Earlier this year, in China Domain Name Scams, I wrote about emails from China that alert foreign companies of how someone is allegedly trying to register “their” domain name in China. I wrote of how this is virtually always a scam and described how to handle these:
If your company has done anything in China (even just sending someone there to meet with a supplier), you have probably received a somewhat official looking email offering, at a steep price, to “help” you stop someone from taking your domain name.
DO NOT RESPOND.
Near as I can tell, every single one of these that I have seen (and I have seen at least fifty [now considerably more] of them because clients are always sending them to me) are a scam.
The new scam seems is similar, but with trademarks. In the last month or so, my law firm’s international IP lawyers have been contacted multiple times by companies as to how someone just applied for “their” trademark in China. These are also scams and most of the time there has been no effort by anyone to register your brand name as a China trademark.
But these China trademark email alerts/scams are oftentimes more serious than the previously more standard China domain name scam emails. They are more serious because they highlight how vulnerable to trademark theft your brand names and logos are in China. Even more importantly, your response to this email could open your company up to its IP being stolen.
1. Your Brand Names and Logos are at Risk in China
Nothing new here, but it is probably time for to instruct again on how registering China trademarks can be so different from securing a trademark in the United States, Canada and England (it is actually similar though to most of the rest of the world).
These scam emails almost always claim someone just applied to register your trademarks and if you act quickly, you can stop them. In reality, China has no goood procedure for blocking a trademark application as whoever files first for a trademark first gets it (with a few exceptions not worth going into right now). This means that the entity that files for “your” trademark in China and that trademark has not previously been registered in China by you or by anyone else, that entity will get your “trademark” if you (or someoen else does not oppose that mark within three months of it being listed in the China’s Trademark Gazette.
Only the China Trademark Office has the authority or the ability to determine whether a trademark application moves forward. So if what you wish to have trademarked in China is in the Gazette and has been there for less than three months, you should seriously consider doing something to try to stop it (though the chances are good that you will be unable to do so). And if what you wish to have trademarked is not in China’s Trademark Gazette you should seriously consider moving forward to trademark it in China as quickly as possible to forestall anyone else from doing so.
Back to the scam China trademark emails. We have (as of this January 26, 2023 update) reviewed hundreds of this scam China trademark emails and very few times is anyone actually trying to register in China the trademark mentioned in the scam email. In other words, the email is 100% fake. In those instances we simply work with the company that reached out to us about the email to determine whether it makes sense for them to register a trademark in China or not. Probably over half of the time, it doesn’t. For example, a Wisconsin dairy business that sells its products only in the Midwest probably does not need a China trademark — I personally spoke with this company.
For more on the importance of having a China trademark, and how and when to register a China trademark, check out the following:
- China Trademarks: Register Yours BEFORE You Do ANYTHING Else
- China Trademarks — Do You Feel Lucky? Do You?
2. A Wrong Response to a China Trademark Scam Email is Dangerous
Now here’s the really scary part about these China scam trademark emails. Some of them are intended for you to pay money to fight the trademark registration that is not really happening. In those instances, you will end up being out anywhere from $600 to $4500 (these are the figures we’ve seen). Most businesses can survive this.
But in other cases, these emails are being used to determine whether it is important to you that you have a China trademark. So if you write back to inquire how you stop the non-existent company from registering “your” trademark, the scammer will not only charge you to do nothing, it will also go off and register your brand name and/or your logo as a China trademark. Then when it has been granted that trademark or trademarks in China, it will write you again, this time offering to sell you “your” trademark for anywhere from $10,000 to $250,000 (these are the figures we’ve seen).
Even worse is when the scammer uses “your” trademark (which is now the scammer’s trademark) to block your products manufactured in China from leaving China and/or to stop your products from being sold in China because they violate the scammer’s trademark. If you can somehow link the email scammer to the company that is now blocking your product from leaving or being sold in China, you would probably have a good argument for striking the scammer’s trademark on bad faith grounds. BUT, the scammer is probably too smart to have left any evidence of such a link and you probably will need to decide whether to pay the ransom it wants for releasing your products or just walking away.
Bottom Line: China scam emails can be incredibly dangerous to your business and if you get one you should immediately go to your friendly China IP attorney — not somebody who just plays one on email.