Our China lawyers regularly receive inquiries from companies (and other lawyers) asking if an email they have received from China is legit. The email usually goes something like this:
Dear [owner of US trademark]:
According to our trademark research team, the following mark has been published in the Chinese Trademark Gazette on [date]. We note that this mark is identical to a registration owned by your company.
[details of allegedly published mark]
The Chinese Trademark Office has already completed its examination of this mark and the mark is now open to opposition until [deadline]. The deadline is not extendable. If no one files an opposition before the deadline, the mark will proceed to registration.
Please let us know if we can be of assistance in opposing this mark.
[name of Chinese IP firm]
A lot of scams come out of China, including several we write about regularly, such as the bank account scam, the fraudulent company scam, the fake company scam, and the domain name scam. The first three are “carrots,” luring the mark with a promise of potential riches. The latter is a “stick,” offering assistance with a problem the mark didn’t know existed (and in most cases, doesn’t exist at all).
These trademark opposition emails are often not scams at all — at least not complete scams anyway. The firm sending the email is often a real Chinese IP firm, a copycat trademark application really has been filed, and the deadline to oppose really is pending. Though the emails are a ham-handed form of business development, they do sometimes provide a valuable service by alerting trademark owners to a potentially infringing China trademark application.
The problem is that the emails and subsequent interactions with the sender rarely provide the proper context. Yes, under Chinese law it is possible to oppose a trademark application. But unless the applicant is your former business partner, your odds of succeeding with a trademark challenge are generally not good. It does not matter that the pending application is for a mark identical to your existing U.S. or Canadian or Australian or EU trademark. China is a first to file country for trademarks and that means if you wanted to protect your mark in China, you should have filed an application in China before anyone else had the chance to do so.
Recent decisions have given a glimmer of hope to owners of famous brands and to owners opposing applications filed by notorious trademark squatters, but those exceptions are limited. For the majority of trademark owners, filing a trademark opposition in China will not make sense. And that’s the point. If you get one of these emails what you need is not a law firm (real or fake) with just one goal in mind: separating you from your money to pursue a China trademark challenge claim that may or may not make sense to pursue. What you need instead is a clearly real China IP lawyer who is looking out for your interests.
This lawyer then can undertake the following analysis to determine whether and how it may make sense for you to challenge the purported China trademark filing of your company name, brand name, slogan, or logo:
1. Determine whether there really has been such a filing.
2. If the email you received is not true and there has been no such filing, it may still make sense for you to apply for your own China trademark(s) so as to block future filings.
3. If the email you received is true and an application has indeed been filed for a China trademark that matches a name or even a logo used by your company, the next step is to determine whether granting the China trademark will negatively impact your business and therefore whether it is worth challenging. If you are planning to have your product made in China or to sell your product or services in China or even elsewhere outside your home country, determining whether you should challenge the trademark filing will require serious legal and business analysis. But if your company just provides plumbing services in your hometown, what happens in China likely will have no impact on you so there is no point in your spending time and money trying to fight off a trademark filing there.
4. If the email you received is true and the application described in that email could negatively impact your business, you then need answers to the following questions:
- What can you do to try to stop the trademark application from succeeding?
- What are your odds of being able to stop the trademark application from succeeding?
- What will it cost you to try to stop the trademark application from succeeding?
Before deciding if or how to proceed in China against someone who is seeking to secure a China trademark for “your” name, you should first have thorough answers to the above questions.
The one thing you should NOT do is respond to the email you received simply because you do not know who sent it to you. Many times the company that sends you this email will go off and file for your trademark only after you reveal your concern about the filing. This way they spend money filing trademarks only for those companies willing to pay to protect their trademarks.
If you do care about what happens to your name in China, file your own China trademark application now. Your costs will be less and your odds will be greater than having to file a China trademark challenge, especially since winning such a challenge only means you get to file for your own trademark anyway.
This beats waiting for an email from a hustler telling you that you left your China trademark barn door open.