Earlier this year, in a post entitled, China Domain Name Scams I wrote of how companies have been receiving emails alerting them to someone who allegedly just sought 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 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.
* * * *
You also may get emails from someone claiming to have already registered some iteration of your company name (or one of your product names) and seeking to sell it to you. For example, if your company is called “xyz” and you already own the xyz.com domain name, your email may come from someone who has purchased and now wants to sell you the xyz.cn domain.
What to do?
First off, as soon as possible, register whatever domains necessary to protect yourself. Determine now what domain names you care about so you do not need to make this determination with a gun to your head. Right now is the time to think about Chinese character domain names.
Secondly, if someone has taken a domain name that is important to you and they are now offering to sell it to you, you essentially have three choices. One, let the domain name go. Two, buy it from the company that “took” it from you. And, three, pursue legal action against the company that took it from you.
Preemption by registration is your best and least expensive protection. In other words, if you do not want someone taking your company name or one of your product names (or some variant of these) and using them for a domain name, register those as domain names right now. You should also consider registering them as trademarks in your home country and wherever else (including China, of course) you do business.
The new scam seems to be something similar, but with trademarks. In the last month or so, my law firm’s international IP lawyers have been contacted many time by companies that have been alerted by official sounding entities that 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 in many ways these China trademark email alerts/scams are more serious than the previously more standard China domain name scam emails. They are more serious because they highlight how vulnerable your trademarks are in China. Nothing new here, but it is probably time for us 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 very similar though to 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 through some made-up procedure. In reality, China has no such procedure for blocking a trademark application as whomever files first for a trademark gets it (with a few exceptions not worth going into right now). If the entity that files for “your” trademark in China is able to convince China’s Trademark Office that the mark it seeks to register is distinctive and has not previously been registered and does not violate Chinese law, it will preliminarily approve the application for publication in China’s Trademark Gazette. If there is no opposition to the mark within three months of it being listed in the China’s Trademark Gazette, it will proceed to registration and eventually become a trademark.
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.
For more on how to register a China trademark and when to register a China trademark, check out the following:
Have you gotten one of these emails yet?