How Companies in China Apply for Reserve Trademarks and Defensive Trademarks?

(By Luo Yanjie) A reporter from China Industry & Commerce News asked the author how companies should apply for reserve trademarks and defensive trademarks. The interview is as follows:

1. How to decide between the registration of a reserve or defensive trademark?

Reserve trademarks are prepared for coming new business. Because the period from application to reservation requires one year, it is suggested to prepare some spare names for new products or services being prepared or under research and development. Then, before the product is released, the company can directly select and use a name it has already registered. Generally, it is only necessary to apply for the classes the company intends to adopt, and there is no need to register many other related classes.

The defensive trademark aims to protect current trademarks held by the company. So, they should protect the company’s current main products. To do so, companies should register similar names and expand the scope of protection.

2. In what situations could the company make a full class registration?

The full class registration is the best way to protect the trademark, but it is very high cost. Therefore, in practice, most companies only apply in the four to five most relevant classes. Small to medium companies usually do not need to make the full class registration. Large companies can consider full class registrations for their trade name or main products. Of course, for brands for which large companies plan to make substantial investment or development in the future, it is imperative to make a full class registration before announcement of the product. This is because even if the trademark later becomes a well-known trademark and thus enjoys full class protection, there is no way to protect against similar trademarks before well-know status is attained. So, if the company wishes to avoid imitation by others, it can first make a full class registration.

3. How should companies deal with the three years of non-use problem and unused trademarks?

It is important to first clarify that the scope of the definition of “use” in the Trademark Law is relatively broad. So long as the company is able to provide that it is preparing to use or promote the trademark in the relevant classes (even if no specific products have been launched yet), this can be judged as “use.” For example, as provided by the Trademark Examination Standards,, use of a trademark includes using the trademark on the product; the product’s packaging, container, or trade documents; or in advertising, exhibits, or other commercial activities. For defensive trademarks registered by companies, in practice, the company will typically grant a third party a written license as the evidence of use.

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