Every month I get emails from clients concerned about an unsolicited email they received from a trademark agent in China saying that another entity was trying to register their trademark, business name, or related domain names in China. The email received usually looks something like this:
Recently we received a trademark registration application from [Chinese company] requesting to register the trademark "X" along with some related domain names. Before we complete the applications for registration, upon research we see that "X" is closely related to your company name/brand and want to confirm if you have allowed [Chinese company] to apply for these trademarks/domain names. Please respond within ___ days/weeks if you did not authorize this activity.
[Chinese lawyer, Chinese IP firm]
The subsequent email from my client often comes quickly after receiving the email from the Chinese agent and while they are usually suspicious of the information, they are also normally quite concerned and considering responding to the email but wanted to ask me first. My answer to my clients is almost always something like this:
I get questions about these emails often. The short answer is: you do not need to respond to this email. If you do respond, they will then try to solicit your business by getting you to file new trademark applications, register domain names, etc through them. This is a commonly used strategy from some Chinese agencies/lawyers to drum up business. With that said, while in my experience this is always a "scam" in that they did not actually receive a request from a Chinese company to register your trademark or a related domain name, it does still serve as a reminder that China is a first-to-file country, and if you are concerned about the possibility of someone registering your mark or these domain names in China, then you should highly consider registering it yourself soonest possible.
I did a quick search on our trademark platform here, and did not find any existing trademark applications for "X" and the domain names mentioned in the email appear to still be available. We can certainly monitor the situation. But in the meantime, we should discuss filing applications for XYZ.
As you can see in my response, I recommend that you do not reply to emails like this but instead contact your existing IP counsel in China and discuss whether you need to broaden your IP coverage in China. While these emails are usually misleading and opportunistic, the reality is that with China's first-to-file system, there are many bad faith parties that file marks related to existing international brands however you usually don't find out about this until after a trademark application is filed and then opposition is necessary. Early filing and defensive filings are always recommended.
Read more about bad faith filings in China in my article "Practical Tips for Battling Bad-Faith Filers in China".>
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