In order to prevent trademark agencies from taking advantage of their business advantages to preemptively register other people’s trademark in bad faith for profit, when the Trademark Law was amended in 2013, Article 19-4 was added, ‘A trademark agency should not apply for the registration of any other trademark except for the trademark registration for its agency service’. That is, trademark agencies can only apply for the registration of trademarks in the service items of the group 4506 in Class 45, the transfer of trademarks does not affect the recognition of the subject, which is a very strict prohibition rule. With the malicious competition behavior pattern gradually presents collectified and secretive, some trademark agencies are hoarding squatting trademarks by means of other naming purposes. The writer believes that the function of Article 19-4 of the Trademark Law should be given full play to expand the scope of application, so as to regulate the malicious registration of trademark agencies.

At present, the application of Article 19-4 of the Trademark Law can be divided into the following two situations: one is that the regular trademark applicant is a trademark agency itself and the subject engaged in trademark agency behavior or the business scope covers "trademark agency" or "intellectual property services". In this case, even if the change of business scope is not enough to exclude the application of Article 19-4 of the Trademark Law. The other is the newly emerged ‘the action of others can be regarded as the actions of the trademark agency’. For example, the Administrative Judgement No. 5989 of (2018) Jing Xing Zhong, the trademark agency applied for registration in the name of the close relatives of its staff in order to evade the law, and the trademark applied for registration in the name of the close relatives can also be regulated by Article 19-4 of the Trademark Law. One more example, in the decision No. 231565 of (2021) Shang Ping Zi regarding the invalidation of No. 29135506 trademark ‘麦乐兹MAILEZI” (Mai Le Zi in Pinyin), the natural person, as the legal representative of the trademark agency, has registered more than 400 trademarks on a number of goods and services through himself and his company registered in Hong Kong. The legal representative of the trademark agency and its affiliated companies can be regarded as the "trademark agency". Article 19-4 of the Trademark Law can be applied to regulate the trademarks of a natural person and several companies under his or her name. However, at present, for the second situation, there are not many cases in which Article 19-4 of the Trademark Law is applied alone in invalidation cases. Usually, this article is only a serious situation, which is covered by the content of "obtaining a registered trademark by other improper means" in Article 44-1 of the Trademark Law. Therefore, it is more common for Article 19-4 and Article 44-1 of the Trademark Law to apply simultaneously.

The application of Article 19-4 of the Trademark Law has certain limitations. Beijing courts have recently issued a number of judgments that ruled out the application of Article 19-4 of the Trademark Law, the writer reminds trademark agents and trademark owners to pay attention to the following points when advocating the application of this article: First, pay attention to the time point, that is, the law is not retroactive, Article 19-4 of the Trademark Law can only apply to trademarks filed after 30th August, 2013. Second, emphasize the common intention between associated subjects. For example, the evidence of the association between the trademark registrant and the senior executives and the trademark agency can be used to prove that "the trademark agency applies for registration in the name of others to avoid the law", moreover, the intent is to malicious hoarding as the core. The relevance can be proved further by the trademark agency relationship between associated subjects. If there is a blatant high price selling behavior is more reflected in the hoarding of resale trademark malicious. Third, for the recognition of a trademark agency, the existing trademark law and judicial interpretation have made it clear that ‘the subjects engaged in trademark agency business that have been put on record, the subjects engaged in trademark agency business that are recorded in the industrial and commercial business license, and the subjects that are not put on record but actually engaged in trademark agency business’. However, the scope of the ‘subject actually engaged in trademark agency business’ is still open, but there are differences in practice: some rulings and judgments have included the parent company, the subsidiary and the staff of the agency into the category of "trademark agency", while some judges have determined in their judgments that: "In the case of no special reasons, different commercial subjects independently exercise their rights according to law, the property of the right of the disputed trademark cannot be naturally mixed because of the controlling relationship’. Or, ‘although the shareholders and senior executives of company A and B trademark company cross each other, the existing evidence is not enough to prove that Company A engaged in trademark agency business’. The writer held that the legislative purpose of Article 19-4 of the Trademark Law is to regulate the trademark agency's behavior of squatting and hoarding of the subject's trademark, and the core is to regulate the trademark agency to register the trademark for the purpose of selling to others. However, the way to prevent trademark agencies from "peddling" registered trademarks is to directly prohibit trademark agencies from registering trademarks in the categories of services or goods other than agency services. The provision is originally designed to cut off agents’ channel of rush registration at the beginning. The scope of identification of "trademark agency" should include the parent company, the subsidiary and the staff of the agency into the category of "trademark agency", which is an expanded interpretation based on legislative purposes. Only in this way can trademark agencies' behavior of "avoiding legal purposes by using other people's names" be fundamentally and effectively attacked. Certainly, the examination of trademarks needs to follow the principle of case-by-case, and the identification results vary with the specific circumstances and evidence of different cases. Clues and evidence of correlation and common intention need to be carefully sorted out.

In practice, there are many shareholders and executives of trademark agencies who invest in the establishment of shell companies (some are domestic companies, some are Hong Kong companies, and even foreign companies), and then use the name of shell companies to register and hoard trademarks, and then transfer and sell them for profits. However, in order to meet the needs of their own goods development and brand renewal, many group enterprises regularly apply for a large number of trademarks, and some enterprises even set up their own trademark agency, this meets the "identification of affiliated companies as trademark agencies" in the form, there is no subjective intention of hoarding and reselling. Do the above-mentioned enterprises apply for trademark registration in violation of the Article 19- 4 of the Trademark Law? In this regard, the writer held that if the affiliated companies are trademark agencies, but the companies are independent and there is no personnel mixing, the application of Article 19-4 of the Trademark Law can be excluded combining with the elements of subjective intent. Can the associated subject be "regarded as a trademark agency" in a malicious case where the associated subject is involved in a trademark agency? At this time, the application of Article 19-4 of the Trademark Law also needs key elements to meet the common intention and the proof of close association.

As the malicious hoarding of trademarks intensified, the continued application of Article 19-4 of the Trademark Law is very necessary. The new application of Article 19-4 of the Trademark Law shows that "The law is strong, saying", still, there is no escape from the long arm of the law. In view of the fact that trademark agencies have a huge advantage over ordinary trademark registrants due to the sufficient experience acquired in the complex process and professional agency process, the official fees of trademark application are constantly decreasing while the cost of trading a trademark is constantly reaching a record high, with a profit of ten thousand yuan in exchange for a cost of one hundred yuan, driven by such lucrative profits, it is impossible to guarantee that trademark agencies will not compete to imitate, hoard and resell trademarks. The existence of Article 19-4 of the Trademark Law can effectively prevent trademark agencies from indirectly monopolizing the trademark market and reselling trademarks for improper benefits by circumventing the law, which will at least be an important deterrent. Article 19 (4) of the Trademark Law can restrict trademark agencies to regulate their behavior, urge trademark agencies to devote themselves to professional agency and prevent them from becoming profiteers who only know speculation and scalping, which is conducive to actively creating a fair and efficient market competition order.

Finally, some advice for trademark registrants: In order to avoid violating the Article 19-4 of the Trademark Law, before applying for trademark registration, the trademark registrant shall check whether the scope of the business license includes "trademark agency, intellectual property services", if there is no actual business, the relevant contents in the business scope shall be cancelled before the registration of the trademark application is filed, if the actual business scope does include ‘trademark agency, intellectual property services’, the application for registration of the trademark on the goods or services of non-group 4506 of the Class 45 should be actively applied with the CNIPA for the cancellation. Based on the legislative purpose of Article 19-4 of the Trademark Law and the situation in which the CNIPA focuses on cracking down on hoarding and preemptive registration in bad faith, the CNIPA will certainly strictly regulate the application of Article 19- 4 of the Trademark Law in trademark invalidation cases, and it will be difficult to overturn even at the litigation stage.

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