Feb 21, 2025 | Registering Trademark by Taking the Advantage of the Loopholes of Polices

1 An infringer with ulterior motives may try to register a company’s trademark. Companies need to pay special attention to such infringers, otherwise they may linger around and intrude into the company’s business after successfully registering the trademark.

2 If the company does not take the potential issues seriously, the infringer may try to register the company’s trademark for the category of goods that the company has not yet registered. If the goods registered by the infringer are vastly different from the goods sold by the company, the company may not have commercial reasons to raise major objections. However, for infringers with ulterior motives, they will try their best to register trademarks for ” adjacent products” sold by the company, attempting to take advantage of the loopholes of polices and the goodwill of the company in order to earn profit. If the company takes an insufferably glib attitude toward it all, the infringers will draw closer to the company’s products, and eventually achieve the effect of passing off counterfeit goods as genuine ones.

3 In order to deal with the above practical problems, it is the best approach for companies to oppose the trademark application of the infringers. The companies can consider the following effective measures: –

Hiring trademark monitoring services instantly and actively monitoring trademark registration (Watch Service). If there are similar trademarks registered by other companies, the service agency shall promptly remind the company and make objections in a timely manner;
For some trademark applications that may affect the company’s reputation, the company must file an “Opposition Proceeding”; and
After being made aware of the infringer’s trademark application, the company should consider applying for a trademark to fill the gap in the unprotected status of the category of goods with unregistered trademarks.
4 According to the author’s experience, the above trademark protection strategies are applicable to most countries, including China, Taiwan, South Korea and other Asian countries, the United Kingdom, France and other European countries.

5 Nevertheless, the scope of trademark protection (right of opposition) for companies is also limited. Additionally, since the company’s products may not have sold in all countries yet, the company’s opposition to registration (objection procedure) may not be successful. Therefore, some tenacious infringers may successfully register a company’s trademark on products similar to that of the company in certain countries (hereinafter referred to as “similar registered trademark”).

6 After successfully registering a “similar trademark”, the infringers will use the “similar registered trademark” on products. At first, the infringers may toe the line, but not later. Then, infringers may be tempted to use similar registered trademark on products of other companies. According to the author’s experience, companies must take action to stop infringers from crossing the line.

7 In order to deal with the above issues, companies may consider the following actions:
Instituting a cancellation procedure against the registration of the infringer’s similar registered trademark. The grounds for cancellation include ‘‘bad faith in the registration of a trade mark” (Bad Faith) and the reputation of a company’s products (if any);
Sending cease and desist letters to online, offline stores and even to the online platforms selling infringing products;
(if necessary) prosecute infringers who use “similar registered trademarks”.
8 If companies take decisive and proactive actions, there will be only a few or even no successors (online and offline stores) who will take the risk of being sued and continue to sell infringing products with similar registered trademarks.

9 Certainly, companies need to identify the intellectual property infringers and take appropriate legal actions to deal with and punish them.