Trademark Prosecution – A Complete Guide for Global Businesses

In today’s fast-moving global economy, trademark prosecution is a vital process for protecting brand identity, preventing infringement, and ensuring long-term commercial success. At Prip LLC, we specialize in guiding businesses through complex trademark systems around the world, including trademark prosecution in China, India, Japan, Hong Kong, and Taiwan.

Whether you are a start-up launching your first brand or a multinational corporation expanding into new markets, this guide will help you understand the intricacies of trademark prosecution, the strategies that deliver results, and the unique requirements of different jurisdictions.

Understanding Trademark Prosecution

Trademark prosecution refers to the legal process of obtaining, maintaining, and defending a trademark before relevant intellectual property offices. It includes filing applications, responding to office actions, opposing conflicting marks, and managing renewals.

At Prip LLC, we view trademark prosecution not as a one-time legal formality, but as a continuous brand protection strategy. It is the proactive defense of your intellectual identity.

Key stages of trademark prosecution include:

1. Trademark Search & Clearance – Ensuring your proposed mark is unique and registrable.

2. Application Filing – Submitting the required forms and documentation to the trademark office.

3. Examination – The trademark office reviews the application for compliance and conflicts.

4. Office Actions – Addressing objections or clarifying issues raised by examiners.

5. Publication & Opposition – Allowing third parties to challenge the application.

6. Registration & Maintenance – Receiving approval and keeping the trademark active.

Why Trademark Prosecution Matters for Businesses

Without proper prosecution, trademarks can be rejected, delayed, or challenged—resulting in financial loss and brand vulnerability. Trademark prosecution:

• Protects Market Position – Prevents competitors from using similar branding.

• Supports Licensing & Franchising – Registered marks are valuable commercial assets.

• Ensures Legal Remedies – Gives you the right to sue infringers.

• Enhances Brand Value – Builds consumer trust and loyalty.

At Prip LLC, we often see businesses overlook early prosecution, only to face costly infringement battles later.

Trademark Prosecution in Different Jurisdictions

Trademark prosecution is not a “one-size-fits-all” process. Each country has its own rules, timelines, and enforcement standards. Here’s how prosecution varies in China, India, Japan, Hong Kong, and Taiwan.

1. Trademark Prosecution in China

China operates on a first-to-file system, meaning whoever registers the mark first generally has the rights, even if someone else used it earlier. This makes early filing crucial.

Key aspects:

• Bilingual Filing – Register both the English and Chinese versions of your mark.

• Non-use Cancellation – Marks can be canceled if unused for three years.

• Opposition Period – Three months from publication.

At Prip LLC, we stress the importance of filing early in China to prevent “trademark squatting,” a common issue where bad actors register foreign brands before the original owner enters the market.

2. Trademark Prosecution in India

India’s trademark system is use-based, but applications can also be filed on an intent-to-use basis.

Key aspects:

• Multiple Classes in One Application – Unlike some countries, India allows it.

• Examination Timeline – Typically within 6–8 months, though delays occur.

• Opposition Period – Four months after publication.

Prip LLC’s team frequently assists businesses in responding to examination reports in India, as objections are common due to the office’s strict distinctiveness requirements.

3. Trademark Prosecution in Japan

Japan has a highly detailed examination process with strict formalities.

Key aspects:

• Multi-Class Filing Allowed – Efficient for broader protection.

• Opposition Period – Two months after publication.

• Non-Use Cancellation – If unused for three consecutive years.

Prip LLC advises clients to prepare clear descriptions of goods/services to avoid rejections in Japan, as vague wording is often refused.

4. Trademark Prosecution in Hong Kong

Hong Kong follows common law principles and recognizes unregistered marks under “passing off” actions, but registered marks offer stronger protection.

Key aspects:

• No Substantive Examination – Only formal checks for compliance.

• Opposition Period – Three months after publication.

• Multi-Class Filing Not Allowed – Separate applications per class.

We recommend Prip LLC’s Hong Kong filing strategies for clients expanding into the Greater Bay Area market.

5. Trademark Prosecution in Taiwan

Taiwan’s system is first-to-file with a focus on accurate classification.

Key aspects:

• Bilingual Advantage – Consider registering both Chinese and English versions.

• Opposition Period – Three months after publication.

• Non-Use Cancellation – Three years of inactivity can lead to cancellation.

Prip LLC often helps global clients secure early filings in Taiwan as part of a regional Asia-Pacific trademark strategy.

Common Challenges in Trademark Prosecution

• Conflicting Marks – Similar trademarks already in use.

• Insufficient Evidence of Use – Especially in use-based jurisdictions.

• Translation Issues – Problems with transliteration in China, Japan, and Taiwan.

• Time Delays – Some offices take years to complete the process.

Best Practices for Successful Trademark Prosecution

1. Conduct Comprehensive Searches – Prevent conflicts before filing.

2. File Early in First-to-File Jurisdictions – Especially in China and Taiwan.

3. Maintain Proper Usage Records – Prove commercial use when needed.

4. Respond Quickly to Office Actions – Avoid application abandonment.

5. Use Local Agents – Navigate cultural and legal nuances effectively.

Role of Prip LLC in Global Trademark Prosecution

At Prip LLC, we provide:

• Strategic Filing Plans for multiple jurisdictions.

• Office Action Responses tailored to local practices.

• Trademark Monitoring to detect infringements early.

• Renewal Management to keep marks active globally.

Our network of local attorneys in China, India, Japan, Hong Kong, and Taiwan ensures that every application complies with national requirements and stands the highest chance of success.

Pros & Cons of Trademark Prosecution