Once or twice a month, my law firm’s international trademark lawyers have been contacted by companies whose China trademark registrations were botched by an online trademark service.
In all instances, the trademark registration problems stemmed from online trademark services that purport to be able to register trademarks pretty much anywhere in the world, including China. Trust me, when I say they are lying.
Without naming any names, the majority of these botched trademark filings came from one company and the rest of came from two other companies. These online trademark companies make it seem as though they have lawyers on staff in every country in which they file, but they do not and they most emphatically are not law firms. What they are is super cheap and super incompetent.
These online services take your money and essentially do only what you ask them to do, whether that will work or not. They then underpay super-cheap trademark agents and lawyers in various countries to submit your trademark application — or not. It is impossible for me to know how often these companies bungle their trademark filings because nobody ever calls us up our trademark lawyers to say that one of these services succeeded with their trademark filing, but, based on the routine mistakes we consistently see from these companies, I strongly suspect it is quite often.
The most common mistakes involve a foreign company that requested one of these trademark services file a trademark that any remotely decent China trademark lawyer would know would get rejected. Despite the pretty much guaranteed rejection of the trademark, the trademark services company takes the money and submits the application. We have talked with companies that had their China trademarks rejected for seeking to register a brand that is too sexual, too religious, and/or too generic for China’s trademark office. We also have dealt with companies whose trademarks were rejected because they contained a place name, which cannot be trademarked in China. In every single instance, a minimally competent China trademark lawyer would have spotted and remedied the problem before the filing, or just not sought any China trademark at all.
Most of the companies duped by these online services were merely out the cost of the failed trademark, but for some, their costs were considerably higher. One American company did not learn that its China trademark had been rejected until it learned that a Chinese company had secured its brand name as its own trademark in China. I cannot reveal exactly what happened to this American company, but I can describe it using made up names. Pretend the American company makes shirts under its “Bountiful” brand name. Pretend that it requested a Chinese trademark for “Bountiful Shirts” from one of these online trademark services. Pretend that its trademark was rejected because “shirts” is too generic. Further pretend that one of its rivals (or perhaps its Chinese manufacturer) saw the American company’s China trademark application and, knowing it would be rejected because “shirts” is too generic, submitted its own trademark application for “Bountiful” in the class that includes shirts and it got it. Now suppose this American company’s losing its brand name to a Chinese company was so bad that they chose to stop having their product made in China, rather than try to come up with a new name or try to fight against what happened to them — a fight they almost certainly would have lost anyway. This is very similar to what can and does happen when a China trademark filing is botched.
We also often hear from companies whose trademarks were rejected by China’s trademark office because they were already taken by another company. There are multiple problems with this. First, the company seeking the China trademark paid for a China trademark when an initial search would have been considerably cheaper and told them the same thing. Second, they wasted months waiting for their trademark, rather than figuring out a new name or a workaround that might allow them to use their existing name. It is also quite possible a company that does not realize someone else has a trademark on “their” brand name could be sued for trademark infringement or have their products seized at the China border (incoming or outgoing) for trademark infringement. See China Trademarks: Register Yours BEFORE You Do ANYTHING Else.
Then there were the two companies whose trademark applications were never submitted. In one instance (and six months later) the online service admitted that it had “somehow” failed to submit the trademark application and actually gave a refund in return for the company keeping its mistake confidential. In the other instance, the online service insisted that the application had been submitted but was rejected, which was simply untrue.
Protecting your brand or logo with a China trademark is one of the most important things you can do, and to achieve this you really should retain a legitimate law firm capable of doing more than just registering what you tell them to register, whether it will work or not.
For more on the lawyer scams and incompetents proliferating online, check out China Contract Drafting Scams: From Bad to Much Worse. I will also soon be writing about how service of process companies charge small fortunes to accomplish Hague Service of Process in China (and elsewhere), but have little to no clue on how to actually accomplish that.
