Is There a Squatter on My China Trademark and if There is What Should I Do?

A number of Chinese trademark legislation companies (and non-law agency support providers) have of late been seeking to drum up American clientele on China trademark matters. I say this mainly because my firm’s China trademark lawyers have been obtaining a continuous stream of email messages from U.S. legal professionals and corporations contacted by these Chinese trademark regulation corporations. The Chinese law companies are writing to U.S. legal professionals and companies to inform them of trademark filings in China of the exact same trademarks owned by the company in the United States. These e-mail from the Chinese trademark lawyers to U.S. trademark attorneys generally go as follows:

We, _________ are a specialized Chinese IP law firm. Our trademark study crew took note of the following marks from a modern concern of the Chinese Trademark Gazette revealed on Could 6, 2022, open to oppositions before August 6, 2022, Beijing time, NOT extendable. Particulars of the marks are listed down below for your reference.

For your details, we, ______ IP, are a Chinese IP regulation company and member of various international businesses, such as INTA, ____, ____, ____. The bulk of our customers are centered in China, which enables us to on a regular basis deliver business to our international associates. We will be extra than happy to set up reciprocal relationship with your esteemed company.

We glimpse forward to your reply. If you are NOT interested in our reporting e-mail of this style, remember to feel free to enable us know by using return and we will chorus from bothering you any additional, your comprehending is remarkably appreciated.

The U.S. attorneys — in many cases not recognizing regardless of whether the e-mail they just been given is a scam or not — publish my legislation firm’s attorneys asking what is likely on and what their customer must do. Our reaction is usually some thing like the adhering to:

1. Certainly, one thing is essentially taking place with the marks in China. On December 14, 2021, the Chinese organization _______ Outdoor Materials Co., Ltd. submitted applications for the stylized “_________” mark in Course 7. I have connected copies of the suitable trademark facts. However it is in Chinese you can see that the stylized mark is an specific copy of your client’s. The mark has been approved by the CTMO examiners and was printed in the May 6, 2022 edition of the Trademark Gazette. If 3 months pass and no just one files an opposition, the mark will continue to registration.

2. Your client could in fact file an opposition to the mark. The possibilities of a productive opposition will rely on the info. China is a very first-to-file jurisdiction and the grounds for a bad-faith filing are constrained. It is not likely your client’s mark would be regarded “well-known” enough to persuade the CTMO that these filings have been in lousy religion. But China has been taking a more difficult line on trademark squatters. In any situation, submitting an opposition is relatively inexpensive.

In this occasion, it does not look the Chinese company is a trademark squatter for every se they only have two other emblems (equally registered) in their name. My guess is they essentially intend to use your client’s mark in China to sector or provide their have merchandise.

Your consumer has the adhering to selections at this level:

a. File an opposition to the cited marks. If this mark is critical to your client and they realize the low odds of good results, they likely must do this, in significant component simply because the fees of their performing so are so lower.

b. Contact the Chinese organization and endeavor to acquire the mark.

c. Wait around three yrs to see what, if anything, the Chinese side does with the mark. As you perhaps previously know, if the mark has not been utilized in commerce for a few several years it can be cancelled for non-use. See China Emblems: When (and How) to Verify Use of a Mark in Commerce.

Regardless of what you do, be sure to do not use the Chinese legislation company that despatched the e-mail. I request this since several of these regulation firms dangle again and sign-up international enterprise emblems only right after the overseas business reveals concern about the e mail.

Remember to let me know if you have any issues or would like to focus on further.

The authentic crucial is what we are often expressing below on this web site: Sign up your trademarks in China. Like currently.