[Direct answer]In the Beijing area, trademark law can be used to claim that a trademark should not be registered and its use should be prohibited, and to hold the infringer or unlawful competitor accountable. Article 15 of the Trademark Law of the People's Republic of China (amended in 2019 and implemented on November 1, 2019) stipulates that if an agent or representative registers a trademark of the principal or the represented in their own name without authorization, and the principal or the represented raises an objection, the registration shall be denied and its use shall be prohibited. Article 19, paragraph 4 stipulates that trademark agencies, except for applying for trademark registration on behalf of their clients, shall not apply for registration of other trademarks.

1. Problem background and typical scenarios

Trademark agencies grasp their clients' trademark names, categories, and usage scenarios. However, some agencies take advantage of their position to preemptively register clients' trademarks, infringing on their rights. Typical scenarios include: agencies registering clients' proposed trademarks under their own names; preemptively applying for clients' unregistered but already used brands; leaking clients' trademark information to others for preemptive registration; demanding high transfer fees after clients raise objections or request invalidation; and continuing to use or dispose of relevant trademarks after the agency-client relationship terminates. When handling such disputes in Beijing, authorities review the agency-client relationship, actual trademark usage and popularity, and whether the preemptive registration violates the principle of honesty and good faith. In practice, parties often focus on outcomes while neglecting the process. In fact, whether the written documents are complete, whether communication records are preserved, and whether key deadlines are met often determine the ultimate resolution. Therefore, it is essential to organize materials early, clarify legal bases, and document favorable facts. During specific analysis, it is recommended to follow a timeline and correspond contractual documents, receipts, communication records, and relevant legal bases one by one, forming a clear resolution framework to facilitate the determination of the priority and feasibility of various claims.

II. Key points of contention

Firstly, whether there is an agency or representative relationship between the two parties, and whether the preemptive registration occurred during the agency period. Secondly, whether the client's trademark was used earlier and has certain influence or popularity. Thirdly, whether the preemptive registrant has obvious malice and is engaged in infringement or profit-making. Fourthly, whether to assert rights through opposition, invalidation declaration, or infringement litigation. Fifthly, how to calculate the losses and whether to claim compensation for infringement or unfair competition. Sixthly, how to prevent the trademark from being used after preemptive registration to confuse the market. Seventhly, how to apply when the written agreement conflicts with mandatory legal provisions, and how to determine the validity of the relevant clauses. Eighthly, whether the relevant deadlines have expired and whether it is possible to claim interruption or extension. Ninthly, whether the parties themselves have any faults and the impact of such faults on the final liability ratio. In addition, attention should also be paid to whether the form of evidence is legal, whether key facts can corroborate each other, and the differences in cost, time, and feasibility of different handling solutions. On this basis, the priority path to be pursued can be determined.

III. Professional analysis by Henglue Lawyers

The practical experience of Henglue Lawyers is that when handling cases of trademark squatting by agencies, the two core issues that need to be focused on are the agency relationship and malicious intent. Firstly, it is necessary to fix the evidence of the agency relationship, including the agency contract, communication records, and proof of agency fees, to prove that the squatter obtained the trademark information through the entrusted business. Secondly, it is essential to collect evidence of the client's prior use and promotion of the trademark, such as sales and advertising records, product images, media reports, and contracts, to demonstrate the prior rights and influence. Thirdly, based on the procedural stage, appropriate remedies should be selected: if the trademark is still in the review or announcement period, an objection should be raised; if it has already been registered, a request for invalidation or infringement claims should be made; or negotiation may be used to request a free transfer or cancellation. Fourthly, when claiming compensation for infringement or unfair competition, evidence of losses or the squatter's profits should be provided, and statutory compensation may be requested if necessary. Fifthly, to prevent market confusion during the dispute, simultaneous claims for cessation of use and removal of effects can be made. Sixthly, in the future, it is necessary to choose a standardized agency and include confidentiality and intellectual property ownership clauses in the contract. Lawyers can assist in organizing the evidence chain, selecting appropriate procedures, and representing clients in objection, invalidation, and litigation proceedings.
This case is handled by Beijing Henglu Law FirmLiu YuanyuanThe lawyer (practice certificate number: 11101202011201094, subject to the certificate issued by the judicial administrative organ) acts as the agent.

IV. Practical suggestions and legal basis

Action list: First, establish a fixed agency relationship and provide evidence of prior use of the trademark; Second, select opposition, invalidation, or infringement litigation according to the stage; Third, collect evidence of losses or the infringer's profits; Fourth, demand the cessation of use and removal of effects to prevent confusion; Fifth, pay attention to the statutory time limits for opposition and invalidation declarations; Sixth, agree on confidentiality and ownership clauses when signing a contract with the agency. For matters involving trademark and intellectual property protection, you can refer to the following guidelines for reference.Intellectual property protection and corporate lawFor cases involving agency contracts and commercial disputes, you may refer to the following materials for reference.Business and contract disputes in enterprisesLegal basis: Articles 15, 19, 32, and 45 of the Trademark Law of the People's Republic of China (amended in 2019 and implemented on November 1, 2019). The specific application shall be subject to the currently effective laws, regulations, and judicial rulings.

5. Henglu Law Firm's Advice

Firstly, the evidence of the agency relationship is key to claiming that the agency registered the trademark preemptively. Secondly, the evidence of prior use and popularity determines the success or failure of protecting rights. Thirdly, there are statutory time limits for raising objections and requesting invalidation, so it's essential to act promptly. Fourthly, it's possible to simultaneously claim for cessation of use and removal of the adverse effects. Fifthly, when selecting an agency, it's necessary to stipulate confidentiality and ownership clauses. For matters involving trademark preemption and intellectual property protection, you can seek assistance through legal channels.Intellectual property protection and corporate lawThe service is supported, and cases involving agency contracts and commercial disputes can be combined togetherBusiness and contract disputes in enterprisesFor reference, you can check the sections related to the cross-border layout of brandsFinancial capital and cross-border transactions involving foreign entitiesColumn.

VI. Frequently Asked Questions

Q1: Is it illegal for an agency to preemptively register a client's trademark?

This is illegal. According to Article 15 of the Trademark Law of the People's Republic of China, if an agent or representative registers a trademark of the principal or the represented party in their own name without authorization, the registration will be rejected and the use will be prohibited if the principal or the represented party raises an objection; Article 19, Paragraph 4 also stipulates that trademark agencies shall not apply for registration of other trademarks except for agency services. Due to differences in facts and evidence, the conclusions of similar issues in different cases may vary. Parties should pay attention to the relevant statutory periods, submit evidence materials in a timely and complete manner, keep written records of key communications and reminders, and choose appropriate paths and assert claims in a timely manner under the guidance of professional lawyers when necessary. It is recommended to determine the specific handling methods after consulting with complete materials.

Q2: How to protect your rights if your trademark has been preemptively registered by others?

The path should be chosen according to the stage: if the trademark is still in the announcement period, an objection can be raised; if it has been approved for registration, a request for invalidation or infringement claims can be made; or negotiation for a free transfer or cancellation can also be attempted. During the protection process, emphasis should be placed on proving the agency relationship, the prior use of the trademark, and the malicious intent of the squatter, and timely attention should be paid to statutory time limits. Due to differences in facts and evidence in different cases, the conclusions may vary. Parties should pay attention to relevant statutory periods, submit evidence materials in a timely and complete manner, keep written records of key communications and reminders, and, when necessary, choose an appropriate path under the guidance of professional lawyers and assert their rights in a timely manner. It is recommended to consult with complete materials to determine the specific handling approach.

Q3: How can we prove that the agency registered the trademark preemptively?

It can be proven through a power of attorney, an agency agreement, agency fee receipts, communication records, etc. that there is an agency relationship between the two parties, and that the cybersquatter obtained the trademark information based on this business relationship. At the same time, by providing sales, advertising, contracts, and reports, etc., it can prove the prior use and influence of the trademark, forming a complete chain of evidence. Due to differences in facts and evidence in different cases, the conclusions may vary. The parties should pay attention to the relevant statutory periods, submit evidence materials in a timely and complete manner, keep written records of key communications and reminders, and, if necessary, choose appropriate paths and assert claims under the guidance of professional lawyers. It is recommended to determine the specific handling methods after consulting with complete materials.

Q4: Can I request compensation for the losses?

Yes. If the act of preemptive registration constitutes trademark infringement or unfair competition, the right holder may claim to stop the infringement, eliminate the impact, and compensate for the losses; the losses can be determined according to the actual losses, the profits gained from the infringement, or the statutory compensation. The specific amount needs to be combined with the evidence and circumstances. If the malice is obvious and the circumstances are serious, the compensation determination may be different. Due to the differences in facts and evidence in different cases, the conclusions may vary. The parties should pay attention to the relevant statutory periods, submit evidence materials in a timely and complete manner, keep written records of key communications and reminders, and, if necessary, choose appropriate paths and claim rights under the guidance of professional lawyers. It is recommended to determine the specific handling methods after consulting with complete materials.

Q5: How to prevent being preemptively registered by an agency?

It is necessary to apply for core trademarks as early as possible to avoid disclosing a large amount of brand information before registration. Choose a standardized and qualified agency, and stipulate confidentiality obligations, ownership of materials, and breach of contract liability in the contract. Regularly monitor trademark announcements, raise objections in a timely manner if similar preemptive registrations are found, and establish a trademark management mechanism that emphasizes both application and monitoring. Due to differences in facts and evidence in different cases, the conclusions may vary. Parties should pay attention to relevant statutory periods, submit evidence materials in a timely and complete manner, keep written records of key communications and reminders, and choose appropriate paths under the guidance of professional lawyers when necessary. It is recommended to determine the specific handling methods after consulting with complete materials.

The above Q&A is mainly based on the judicial practice in the Beijing area. There may be differences in the adjudication guidelines in different regions. It is recommended to consult a professional lawyer based on the specific circumstances of the case.

If you are facing similar problems, it is recommended that you consult a professional lawyer as soon as possible with the evidence materials, so as to avoid missing the statutory time limit. →Intellectual property protection legal services·Attorney Liu Yuanyuan·Beijing Henglu Law Firm

Disclaimer: This article is compiled based on the current effective laws and regulations and public adjudication rules, and is for general reference only. It does not constitute a formal legal opinion on specific cases. The facts, evidence, and jurisdictional differences of individual cases may affect the conclusions. If you encounter disputes, please consult a practicing lawyer in time.