Where a trademark agent, distributor, contract manufacturer, business partner, or the like exploits the business relationship to squat your trademark, you may file an opposition (during the announcement period) or request invalidation (if already registered) under Article 15 of the Trademark Law. The core is to prove an agency/representation relationship or contractual/business dealings between the parties, and that the other party knew of your trademark.
Legal Basis
Article 15 provides for two situations:
- Paragraph 1: where an agent or representative, without authorization, registers the trademark of its principal or represented party in its own name, and the principal or represented party files an opposition, the trademark shall not be registered and its use shall be prohibited;
- Paragraph 2: where a trademark applied for on identical or similar goods is identical or similar to another party's unregistered trademark in prior use, and the applicant has a contractual, business, or other relationship with that party beyond those specified in the preceding paragraph and therefore clearly knows of the other's trademark, the trademark shall not be registered if that party files an opposition.
Paragraph 2 expands the scope from "agency/representation relationships" to various business relationships such as distribution, contract manufacturing, franchising, and cooperation negotiations, and is more widely applied in practice.
Key Evidence
- Relationship evidence: agency agreements, distribution contracts, contract-manufacturing orders, franchise contracts, cooperation negotiation emails, meeting minutes, and exchanges of business cards—proving a business relationship existed before the filing date;
- Knowledge evidence: records showing the other party actually came into contact with your trademark in the course of business, such as samples, packaging, and promotional materials you provided, or clauses in contracts referencing the trademark;
- Prior use evidence: records of sales and promotion of your trademark before the other party's filing date.
Procedure Selection
- The other party's trademark is in the preliminary approval announcement period: file an opposition within three months;
- Already registered: request invalidation under Article 45 within five years of the registration date;
- The substantive provisions invoked by the two procedures are the same, and the evidence is interchangeable.
Prevention Advice
When signing contracts with agents or contract manufacturers, include trademark ownership clauses stating that the trademark belongs to you and the other party may not apply to register it; file your registration application before commencing cooperation, so that the filing date precedes any exposure of the trademark through the cooperation relationship.
If you are facing the above issues, you may first handle an opposition defense on MyTMBee to confirm feasibility before deciding whether to file, avoiding blind filings that waste official fees.