Author: Yingying Zhu, Partner at BEIJING MINGDUN LAW FIRM

Email: zhu.yingying@mdlaw.cn

Date: February 8, 2023

Introduction

Filing defensive trademark is a common strategy used by trademark owners to prevent trademark infringement and trademark squatting. There is no unified definition for defensive trademarks, but there is one neat definition which could deliver their core value- Trademarks, which has been registered for the purpose of creating a “defensive” perimeter around the mark actually used by the proprietor,[1]that is, a shield.

A typical defensive trademark application is usually filed identical with the mark actually used by the owner, but in relation to goods and services unrelated to the major trade of the owner. For example, while subclass 4506 for “legal services” indicates a law firm’s core field of business, if our law firm filed for “MINGDUN” mark in subclass 3501 for “advertisements”, that doesn’t necessarily mean that we were diving into the business of advertisements but might just imply that we would like to place a defensive mark in subclass 3501 so that a third party could not apply for or use that mark in subclass 3501.  

Other less typical defensive trademark application is filed as a “variation” of the mark actually used by the owner. Suppose, hypothetically, while our law firm’s name is “MINGDUN”, we might file for “WINGDUN”, “MINDUN” or “MINGDUNG” in the subclasses related to our core business field or in unrelated goods or services, so as to preserve our mark’s distinctiveness and to prevent parasitism and misuse by third parties of these variations.

Though incomparable with regard to the devastating power of nuclear weapons, defensive trademarks are much like the nuclear weapons in a nation’s defense system in two ways: 1) you may never want to use them; and 2) your capability of defensing yourself is significantly weakened without them.

The Future looks Dimmer?

On January 13, 2023, The China National Intellectual Property Administration has released the Draft Amendments of the Trademark Law of the People's Republic of China (hereinafter, the “Draft Amendments”), which is now soliciting public opinions until February 27, 2023. Among the clauses that have undergone significant changes, Article 5 in the Draft Amendments provides that, “Any natural person, legal person, or unincorporated organization that needs to obtain the exclusive right to a trademark that it uses or promises to use on its goods or services during production and business operations shall apply for trademark registration with the administrative department for intellectual property under the State Council.” Furthermore, Article 61 provides that “A trademark registrant shall, within 12 months after every five-year period from the date of approval of the registration, declare to the administrative department for intellectual property under the State Council that the registered trademark is in use on the approved goods, or provide justifiable reasons for non-use.”

These above two quoted clauses in the Draft Amendments add requirements for proof of trademark use or commitment to use by the applicant at the trademark application stage and establish a system of compulsory explaining the use of a trademark every five years after registration. These changes concerning the use requirements, especially at the filing stage, have made the future of defensive trademarks much dimmer. It is because, as one can draw from its aforesaid definition, the key feature about defensive trademarks is that their registration is seldom intended for actual use.

Debate

For those who supporting the idea of using defensive trademarks as a shield , they would argue that in order to prevent their trademarks from being registered in related or unrelated goods or services and reduce the costs in the procedures of trademark oppositions, trademark invalidations and trademark cancellations, the application and registration of defensive trademarks is a good mechanism to maintain the distinctiveness of their trademarks and reduce the costs of guarding these marks. The Draft Amendments clearly makes it impossible for business to implement this efficient and cost-effective trademark protection strategy.

For those who taking the other side, they would argue that business should apply for a trademark for the purpose of using it in the actual course of trade. For defensive trademarks, their registration is not for use, and this would create a large stock of unusable marks. To them, the Draft Amendments is taking the right track to get rid of this type of trademarks, which is nothing but a “placeholder”.

A Global Perspective

While defensive trademark is honey to some, it is poison to others. There is an old Chinese proverb that says, 'Jade can be polished by stones from other hills.' We can learn from the experience of other countries in crafting their solutions.

1. Australia

In Australia, a defensive trademark registration (defensive registration) is provided for in Part 17 of the Trade Marks Act 1995 (Cth). It is available for ‘well-known’ or ‘famous’ trademarks and it offers a wide scope of protection.

Given the strong rights which defensive registrations bestow, IP Australia does not grant defensive registrations easily. To qualify for such broad protection, it must be established that a mark is well-known or famous in Australia and has been used to such an extent on the previously registered goods that its use in relation to the broader goods/services specified in the defensive application would be likely to be taken as indicating a connection with the applicant.[2]

2. Japan

In Japan, the owner of a famous trademark may obtain a defensive registration of a trademark identical to the registered trademark in connection with goods or services not similar to the designated goods or services of their business, if there is a likelihood of confusion concerning the source of the goods or services. A defensive mark cannot be cancelled based on non-use.[3]

3. Africa

In Africa, five countries offer defensive trademark registrations: Kenya, Nigeria, Uganda, Zambia and Zimbabwe.

A defensive trademark can be applied for by the owner of a well-known trademark for goods or services that are not intended to be used by the applicant and against which the non-use argument may not be raised by a third party. Defensive trademarks are an effective protection against ‘copycats’ who might attempt to benefit from the goodwill of a well-known trademark for unrelated goods or services. A defensive trademark is also a proactive measure for right holders who may have difficulties establishing use (because there is no ‘market’ in the country for the well-known brand) and for those right holders who intend to evolve into other sectors of activity using the same trademark at a later stage, but who under a ‘normal’ registration would be vulnerable to cancellation for nonuse.[4]

As demonstrated in the above, most countries are dealing with the problem by classifying defensive trademarks as a special type of trademark, which can only be applied by well-known trademark owners and should not be subject to the compulsory use requirements.

A Hypothetic Mechanism for Defensive Trademarks

1. Well-Known Trademark or Not?

To design a mechanism that is practically workable in China, one must not overlook the fact that trademark squatting activities are still not effectively under control in China. When a business with a certain level of popularity introduces a new brand name while only applying for the trademark in goods and services related to its major field of business, chances are high that the same trademark for other unrelated goods or services might have been squatted on. On that note, preserving the rights for defensive trademark registration only to well-known trademark owners would seem rather burdensome and unfair for the not-so-well-known but still popular brand names.

It is more reasonable and logical to leave it for the stakeholders to decide whether there is a need for them to apply for defensive trademarks. If the owner’s trademarks are popular enough to attract squatters, then there is a need; otherwise, the owner would not waste the money to “cast the net wide” by applying for defensive trademarks.

2. An Exemption to the Use Requirements at Filing

Alongside with the “already in use” and “commitment to use” categories, there should be an exemption to the use requirements when one applying for a trademark registration, that is, applying for a trademark “for defensive purposes”. The applicant should be required to submit evidence to show the necessity to file defensive trademarks, including evidence showing the mark in issue is self-originated, its popularity in the trade, the experience of encountering trademark squatters by itself or its peers and how the defensive filings could solve the problem. This step could screen out most malicious trademark applicants, and eventually leave the true owners to deal with how they would like to set up their chess board at the trademark filing stage.

3. Compulsory Refiling after Three Years

In this hypothetic mechanism, as the author is against the well-known trademark requirements in applying for defensive trademarks, it would be only fair for defensive trademark owners to obey a compulsory refilling requirement in three years after registration, as there is a compulsory use requirement in three years after registration for other trademark owners. Then it again would be the owners’ choice to decide whether to refile defensive trademarks in the concerned goods and services when they are approaching the three-year limit. If the costs for refiling would be significantly higher than trademark oppositions, trademark invalidations and trademark cancellations, then they wouldn’t do it; otherwise, they would naturally have an incentive to refile.

To sum up, there is a lot of truth in the phrase “Let the market decide”, when it comes to filing of defensive trademarks.

Conclusion

Filing defensive trademarks is a cost-effective method to protect a trademark from parasitism and misuse by third parties. When the trademark squatting activities are still not effectively controlled and the standards for well-known trademark protection are too high for most businesses to reach, designing a mechanism that is practically workable in China is of significant importance to all the IP proprietors.

 [1].See https://ipkey.eu/sites/default/files/legacy-ipkey-docs/102--doccentre-trademarks-cc1-aw4-002-ravn-what-is-a-defensive-mark-en.pdf.

 [2].See https://www.corrs.com.au/insights/protecting-well-known-brands-utility-of-defensive-trade-mark-registrations.

 [3].See https://www.jpaa.or.jp/en/ip-information/trademark-others/.

 [4].See https://ecta.org/ECTA/documents/ECTA_Bulletin_2021_JUNESchneideretal3331.pdf.