Based on the popularity and brand protection of trademarks, many companies will conduct defensive registrations for well-known brands or newly created brands to better protect their trademark rights and prevent others from copying and imitating.

Defensive registration is generally divided into two methods:

One way is to register a trademark that is highly similar to a well-known brand on the same or similar goods and services, such as registering a well-known brand with similar glyphs, different characters with the same pronunciation, and different text ordering.

Another way is to register goods and services that are not similar to well-known brands, or even entire classes, in order to exclude others from registering identical or similar trademarks in other classes.

Although trademark squatting is still prohibited frequently, and some companies have no choice but to register defensive trademarks, even defensive trademark registrations should be moderate, otherwise they will face the risk of trademark rejection or cancellation.

1. Defensive registration may also be considered as a malicious application without purpose of use

Article 4 of the Trademark Law stipulates:

"Any natural person, legal person, or other organization needing to acquire the right to exclusively use a trademark on the goods or services thereof in the course of business operations shall apply to the Trademark Office for trademark registration. A bad faith application for trademark registration for a purpose other than use shall be rejected."

"Trademark Examination and Trial Standards" provide detailed provisions for the applicable requirements for "bad faith applications not for the purpose of use", that is, the behavior of applying for trademark registration "not for the purpose of use" refers to the applicant's application for registration of a trademark when, there is neither the purpose of actual use of the trademark nor the act of preparing to use the trademark, or based on reasonable inferences, there is no possibility of actual use of the trademark.

The legislative purpose of Article 4 of the Trademark Law is to curb malicious application behaviors such as hoarding trademarks and disrupting the order of trademark registration that involve the improper occupation of trademark resources. The provision specifically regulates the "malicious intent" of applying for a large number of trademarks without the intention of using them and with the intention of profiting from them.

Generally speaking, malicious trademark registration acts can be roughly divided into two situations according to the interests infringed:

One situation is the act of maliciously registering trademarks, which includes "riding on the reputation of famous brands," "capitalizing on hot topics," and "registering the names of public figures to harm or attach to the reputation, civil rights, and legal interests of others."

Another situation is the act of malicious trademark registration without the purpose of use, which includes "bulk applications" and "occupying resources," aiming to disrupt or impact the order of trademark registration and management.

Although "Trademark Examination and Trial Standards" stipulates two exceptions under which Article 4 of the Trademark Law does not apply, one of the circumstances is that the applicant applies for a trademark that is identical or similar to its registered trademark for defensive purposes.

It mainly refers to the application for registration of a trademark that is identical or similar to the core trademark on goods or services outside the scope of the main business based on the protection of the core trademark, so as to prevent others from clinging to or disparaging the popularity and reputation of the core trademark in the main business.

However, the application of this situation is limited. The number of trademark applications needs to be appropriate. Applying for a large number of trademarks beyond a reasonable range without actual intention of use is an act of over-defense and over-reservation of trademarks, although it is not for the purpose of transfer or profit-making, but it also takes up a large amount of trademark and administrative resources, and is also an act that disrupts the order of trademark registration. It can still be determined as a malicious trademark registration without the purpose of use.

In the review of refusal case for mark, 披风少年(means Cloak Boy) under No. 56001140, the applicant claimed that it was an affiliated company of a well-known Internet company, had a large business scale, and had obtained business qualifications issued by multiple industry associations and administrative departments. As a leading Internet company, as its business expands, in order to adapt to its business development needs, applicants will inevitably submit trademark applications to protect their commercial use. Moreover, the applicant's identity and the social responsibilities they undertake also determine that they are not, and do not have the possibility of "malicious registration without the intention of use."

Internet industry products have the characteristics of great influence, wide coverage, strong explosive power, and fast iteration. Applicants need to provide foreseeable and comprehensive protection for the brands actually used or planned to be used. A large number of malicious registration-squatting behaviors that have existed for a long time have forced applicants and other well-known companies to adopt defensive protection strategies. This is the need to safeguard their own legitimate interests and normal business order, and is also in line with Article 4 of the Trademark Law. Exceptions shall not be deemed as a malicious application without the purpose of use.

However, after review, the National Intellectual Property Administration, PRC ("CNIPA") held that the applicant has submitted a large number of trademark registration applications, including the applied trademark, within a short period of time, which clearly exceeds the normal business needs and constitutes a malicious trademark registration application without the intention to use. This has violated the provisions of Article 4 of the Trademark Law. The evidence submitted by the applicant cannot serve as a valid basis for the approval and legitimate use of the applied trademark.

It can be seen that even for defensive purposes, if a trademark registration exceeds a reasonable scope and lacks actual intent of use, it will still be rejected as a malicious registration not intended for use.

2. Defensive registrations have a higher risk of being cancelled

Paragraph 2 of Article 49 of the Trademark Law stipulates:

"Where a registered trademark becomes a common name of goods on which it is approved to be used or the use of the registered trademark has ceased for three consecutive years without good reasons, any entity or individual may apply to the Trademark Office for cancellation of the registered trademark."

The Trademark Law establishes a revocation system for stopping the use of registered trademarks for three consecutive years in order to encourage and urge trademark registrants to use their trademarks and play the role of trademarks in distinguishing the source of goods in the market. As long as the trademark has not been used for three consecutive years without justifiable reasons, any entity or individual can apply to cancel the registered trademark. In general, defensive trademarks are less likely to be actually used and cannot be used as a valid reason for non-use for three years. Therefore, defensive trademarks have a higher risk of being cancelled.

In the non-use cancellation review case of the mark, under No. 7835804 1375182a.jpg in Class 10 (hereinafter referred to as the "Reviewed Trademark"), the applicant failed to submit evidence within the prescribed time limit, claiming that the reviewed trademark was the defensive registration for the applicant's same mark in Class 14, the adverse party had certain bad-faith in filing a non-use cancellation for the reviewed trademark. Therefore, the reviewed trademark should be maintained for registration.

After review, the National Intellectual Property Administration, PRC ("CNIPA") held that since the applicant did not submit evidence of use of the reviewed trademark within the prescribed period, it was difficult to determine that it had made real and effective commercial use of the re-examination goods during the designated period. The applicant's defense that the reviewed trademark is for defensive registration cannot be established. Ultimately, the reviewed trademark was cancelled.

It can be seen that defensive registration cannot be a valid reason to avoid the non-use cancellation of a trademark after three years. As long as the trademark is not used, there is a risk of being cancelled by others.

In recent years, the CNIPA has continued to increase its efforts to crack down on malicious trademark registrations. Recently, it issued a notice on the "Systematic Management of Malicious Trademark Registrations to Promote High-Quality Development (2023-2025)" to stop trademark malicious registrations. The legal system for governing registration behavior, improving the working mechanism for strictly cracking down on malicious trademark registrations in accordance with the law, and deepening the crackdown on malicious trademark registrations in all fields, are believed to effectively curb malicious trademark registrations.

At the same time, the fifth revision of the Trademark Law released this year for consultation has gradually returned to the legislative origins of on-demand trademark applications, forming a healthy and orderly trademark registration order.

We believe that in the future, trademark rights holders will no longer have to register defensive trademarks for defensive purposes and face the embarrassing situation of being denied registration or having their trademarks cancelled.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.