Understanding the Legal Provision
Article 15(2) of China's Trademark Law provides crucial protection against bad-faith trademark squatting. It states that if a trademark applied for on identical or similar goods/services is identical or confusingly similar to an unregistered mark previously used by another party, and the applicant knew of that mark due to a specific relationship (beyond agency/representation covered in Article 15(1)) with the prior user, then registration must be refused if the prior user objects.
Core Elements Explained
For Article 15(2) to apply, several key elements must be established:
1. Goods/Services: The goods or services covered by the disputed application must be identical or similar to those associated with the prior-used mark.
2. Prior-Used Unregistered Mark: The mark being protected must have been genuinely used commercially (not just internally or as an idea) and must have gained a certain level of recognition or influence in the relevant market.
3. Similarity: The disputed mark must be identical or confusingly similar to the prior-used unregistered mark.
4. Specific Relationship & Knowledge: There must be a demonstrable relationship between the applicant and the prior user (e.g., business dealings like sales, distribution, cooperation, investment; or other connections like being former partners, employees, competitors, or even relatives/friends) from which the applicant clearly knew about the existence and ownership of the unregistered mark. This relationship must be distinct from agency/representation relationships covered under Article 15(1).
5. Prior User's Objection: The legitimate prior user must actively raise an objection through formal channels, such as an opposition or invalidation action.
Proving Your Case: Evidence is King
Successfully invoking Article 15(2) hinges overwhelmingly on proving the "specific relationship" and the applicant's "knowledge" of the prior mark. Comprehensive evidence collection is critical:
Proving the Relationship: Gather contracts, invoices, shipping/receiving documents, emails, chat records (WeChat/QQ), meeting minutes, business cards, trade show participation proof, employment records, and company registration documents showing affiliations.
Proving Knowledge: Focus on evidence that directly links the relationship to awareness of the mark. This includes:
² Documents referencing the mark during the relationship (contracts with trademark clauses, emails discussing the brand, catalogs featuring the mark).
² Solid proof of the prior mark's use before the disputed application date, demonstrating it had gained a "certain influence" (sales contracts, invoices, ads, media coverage, awards). While not requiring fame, it must be known in its relevant field.
² Direct evidence the applicant encountered the mark (e.g., as a former employee, distributor, or partner).
² Evidence showing the disputed application was filed suspiciously close in time to the existence or termination of the relationship.
Proving Prior Use & Influence: Document the timing, scope, goods/services, promotional efforts, and sales data comprehensively to establish genuine use and the acquired "certain influence".
Key Considerations in Application
Knowledge Standard: "Knowledge" includes both actual awareness ("knew") and constructive knowledge ("should have known"). The existence of a specific relationship often creates a presumption of knowledge, especially if the mark had significant recognition.
Goods/Services Link: The provision applies even if the goods/services aren't identical, as long as they are deemed similar and confusion is likely.
Timely Action: Article 15(2) is primarily used in opposition proceedings (during the 3-month publication period after preliminary approval) or invalidation actions (within 5 years of registration). Prompt action upon discovering squatting is essential.
Strategic Combination: This article is frequently used alongside other provisions like Article 13 (well-known marks), Article 30 (conflict with prior registered marks), Article 32 (damage to prior rights/unfair registration), and Article 44(1) (fraudulent/unfair means) for a more robust legal challenge.
Success Story: How We Won Using Article 15(2)
Our firm successfully represented a foreign company opposing a trademark registered in bad faith by a Chinese entity. The facts were compelling: starting in 2023, the Chinese company (the Opposed Party) had actively sought to become the exclusive agent for our client's (the Opposer's) branded products in China. The parties met in person at a trade fair and even drafted a distribution agreement (though it remained unsigned). Crucially, the Opposed Party actually sold the Opposer's products in China. Despite this existing business relationship and clear awareness of the brand, the Opposed Party filed an application to register the Opposer's very mark in China.
We gathered extensive evidence documenting the business dealings, communications, and actual sales, proving the Opposed Party's undeniable knowledge of the mark. Based on this evidence and the clear application of Article 15(2), the China National Intellectual Property Administration (CNIPA) rejected the registration of the opposed trademark.
Conclusion: A Vital Tool Against Bad Faith
Article 15(2) serves as a precise and powerful legal instrument to combat trademark squatting that exploits specific business or personal relationships. Its effective use requires meticulously defining the "specific relationship" and proving the squatter's "knowledge" through concrete, well-organized evidence. Businesses must proactively safeguard their interests by enhancing trademark awareness, diligently managing and retaining records of all commercial interactions, and acting swiftly to enforce their rights through opposition or invalidation if targeted by bad-faith registrations. This collective vigilance is key to fostering a market environment built on respect for intellectual property and fair competition.
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