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The Best Offense is a Strong Defense

  • TIME: 2017-08-04 17:56:56
  • HIT: 266

Author: MarciaGaryWest

Defensive trademark registrations often save a significant amount of time and money down the road – with defensive registrations in place, you can avoid the hassle of constantly filing opposition actions against approved marks; the China Trademark Office (“CTMO”) will not even approve any mark that is “confusingly similar” to yours in the first place.

What is a defensive registration? Defensive registration is a term we use for a trademark registration that you don’t necessarily use in a direct sense. Rather, they are registrations that you put in place to prevent other parties from legally registering similar trademarks.

The general rule is that the CTMO will reject a similar mark over similar goods or services. From a squatter’s point of view, this policy leaves a lot of open territory to register a famous mark over goods or services that are not covered. In mainland China, there is no use requirement to register a mark.

The cost to file a new trademark application in one class is usually around USD 500. In comparison, an opposition action against one mark in one class usually costs at least USD 1,200. Without a defensive registration in place, the CTMO would likely preliminarily approve a mark that is similar to yours as long as it covers different goods or services. Consequently, you would have to oppose the mark to prevent it from becoming registered.

Plus, the more popular your brand becomes, the more likely squatters will try to register a similar mark; you may find yourself having to file many opposition actions. Even if you have obtained the “well-known” trademark status, it still costs time and money to submit this evidence in every case (the well-known trademark determination is made on a case-by-case basis). There is also the potential that the CTMO will not recognize the well-known status of your trademark even though they previously have.

To expand your portfolio in a cost-effective way, we recommend dividing your trademarks into three categories, based on their importance to your brand.

The top tier category will cover your most important marks, including your house marks (in both English and Chinese). Because you do not want any other party to use your house marks at all in the marketplace (over any good or service), we recommend filing trademark applications for these marks in all 45 classes, or as many classes as possible.

The next category would include marks that you have used for some time and that have gained a certain reputation, which makes them appealing to trademark squatters. For these marks, it is a good idea to file trademark applications so that all relevant classes are covered, even if you do not use the goods or services in those classes. The goal is to take away a squatter’s ability to register a similar mark over goods or services that are related to your business scope.

The last category can include new brands. Because these marks will pose a relatively low risk to trademark squatters, you can consider filing applications in only the classes that you actually use or intend to use the marks. Our firm offers services to monitor the ongoing situation for these types of marks; if the brands become more central to your company and/or other parties begin filing applications for these marks, then you can re-evaluate the situation.

As you strategize your portfolio management, consider your brand and determine what marks you can’t afford to see another party register. Then set up your defense accordingly. Just like in sports, the best offense is a strong defense.