Issues in the practise of bulk trademark renewal

By Shan Xunping, Dentons
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Company “J” owns hundreds of registered trademarks, and its core trademarks are registered for almost 45 categories of goods and services. The earliest registered trademarks have been renewed twice. Hundreds of registered trademarks will expire between 2018 and 2020. Among these registered trademarks, only a few are used. Most are only registered as defensive trademarks, and are not used.

单训平 Shan Xunping 大成律师事务所 律师 Associate Dentons
Shan Xunping
Associate
Dentons

On the one hand, company J renews its trademarks step by step; on the other hand, it complains about the input (including agency fees and formality fees paid to the trademark office) in renewal of a large number of defensive trademarks that are not used, and in which no value is seen. In addition, these trademarks may be cancelled at any time if they are not used for three consecutive years. This issue of company J also troubles the enterprises that own a large number of defensive trademarks.

Value of defensive trademarks. Defensive trademarks are registered in order to prevent others from using the signs of the registered trademarks on goods or services of other categories. The value of defensive trademarks lies in passive defence and reservation.

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Shan Xunping is an associate at Dentons

Dentons China 大成律师事务所

15th/16th Floor, Shanghai Tower
501 Yincheng Road (M), Pudong New Area, Shanghai 200120, China电话 Tel: +86 21 5878 5888
Fax: +86 21 5878 6866
E-mail:
xunping.shan@dentons.cn

www.dentons.com