Welcome to China lawyer Blog, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration in China. Our law firm representing trademark infringement plaintiffs and defendants in China.  Recently I received quite a few question related to China trademark and IP laws. Accordingly I published a few articles on this blog on trademark and IP related matters. One of questions I received is how to respond to trademark infringement claims. In other words, how to defend yourself against trademark infringement claims. Today, I will be answering the question:  What Are My Defenses to a Trademark Infringement Claim under Chinese law?

Defenses to trademark infringement allegations include: the trademark is invalid, the trademark has been abandoned, or the mark is not distinctive.

You will know if you are being subjected to a trademark infringement claim if one of several things occurs.  More likely than not, you will receive what’s known as a cease and desist letter, sometimes also referred to as a threat letter.  That letter will set forth the sender’s rights in a trademark, identify your unauthorized use, and also set forth why they believe that you are infringing their trademark.  It is at this junction that it is important for you to retain legal counsel, preferably a trademark infringement attorney, who can advise you as to the defenses you have available.   Your failure to respond to a threat letter may result in them jumping to a lawsuit.  And once a lawsuit is filed, you are a named defendant and will have to respond and answer a complaint setting forth why it is not trademark infringement.

Regardless of how you become aware of the fact that someone is claiming that you are infringing their trademark, you need to first be able to identify defenses.  And like I said, a qualified trademark attorney or trademark lawyer can help you do that.  And there are multiple defenses out there that are really dependent upon the facts of each case.

A registered trademark is invalid if the registration of the trademark or the incontestable right to use the trademark was obtained fraudulently. A trademark, whether registered or unregistered, is invalid if the mark has become generic. A trademark, whether registered or unregistered, is invalid if it is primarily a surname. The defendant has the burden of proving a registered trademark is invalid. The plaintiff has the burden of proving an unregistered trademark is valid.

A trademark is invalid if the plaintiff’s use of the mark was only token use. Token use means sporadic, casual, or transitory use that is not part of an ongoing effort to use the mark in commerce. Volume of sales does not exclusively determine whether use of a mark is only token use. However, there must be a true effort to meaningfully market the mark in commerce.

A trademark may have been abandoned if the plaintiff stops using the mark for a consecutive of 3 years. This is the famous doctrine of 3 years non-use under China trademark Law.

The first might be fair use.

A fair use defense in trademark law applies when a descriptive mark, that has adapted a secondary meaning, is only used for the descriptive nature of the mark. A secondary meaning exists when the public associates a mark with a product so closely that a “secondary meaning” of its relatively general mark has been created. An example of this is all fruit cereal: even though the name is descriptive of the product, it has gained a secondary meaning because people associate that mark with the product “All-Bran.” However, in that vein, another company can market their cereal as an “all fruit” cereal without infringing because the affirmative defense of fair use applies.

Another defense looks at the actual factors that come within a trademark infringement claim

So keep in mind, in order for a plaintiff to establish a trademark infringement cause of action, they need to establish that, first, you’re using a mark in commerce, and second, that it creates a likelihood of confusion.  And a likelihood of confusion analysis includes multiple factors.  The two most important being the similarity of the goods and services and the similarity of the marks as themselves.  So, a defense to a trademark infringement claim could entail each of those factors and showing why there isn’t a similarity in the marks or why there isn’t a similarity the goods and services.

Equitable defenses such as the doctrine of laches, acquiescence or waive

All of these defenses entail the fact that the plaintiff either waited too long to assert a claim, could have asserted a claim and chose not to, gave you a representation that they weren’t going to assert a claim, but eventually did, whatever the facts might be, those defenses might be available to you.  Regardless, again, a qualified and experienced trademark attorney will be able to guide you through what your best defenses are.  It is always critical to identify those defenses that serve as both legal leverage and, also, what other non-legal leverage might exist in order to help you establish a defense that will not subject you to continued prosecution for trademark infringement.

Use of certain indications

If another uses certain indications such as the kind of goods or services, the quality and quantity of the goods or services, the value or geographical origin of the goods or services then this will not constitute an infringement of a registered trademark. Again this must be done in accordance with honest practice.

Use of Intended Purpose

In a situation where it is necessary to use a mark to indicate the intended purpose of goods or services then there will be no infringement of a registered trademark. As is the case with the other above defences this must be in accordance with honest practice.

Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.