Trademark squatting in less relevant classes in China – “I can file defensive registrations in those classes, but how about non-use?”
(Author: Dr. Jian Xu, the China IP Blogger)
In response to one of my posts, readers have shared a common problem in China about trademark squatting in less relevant classes of the client, in relation to my post “Five Important Trademark Considerations for Overseas Companies Planning to Expand into China”
“We encountered several cases in which Chinese applicants have sought to register our clients’ brands, known in a specific sector, for products from other sectors. We are faced with a dilemma: if our clients register their trademarks in other classes and they do not use them, these can be cancelled for non-use. If they do not register their marks, someone tries to appropriate them.”
This is indeed a dilemma. Currently I can think of the following pragmatic recommendations.
The non-use concern for defensive registrations can somewhat be reduced by two strategies: (1) re-file the defensive registrations every 3-4 years; or (2) re-file the defensive registration as soon as a notice of non-use cancellation is received. In addition, most opportunistic trademark squatters would not bother to incur the trouble or expense to initiate a non-use cancellation. So the reality can often be that if you have a defensive registration there in other classes, trademark squatters will just leave it, thereby the defensive purpose is achieved.
Therefore, for secondary classes, i.e. classes which are not core to the client but still loosely relevant which might cause concerns, it is still advisable to file “defensive” registrations in those classes. The worry of non-use is true, but can be dealt with in a pragmatic way as suggested above.