In practice, foreign clients’ trademarks are often rush registered by agents, calm down, your legal rights will be protected with the use of Article 15 of Chinese Trademark Law. 

Once, we got a call from a client said the goods has been intercepted by the Customs, the reason was the confliction with the prior recorded registered trademark. Later we learned that the former agent rush registered the trademark in the name of its affiliates without the approval from the client, also, this former agent made record at the Customs after the registration, therefore, the client’s goods has been held up by the Customs. However, the client and the agent who rush registered the trademark had long since the termination of the cooperation. While communicating with the Customs, as per the agent’s advice, the client has filed application for the invalidation of announcement against the rush registered trademark based on Article 15-2 of Chinese Trademark Law, a judge has been received recently, the rush registered trademark has been successfully declared for invalidation. 

Article 15-2 of Chinese Trademark Law

Trademarks to be applied for registering on the identical or similar goods are identical or similar to other parties’ prior but non-registered trademarks, where the applicant has contracts, business relationships with this party other than those specified in the preceding article, or other relationship existing between them, but the applicant knowing the existence of the party’s trademark, this party should file the opposition, the registration should be rejected. 

Offering relevant pieces of evidence will be the key point and difficulty of using Article 15-2. Through repeat communications and collection of guiding evidence, the client has found out relevant evidence, including agreements, invoices and emails with this agent during the previous cooperation with this agent, however, the disputed trademark did not be applied directly under the name of the agent who signed the agreement of cooperation, it was applied under the name of the agent’s affiliated company, also, this is a difficulty for prove. In addition to filing proof of shareholder relationship, a certificate of origin bearing the official stamp of the registrant of the disputed trademark became an important piece of evidence. Finally, the application for the invalidation has been supported, while the rush registered trademark has been successfully invalid.

However, if the client didn’t keep the relevant pieces of evident well, especially, two sides have terminated the cooperation for a quite long time, it may lead to a passive situation to the client. Therefore, we would like to remind multinational companies to pay more attention to the protection to the Intellectual Property right, should plan the protection to trademarks as soon as earlier in the process of the operation in China, filing the application for the registration as early as possible before put-into-use can effectively avoid large amount of efforts and cost are posed by the protection of rights after the scramble for registering trademark. Actions should be taken immediately and timely upon discovering the scramble for registering trademark. The hindrance on the right can be cleared through procedures, i.e. opposition, declaration on invalidation, cancellation, while can negotiate for reaching the transferring in case the lost of right. If the trademark has been rush registered by the agent, we advise to protect the legal right by Article 15 of Chinese Trademark Law.