First to File Wins: Trademark Squatting, Bad Faith, and Brand Protection Outside the United States
By Casey Scott McKay ·
In most of the world, trademark rights belong to whoever files first, and use counts for very little. American brand owners discover this when a stranger in another country registers their name and offers to sell it back. This article explains how the first-to-file systems actually work, why squatting is a rational business in them, and what recourse exists once it has happened. It covers the bad-faith provisions that jurisdictions have added in response - China's good-faith and no-intent-to-use grounds, the European Union's bad-faith invalidity ground and the factors the Court of Justice set out in Lindt - and explains why those provisions help less than brand owners expect. It works through the well-known marks doctrine under Paris Article 6bis and TRIPS Article 16, and why it is a poor substitute for a registration. It then sets out the defensive program that actually prevents the problem: filing before announcement, filing in the manufacturing country, and registering the local-language version of the mark before someone else does.
IP and Technology > Trademarks | Article | Published 6 May 2024 - Updated 24 April 2026 | Casey Scott McKay - marksy.us
Summary. In most of the world, trademark rights belong to whoever files first, and use counts for very little. American brand owners discover this when a stranger in another country registers their name and offers to sell it back. This article explains how the first-to-file systems actually work, why squatting is a rational business in them, and what recourse exists once it has happened. It covers the bad-faith provisions that jurisdictions have added in response — China's good-faith and no-intent-to-use grounds, the European Union's bad-faith invalidity ground and the factors the Court of Justice set out in Lindt — and explains why those provisions help less than brand owners expect. It works through the well-known marks doctrine under Paris Article 6bis and TRIPS Article 16, and why it is a poor substitute for a registration. It then sets out the defensive program that actually prevents the problem: filing before announcement, filing in the manufacturing country, and registering the local-language version of the mark before someone else does.
Keywords: first to file jurisdiction · trademark squatting · bad faith registration · china trademark law article 4 · article 32 pre-emptive registration · article 15 agent squatting · well-known marks article 6bis · trips article 16 · eutmr bad faith invalidity · lindt bad faith factors · skykick · chinese character marks · defensive filing strategy · madrid protocol timing · customs recordation china · person's co v christman · territoriality · buyback economics · opposition windows
This is premium Marksy content — the full document is available to subscribers.