The Shenzhen headquarters of Chinese online game developer NetDragon Websoft. CEO Liu Dejian is a Trekkie. (Courtesy: Branding in Asia)
A couple years back, I wrote a post explaining why it rarely made sense to file a trademark application in China via the Madrid System. Nothing has changed substantively since then, but a growing trend among foreign rightsholders has made the Madrid System even less relevant.
As I have written previously, the Chinese Trademark Office (CTMO) does not require trademark applicants to prove use of the mark at the time of application, or any time thereafter (unless a third party seeks to cancel the mark for non-use, which is only possible after three years). As a result, many corporations—especially multinational corporations facing an onslaught of counterfeit merchandise—have started filing applications that cover a range of goods far greater than what they are actually producing or selling. Although we don’t represent Starbucks, I like to hold them up as an example of the gold standard in “offensive” trademark registration. They have registered the word “Starbucks” in China as a trademark in all 45 classes of goods and services. Starbucks brand diapers? Covered. Starbucks brand patio furniture? Covered. Starbucks brand binoculars? Covered.
As far as I know, Starbucks has not sold and has no plans to sell branded diapers, patio furniture, or binoculars. Accordingly, it would not be able to register trademarks for such goods in the United States or most other countries in the world –and therefore could not use such registrations as the basis for a Madrid System application. In other words: the only way Starbucks, or any other company, can take advantage of the China trademark system’s unique protections would be by filing a national trademark application in China.
The only mystery to me is why more companies with the means and motivation aren’t taking advantage of the Chinese trademark system. I just did a quick search for “Star Trek” on the CTMO database—not that I’m looking forward to Star Trek Beyond or anything—and the folks at Viacom are just asking for trouble. They have registered “Star Trek” in only classes 9, 16, and 41, which means that an entrepreneurial Chinese company could soon be boldly going where no man has gone before. Star Trek vitamin supplements, anyone?
—This post first appeared on the China Law Blog.