A defensive trademark usually refers to the practice by which an operator registers the same trademark as, or similar to, its main trademark on classes not similar to its principal goods or services, or registers multiple similar trademarks on similar goods, in order to broaden the scope of protection. Defensive registration can compress the room for free-riding by others, but current Chinese law does not list it as a separate registration type, and its costs and cancellation risks need to be calculated in advance.
The Concept and Its Origin
"Defensive trademark" broadly covers two types of portfolio layout in practice:
- Cross-class defense: registering the same trademark on classes other than the principal class—for example, a clothing business also registering in cosmetics and restaurant classes;
- Similarity defense: registering multiple variants similar to the main trademark on identical or similar goods; this kind of layout is also called associated trademarks.
Strictly speaking, associated trademarks and defensive trademarks are two different concepts: the former is a cluster of similar trademarks registered by the same operator on similar goods, while the latter is the same trademark registered on non-similar goods. Neither is specially regulated by China's Trademark Law, and after registration both are administered under ordinary trademark rules.
Legal Basis and Limits
- Article 3 of the Trademark Law makes clear that the exclusive right to a trademark is limited to the approved trademark and the designated goods; market gaps beyond the scope of protection must be filled by separate applications;
- Article 4(1) of the Trademark Law provides that natural persons, legal persons, or other organizations that need to obtain the exclusive right to a trademark in the course of production and business activities shall apply for registration; bad-faith applications not intended for use shall be refused. Hoarding large numbers of defensive registrations without intent to use may touch this provision;
- Article 49(2) of the Trademark Law provides that where a registered trademark has not been used for three consecutive years without justified reason, any entity or individual may apply for its cancellation. Defensive trademarks are mostly in a "held but unused" state—this is the greatest institutional risk.
Non-Use Cancellation Risk and Use Evidence
When a defensive trademark is challenged by a non-use cancellation, the registrant must provide evidence of use in China within the designated period, such as contracts, invoices, advertising, packaging, and store pages bearing the trademark. Mere registration without use, and without justified reason, will result in cancellation; where justified reason for non-use can be proved, or where some of the designated goods were genuinely used, the corresponding part can be preserved.
Practical countermeasures tie the defensive classes to real operations—for example, producing samples, internal materials, giveaways, and related products, with verifiable traces left behind. Merely symbolically attaching a few pictures or issuing a few invoices without corresponding logistics and fund flows often cannot support a use claim.
Cost-Benefit Analysis
- Registration costs: the more classes, the higher the official fees and agency fees;
- Maintenance costs: every mark must be renewed on schedule, every mark may face non-use cancellation, and evidence must be retained for each;
- Opportunity costs: over-diversified resources may squeeze the promotion and enforcement budgets of the main trademark.
Defensive layout is therefore not "the more, the better"; it should be configured around the brand's actual risks.
Practical Recommendations
- First assess the need for defense: the higher the fame of the main trademark and the greater the risk of free-riding, the more valuable the defensive layout;
- Prioritize covering associated classes and easily confused classes, such as the upstream and downstream of the principal goods and industries commonly exploited for name-dropping;
- For classes with no real business plans, retain a minimum level of use traces and periodically evaluate whether to maintain them;
- Establish a trademark ledger and conduct regular inspections by class, expiry date, and use status, abandoning low-value defensive trademarks in time.
How these concepts apply in specific cases still involves detailed differences; you may consult a registered agent via MyTMBee for case-specific analysis.