Chinese Trademark Protection for Italian Luxury Brands: From Naming to Defensive Registration

For Italian luxury brands expanding into China — Gucci, Prada, Ferrari, Bulgari, Versace, Armani, Bottega Veneta, and the dozens of mid-market and emerging Italian fashion, automotive, food, and design names — Chinese trademark protection is one of the most consequential and least forgiving legal questions. China operates a strict first-to-file system: whoever registers a trademark first owns it, regardless of prior use elsewhere. Combined with a Chinese-language requirement for effective consumer protection and persistent bad-faith squatting practices, the framework demands proactive legal strategy. The famous cases of Chanel 香奈儿 (Xiang Nai Er), Airbnb 爱彼迎 (Aibiying), and Bottega Veneta 葆蝶家 (Baodiejia) illustrate both the cultural sensitivity and the legal complexity involved.

For the broader trademark framework, see our coexisting trademarks guide. For brand identity protection generally, see our brand identity guide.

China’s first-to-file principle

The Chinese Trademark Law (2019 revision), administered by the China National Intellectual Property Administration (CNIPA), operates on a strict first-to-file basis. Key implications for Italian brands:

• Registration confers ownership — prior use in Italy, the EU, or elsewhere does not establish rights in China;
• Italian brands that delay Chinese registration risk losing their own name to third-party squatters;
• Famous-mark protection exists but is narrow, technical, and requires substantial evidentiary effort;
• Recovery of squatted marks is possible but expensive, time-consuming, and uncertain;
• Defensive registration in multiple classes and across Chinese-language variations is the operational standard.

Why Chinese-character marks matter

Latin-script trademarks (e.g., “GUCCI”, “PRADA”) are registrable in China, but Chinese consumers will inevitably create or adopt Chinese-language versions for daily use. If the brand does not control the Chinese-character version, a competitor or squatter will register it. The Chinese-language version of a luxury brand carries the cultural meaning, emotional resonance, and consumer recognition that drive purchasing decisions in the Chinese market.

Italian luxury brands therefore typically register both their Latin-script name and one or more Chinese-character marks. The Chinese-character marks can be:

• Phonetic transliteration: Chinese characters approximating the original pronunciation;
• Semantic translation: characters carrying the meaning or essence of the brand;
• Hybrid: combining phonetic similarity with positive semantic associations.

Case studies: Chanel, Airbnb, Bottega Veneta

Three contrasting cases illustrate the framework:

• Chanel 香奈儿 (Xiang Nai Er): a model successful Chinese name. 香 (Xiang) means “scented and aromatic”; 奈 (Nai) phonetically approximates “Cha-Nel”; 儿 (Er) lends softness and femininity. The three characters together convey elegance, exquisiteness, and feminine high-end identity. The phonetic similarity helps Chinese consumers connect to the original brand;
• Airbnb 爱彼迎 (Aibiying): launched in 2017 with the intended meaning “welcome each other with love” (爱 love + 彼 each other + 迎 welcome). Despite the philosophical alignment, Chinese consumers reacted negatively, finding the name awkward and forced. The case illustrates that even technically correct names can fail to gain consumer acceptance;
• Bottega Veneta 宝缇嘉 (Baotijia) → 葆蝶家 (Baodiejia): the Italian brand initially used Baotijia but had to change in 2013 when that name was already registered. The new Baodiejia has phonetic associations with “a steep drop in price” — wildly inappropriate for a luxury brand. The brand subsequently de-emphasised the Chinese name on its official Chinese channels.

These cases illustrate why Italian luxury brands must address Chinese naming and trademark registration before market entry, with appropriate cultural and linguistic expertise.

Bad faith squatting and remedies

Bad-faith trademark squatting remains a persistent issue for Italian brands entering China. Squatters monitor Latin-script trademark filings, news of brand expansion, and Chinese media coverage, then file Chinese-character versions in anticipation. When the Italian brand later seeks to register, it discovers the name is already taken.

Remedies under Chinese law include:

• Opposition: within the publication period before registration;
• Invalidation: after registration, on grounds including bad faith filing or famous-mark protection;
• Three-year non-use cancellation: if the squatter does not use the registered mark within three years, cancellation is available;
• Article 4 bad-faith provision: the 2019 amendment specifically addresses applications “not for use” — applications filed without intent to actually use the mark.

These remedies are powerful but require investment of time and resources. Prevention through proactive registration is substantially more efficient.

Madrid System for Italian brands

Italian brands access Chinese trademark registration through:

• Madrid System (Madrid Protocol): international registration administered by WIPO, with China as a designated country. Provides cost-efficient multi-jurisdictional filing including China;
• Direct CNIPA filing: registration directly with the Chinese trademark office, often used for Chinese-character marks that may not be efficiently filed via Madrid;
• Hong Kong, Taiwan, Macao: separate jurisdictions requiring separate registrations.

For comprehensive Chinese protection, Italian brands typically combine Madrid filing for the Latin-script mark with direct CNIPA filing for Chinese-character marks.

Defensive registration strategy

The operational standard for Italian luxury brands in China:

• Register Latin-script mark plus 2-3 Chinese-character variants (preferred + defensive);
• Register across multiple Nice Classes — well beyond the core product category, to prevent squatting in adjacent goods;
• Register Hong Kong, Taiwan, and Macao separately;
• Monitor CNIPA filings for opposition opportunities;
• Establish customs enforcement registration with China Customs;
• Maintain genuine use documentation to defend against three-year non-use cancellation by competitors.

How DANDI supports Italian brands entering China

DANDI.media supports Italian luxury and consumer brands on China trademark strategy:

• Pre-entry trademark search and risk assessment;
• Chinese-character mark development with cultural and linguistic expertise;
• Madrid System and direct CNIPA filing coordination;
• Bad-faith opposition and invalidation proceedings;
• Customs enforcement registration;
• Coordination with Chinese local counsel for litigation and enforcement.

For consultation, book directly with Avv. Claudia Roggero or Avv. Donato Di Pelino.

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