During the process of business consulting, we often encounter situations where clients say, "I am the true owner of the ABC trademark, but my distributor/partner in China has registered my trademark! What should I do?"
Don't worries, the "Trademark Law" can help you with situations where dealers/partners, etc. attempt to register trademarks that the actual trademark owners have not registered.
Article 15 of the Trademark Law states:
Where an agent or a representative applies for registration of a trademark of the principal or the represented party in the agent's or the representative's own name without authorization, the trademark shall not be registered and shall be prohibited from use upon opposition from the principal or the represented party.
Where an applicant for registration of a trademark identical with or similar to an unregistered trademark in prior use by another party on identical or similar goods has any contractual, business or other relationship except the relationship described in the preceding paragraph with the other party and knows the existence of the unregistered trademark, the trademark shall not be registered upon opposition from the other party.
Now let's analyze the two situations specified in Article 15.1 of the Trademark Law in detail:
Article 15.1 of the Trademark Law stipulates the applicable conditions and required evidence
Legal basis
Article 15.1 of the Trademark Law stipulates: “Where an agent or a representative applies for registration of a trademark of the principal or the represented party in the agent's or the representative's own name without authorization, the trademark shall not be registered and shall be prohibited from use upon opposition from the principal or the represented party.”
This provision is a prohibition on the malicious preemptive registration behavior of agents or representatives who knowingly register trademarks of the principal on the same or similar goods.
Eligibility criteria
The act of registering a trademark of a represented party without authorization by the agent or representative shall meet the following conditions:
1) The applicant for the disputed trademark registration is the agent or representative of the trademark owner.
2) The disputed trademark is used on the same or similar goods or services as the principal or the represented party's trademark.
3) The disputed trademark is identical or similar to the principal or the represented party's trademark.
4) The agent or representative cannot prove that their application for registration has obtained authorization from the principal or the represented party.
Evidence proving the existence of agency relationships and representative relationships
The following evidence can prove the existence of an agency relationship:
1) Agency, distribution contract;
2) Transaction vouchers, purchase records, and other documents that can prove the existence of the agency or distribution relationship;
3) Other evidence that can prove the existence of the agency or distribution relationship.
The following evidence can prove the existence of a representative relationship:
1) Business registration documents;
2) Company's payroll, employment contracts, appointment documents, social insurance, medical insurance, and other materials;
3) Other evidence materials that can prove that one party has a specific identity subordinate to the represented person and may have knowledge of the represented person's trademark due to the performance of official duties.
Typical case
The situation where an agent registers the trademark of the principal in their own name
Case: Invalidation of Trademark No. 22737360 "绿博士".
From the above case, it is not difficult to see that retaining valid evidence (such as signed agreements, invoices, email communications, bank transfer receipts, purchase vouchers, etc.) is of great help in cases of trademark squatting.
We also remind trademark rights holders that they must lay out and plan for their intellectual property early on, and not let malicious squatters take advantage of the situation!
