Defensive trademark registration

Although there are no provisions in the PRC Trademark Law (中华人民共和国商标法) for the defensive registration of trademarks, brand owners frequently seek to register their marks defensively in a wide range of classes. But is defensive registration a good strategy?

What the law says

Before the second amendment of the Trademark Law in 2002, it was not possible to register trademarks in relation to goods that fell outside the registered scope of the applicant's business. That amendment revoked Article 10 of the PRC Trademark Law Implementing Regulations (中华人民共和国商标法实施条例), which specifically provided that the goods in respect of which a trademark could be registered must fall within the registered scope of the applicant's business. Although the term defensive mark is not used in the Trademark Law, this change in the law made it possible for brand owners, in practice, to adopt a defensive registration strategy, even though their defensive registrations may be vulnerable to cancellation on the grounds of non-use.

In countries that make specific provisions for defensive registration, such registrations are exempted from the revocation for non-use rule. In Hong Kong, for example, the law provides that “If a registered trade mark … has become exceptionally well-known in Hong Kong… the trademark may, on the application of the owner of the registered trademark made to the Registrar, be registered as a defensive trademark in respect of any or all of those other goods or services,” and revocation on the grounds of non-use shall not apply in relation to defensive trademarks,” (Section 60 of the Hong Kong Trade Marks Ordinance). Likewise, Japanese law provides that widely recognised marks can be registered in relation to identified goods or services other than those listed in the original registration. These additional goods or services do not need to be similar to the original goods or services and the registrant does not need to use or have any intention to use the mark in relation to the additional goods or services.

Because the law in China does not make specific provision for the defensive registration of marks, however, the adoption of a defensive registration strategy is problematic.

Inherent problems

The most immediate problem for brand owners adopting a defensive registration strategy in China is presented by Article 44(4) of the Trademark Law, and Article 39 of the Implementing Rules, which provide that any person may apply to the China Trademark Office (CTMO) to revoke a registered trademark on the grounds that it has not been used on or in relation to the goods in respect of which it is registered, for three consecutive years.