mark.
   • For example, in Lacoste vs. Crocodile International, Lacoste successfully fought to cancel a crocodile logo that closely resembled its own.
2. Negotiate with the Owner – Sometimes it’s faster to buy the rights through an assignment or to enter into a licensing deal. This avoids a long court battle.
3. File an Infringement or Unfair Competition Case – If the registrant is using your mark in a way that confuses consumers, you can take them to court under the IP Code.

Step 5: Use Copyright as Backup

Trademarks aren’t the only way to protect your brand. If your logo, design, or packaging has creative elements, you can also register it under copyright with IPOPHL.

This gives you another legal layer of protection. Even if someone holds the trademark, your copyright over the design can be a powerful tool in negotiations or disputes.

The Bottom Line

Disputes over trademarks in the Philippines can be stressful, costly, and slow-moving. But courts and IPOPHL have shown increasing recognition of both local and international brands, especially when there’s clear evidence of bad faith or consumer confusion.

Still, the best approach is simple: register your trademarks as early as possible.

If you’re a foreign business, Philippine law requires you to appoint a local agent. Professional firms like Brealant (based in Makati), Federis, and Hechanova can represent you and help avoid common pitfalls.

In short: file early, keep watch over your marks, and act quickly if someone else tries to claim them.

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