Should the registration of defensive marks be treated with tolerance?

Registering defensive marks is one of the most common measures taken by owners of well-known trademarks to expand their trademark protection.

Recently the famed distillery Luzhou Laojiao finally secured registration of the defensive mark “银国窖” (yin guojiao, a name of a liquor, in English “silver guojiao”) for its well-known trademark “国窖” (guojiao, a name of a liquor) after a four-years struggle by a judgment of the Beijing Municipal Higher People’s Court. The case concerned a conflict over the similarity between an existing reference mark and the defensive mark in the trademark registration application. The court considered a number of factors in full and took an attitude of lenience toward protection of the defensive mark.

Whether this is a one-off case or reflects a trend in how the courts handle conflicts of similarity is to be seen.

Jiang Fengtao is the managing partner and Zhang Yu is an associate of Hengdu Law Offices