In practice, many domestic and foreign clients’ trademarks have been rush-registered by agents, take it easy, Article 15 of the Trademark Law will protect your legal rights.
Once, a client said the goods has been held up by the customs due to the confliction regarding the trademark rights between the client’s trademark and the prior recorded trademark. After the investigation, we learnt that the client’s agent has rush-registered the trademark under the name of affiliated company without the client’s approval, furthermore, this agent has made record in the customs after the registration. Thus, the client’s goods cannot be shipped due to customs detention. However, the client has already terminated the cooperation with the agent for a very long time. When we communicated with the customs, the attorney advise, as per Article 15-2 of the Trademark Law, the client can claim invalidation against the rush registration. Recently, the rush-registered trademark has been successfully declared for invalidation.
Article 15-2 of the Trademark Law:
“…where the applied-for trademarks on the identical or similar goods are identical with or similar to other party’s prior non-registered trademarks, besides for provisions abovementioned, if the other party’s trademark was known for the existence because of contracts, business or other relations existing between the applicant and the other party, the registration of the applied-for trademark shall be refused due to the opposition posed by the other party.”
To offer relevant evidence is the key and hard point to use Article 15-2. Though communications for many times and guidance on collecting pieces of evidence, the client has found pieces of evidence (i.e. cooperative agreement, invoices, emails) for the cooperation with the agency, however, the disputed trademark has been applied by the agent’s affiliated company, instead of the agent that has cooperative agreement with the client, also, this is a difficulty for the proof. In addition to submitting proof of equity relationship, especially the cooperation between two parties have terminated for a very long time, then, the situation is quite passive. Thus, transnational enterprises should be reminded to pay close attention on the protection of the intellectual property, to plan the protection on trademarks as earlier as possible, to file the application for registration prior to the use of trademark as earlier as possible in avoid spending much time and money for the assertion of rights which are posed by rush registration.
The measures must be taken immediately upon the discovery of rush registration. Barriers can be removed via opposition, declaration of invalidation, cancellation and other procedures, meanwhile, can negotiate with the other party for the purpose of transferring in avoid of fail of rights. Article 15 of the Trademark Law can be adopted to protect the legal right in case the agent’s rush registration.