CHINA IPR WEBINAR SERIES: AN INTRODUCTION TO TRADEMARK SQUATTING IN CHINA

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CHINA IPR WEBINAR SERIESAN INTRODUCTION TO
TRADEMARK SQUATTING IN CHINA

• Cynthia Henderson
• Office of Intellectual Property Policy and
  Enforcement
• cynthia.henderson_at_uspto.gov

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Trademark Squatting

• What is trademark squatting?
• Term used to refer to the act of registering
  other parties brand names
• Squatters may use the trademark to produce either
  counterfeit goods or to trade off the goodwill
  established by the rightful trademark owner
• By-product of first-to-file trademark systems,
  but issue with China is one of SCALE

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Trademark Squatting

• The Problem in China
• Since China has a first-to-file trademark
  system, the squatter is considered the legitimate
  owner of the mark.
• As legitimate owners, squatters can
• stop the brand owner from selling products in
  China
• stop the brand owner from manufacturing products
  in China for export
• flood the brand owners markets in other
  countries with the squatters branded goods.

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Trademark Squatting

• The Problem in China
• Once a trademark has been registered by a
  squatter, it is difficult to reclaim the
  trademark.
• It may be possible for the owner of an
  unregistered well-known mark in China to oppose
  or seek cancellation of the abusive application
  or registration or for a trademark owner to
  oppose or seek cancellation on the grounds of bad
  faith, but it may take years for the proceedings
  to be resolved due to long delays at the China
  Trademark Office and the Trademark Review and
  Adjudication Board.
• China Trademark Office handles the most trademark
  applications in the world over 760,000
  trademark applications in 2006, with
  approximately 250 examiners.

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Trademark Squatting

• How Do Squatters Find Out About Your Trademarks?
• Selling or manufacturing the products in China
• Trade magazines
• Trade shows
• Internet

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Trademark Squatting

• What do you do to prevent trademark squatting?
• BE PROACTIVE REGISTER.
• Register defensively
• Register English and Chinese versions
• Register in many classes

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Related Problems Company Name Misuse and Domain
Name Squatting

• Company Name Misuse
• Registering other parties trademarks as trade
  names through company name registries
• Using or licensing the trade names on products in
  China to mislead consumers
• Domain Name Squatting
• Scam emails from domain name registrars