How does Article 15.2 work?
date: 2017-10-24 Samiko Sun Read by:

There is a big change in the new Chinese Trademark Law in Article 15 (agent or representative registered the real owner's mark) - it added another provision for this Article, trying to cover more conditions involving the business relationships.


Interpreting Article 15.2 and comparison

Article 15.1: In the event that an agent or a representative seeks to register the client's trademark in its own name without the authorization of the client and faces objection from the client, such trademark shall not be registered and be prohibited from being used.

Article 15.2: Where a trademark that the applicant applies for registration with respect to the same or similar goods is the same as or similar to an unregistered trademark that has been used by others, and there is contractual, business or any other relation between the applicant and others in addition to previous provisions, such trademark shall not be registered when the others raise objections.

Article 15.2 is applicable when the relationships are not agent, representative, but a broader one, like contractual and business relationship, and it is a big difference compared with Article 15.1.  Although the relationship under Article 15.1 is expanded by the new Trademark Law to include the negotiation stage, after relationship completion, and collusion situation, it is still a narrow circle compared with Article 15.2.

What specific relationship does Article 15.2 cover? According to the Standards for Trademark Examination and Trial published this year, the Contractual and Business relationship can cover the followings:

Buyer-seller; commissioned processing; franchising (trademark license); investment; sponsorship and joint events; business and evaluation; consultation; advertisement agent; relatives; employment; close geographical location; the intention and preparation of developing a formal relationship

However, people always say God is opening a window for you while closing the door. Unfortunately, it happened to Article 15.2.  Even if the relationship under Article 15.2 was expanded a lot, it was added with other required elements:

1) Identical/similar goods/services
2) Identical/similar marks
3) Relationships
4) Prior use in mainland China before the disputed mark's filing date

It is obvious that "prior use" was never asked by Article 15.1.

According to the Standards, as always, "prior use" is limited within mainland China, and shall be generated before the application date of the disputed mark.  But the "prior use" here can also cover actual preparation activities.

But what can constitute "preparation activities"?  Signing contracts, negotiating for investment, sponsorship, and advertisement, licensing trademark, and etc.?  All these activities are actually the preparation before formally entering into Chinese market.  Therefore, whether these activities (just to form the possible relationship) could be considered "preparation activities" under "prior use"?  We will see.

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