Trademark Protection in China with Article 15

Trademark squatting is a real problem in China. Whether registering a trademark that is concerningly similar to an established mark or registering a famous mark that has not yet started operation in the country. Squatters attempt to piggyback off or hijack other people’s brand identity.

Another all-too-common method of trademark squatting is squatting by a business partner or distributor of the trademark owner. Brand protection can be a challenge when expanding into any new market. However, in markets with especially malicious or shady practices, taking extra steps to protect yourself is crucial.

Protecting Your Trademark in China

Registering your mark before entering the Chinese market is likely the most effective precautionary step. Doing this can minimize the opportunities squatters have to identify your brand and claim the rights to your intellectual property or brand.

What happens if one of your distributors or representatives is the party taking advantage of your property? Article 15 of the China Trademark Law could be the answer.

What is Article 15?

Article 15, paragraph 1, the law you will depend on to oppose or invalidate a trademark filed without your consent. Article 15 states that an agent or representative cannot register a trademark in their own name if it belongs to the party they represent without that party’s permission.

What is an agent or representative?

An agent acts on behalf of the business or principal party in accordance with Article 15 and is determined by the relationship of the parties, typically described in the contract, and may include:

• Sales companies
• Sales agents
• Manufacturing and
• Distribution companies

A representative is a person who holds a subordinate or assistive position and has insider knowledge of the trademark by way of their job duties.

Proof of Unauthorized Registration

To prove the trademark was registered without authorization, you should be prepared to provide evidence of the below requirements of Article 15:

• The person who applied for trademark protection is your representative or distributor;
• The property in question is similar to your existing trademark;
• The representative has no proof you authorized the registration

If you have payroll documents, employment contracts, or other documents that establish a distribution or representative relationship exists, these should be provided to adhere to Article 15.

It is not necessary to show you have an existing trademark in use in China to be successful in your objection to the trademark registration. Instead, you must broadly prove that the trademark is yours, which may be possible by providing distribution agreements or registration paperwork from other countries like the US.

Expanding into global markets is challenging enough without having to navigate trademark squatters and registration objections in other countries.

If you have questions about Article 15 protection in China or are looking for guidance on how to enter other markets safely, speak with one of EmergeCounsel’s trademark attorneys. Please note that EmergeCounsel attorneys are only licensed to practice in the United States. EmergeCounsel works with local counsel in China to register trademarks and create binding NNNs for Chinese manufacturers and distributors. Contact us today for a free consultation.