[Direct answer]In the Beijing area, after a trademark is preemptively registered by others, compensation can be claimed, but whether the claim will be supported depends on three aspects. First, whether the other party acted with malice: For example, if the other party has business transactions, contractual relationships, or other contact channels with the claimant, and still applies for registration knowing that the claimant has already been using the trademark, such circumstances can serve as important evidence of malice. Second, whether the other party has actually used the trademark and caused damage: If the other party only preemptively registered the trademark without using it, it will be more difficult to claim damages due to the lack of actual losses. However, if the other party has already used the trademark and caused confusion, market share loss, or damage to business reputation, the claim for compensation will have a more solid factual basis. Third, whether the evidence of damage is sufficient: It is necessary to provide materials such as declining sales, market surveys, brand promotion investments, media reports, and customer confusion situations. According to the Trademark Law of the People's Republic of China (amended in 2019), the Trademark Office shall reject a trademark registration application if it is made maliciously; if the trademark has already been registered, the claimant or interested party may request its invalidation within the statutory time limit. In addition, the claimant should initiate procedures promptly, including filing a trademark opposition, applying for invalidation, or requesting the cancellation of a registered trademark that has not been used for three consecutive years. It should be particularly noted that various procedures have their own statutory time limits, and the claimant should initiate them as soon as possible to avoid missing the opportunity.Intellectual property protection and corporate lawThe services in this column can assist in designing a rights protection plan.

1. Problem background and typical scenarios

Common scenarios of cybersquatting include: a brand gaining a certain degree of popularity and then being registered by others in the same or similar categories; a trademark not being registered but having gained popularity through prior use; a partner registering relevant logos after the end of the cooperation; the other party hoarding similar logos and demanding high prices from potential licensees; and the cybersquatter actually producing and selling products that cause confusion among consumers.Business and contract disputes in enterprisesThe agreement analysis in the column can be used for reference.

II. Key points of contention

Focus One: Evidence of the right of first use. Focus Two: The choice between revocation of a third-party right and declaration of invalidity. Focus Three: Determining whether the infringer acted in good faith or bad faith. Focus Four: The scope and calculation of compensation. Focus Five: The applicable conditions for punitive damages. Focus Six: The order and coordination of multiple legal proceedings.Special services and other casesThe program descriptions in the column can be used for reference. Focus 7: Whether there is a contractual relationship, contact channels, or other circumstances that can be inferred as malicious between the party who files a preemptive registration and the right holder.

III. Professional analysis by Henglue Lawyers

Taking a trademark infringement and unfair competition dispute handled by Attorney Liu Yuanyuan of our firm as an example: The plaintiff is a well-known paper industry enterprise that owns a registered trademark protected on similar products. The defendant, authorized by a third party to use relevant logos and appearance design patents, actually produces and sells similar products. The plaintiff sued claiming that the defendant imitated the well-known trademark and caused confusion with the packaging and decoration, and sought a high amount of compensation. After the defendant entrusted our firm with the case, our agency strategy focused on three aspects: First, reviewing whether the logos constitute similarity, which is a prerequisite for establishing infringement; Second, reviewing whether the defendant's use of the logos has a legitimate source, and defending based on the authorization documents and the scope of use; Third, responding specifically to the reasonableness of the compensation amount, comparing the claimed amount with the actual loss evidence. This approach is also applicable to preemptive protection against trademark squatting: First, confirming the rights basis and similarity; then defending or counterattacking based on the other party's legitimate source; finally, basing the compensation claim on verifiable loss evidence to avoid relying solely on high compensation demands.Intellectual property protection and corporate lawThe design of the rights protection plan in the column can be supplemented. This case is handled by Beijing Henglu Law Firm.Liu YuanyuanThe attorney (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 recommendations: 1. Immediately secure pre-existing evidence, including sales records, promotional materials, and media reports; 2. Verify the registration status of similar products and determine available legal procedures; 3. Monitor the statutory time limits for filing objections and invalidation declarations; 4. Assess losses and prepare evidence for compensation; 5. Simultaneously report the situation to the trademark authorities and market supervision departments through administrative channels; 6. Evaluate whether to re-sign licensing agreements with partners. Legal basis: Articles 32, 33, 34, 49, and 63 of the Trademark Law of the People's Republic of China (amended in 2019); Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trials of Civil Disputes over Trademarks; Specific applications shall be subject to the currently effective laws, regulations, and judicial rulings.

5. Henglue Law Firm's Reminder

Firstly, the choice of legal procedures is more important than the speed of protecting rights, and the time limits of various procedures cannot be missed. Secondly, the evidence of prior use needs to form a complete chain, and scattered materials have limited probative value. Thirdly, proving the other party's malice requires evidence supporting the channels of contact. Fourthly, the claim for compensation should be based on actual losses, and the application of punitive damages has strict conditions. Fifthly, administrative complaints and civil litigation can form a synergistic effect. Sixthly, trademark layout should be planned in advance to avoid the risk of prior use without registration.Business and contract disputes in enterprisesThe column can also provide ideas for protecting rights.

VI. Frequently Asked Questions

Q1: If a trademark has been preemptively registered by others, can I still get it back?

There's a chance, but it depends on the specific circumstances. If it's a malicious cybersquatting, for example, if the other party has cooperated with you or had other contact channels with you and still applied for registration knowing that the logo belongs to you, you can file a request for invalidation with the trademark department; if you have already used the trademark before and it has gained some popularity, you can also claim the right of prior use. In addition, for registered trademarks that have not been used for three consecutive years and have no actual use, you can file an application for revocation. It should be noted that there are clear time limits in the process, and if the other party has already hoarded a large number of registered trademarks, the cost of protecting your rights will significantly increase, so you should take action as soon as possible after discovering the cybersquatting.

Q2: What constitutes a malicious cybersquatting?

It is usually judged from two aspects: the contact channels and the subjective state. The contact channels include the existence of cooperation, negotiation, or agency relationships between the two parties, or the fact that the other party belongs to an operator in the same industry, from which it can be learned that the applicant has used the trademark before. The subjective state is reflected in the fact that the applicant knew or should have known about the ownership of the trademark when applying for it. In practice, common evidence includes correspondence emails and contracts, trademark search records, media reports and sales receipts showing the prior use of the trademark by others, and the situation where the other party has filed multiple applications for the same category of trademarks. It should be noted that the mere existence of industry popularity does not necessarily constitute malice. It also needs to be judged comprehensively based on the possibility of contact and the specific application behavior.

Q3: How much can I claim in compensation?

The amount of compensation depends on the actual losses and relevant statutory rules. It generally includes the losses caused by the infringement, the infringer's benefits obtained from the infringement, and the reasonable expenses paid by the right holder to stop the infringement; if the circumstances are serious, the court may determine the amount of compensation at more than one but not more than five times the amount determined above. The specific calculation usually refers to the right holder's loss of profits, the infringer's sales profits or the multiple of the license fees, as well as the proof of reasonable expenses. It should be noted that claiming high compensation requires corresponding evidence to support it, and it is often difficult to obtain full support simply by claiming based on the value of the trademark.

Q4: If the party who preemptively registers the trademark doesn't actually use it, can I still file a claim for compensation?

This is quite challenging. If the party who files for preemptive registration only engages in registration activities without actually putting the trademark into use in the market, it is usually difficult to prove that actual damage has been caused, and there is limited support for claims for compensation. In this case, a more effective strategy is to focus on rights protection: removing the preemptively registered trademark through invalidation or revocation procedures to restore one's normal registration and use rights. It should be noted that repeatedly demanding compensation on the grounds that no actual damage has been caused is both costly and time-consuming. In practice, it is recommended to first evaluate the cost and benefits of restoring rights before deciding whether to invest resources in protecting rights.Intellectual property protection and corporate lawThe column can also provide explanations of rights protection strategies.

Q5: What is the difference between revocation and declaration of invalidity?

The two procedures differ in their legal basis and applicable circumstances. The "Three-Year Revocation" procedure targets registered trademarks that have not been used commercially for three consecutive years, with the core reason being non-compliance with statutory requirements for use. The process simply involves submitting an application to the Trademark Office. The "Invalidation Declaration" procedure targets situations where the registration violates laws and regulations or was obtained through fraudulent means. In the case of malicious cybersquatting, it usually requires proof of specific illegal circumstances, based on the provisions of the Trademark Law regarding invalidation declarations. In practice, the choice depends on the specific circumstances of the cybersquatting: if the other party is merely hoarding the trademark without using it, the "Three-Year Revocation" procedure is more convenient; if there is evidence of malicious cybersquatting, initiating an invalidation declaration is more targeted. The two procedures can be used in combination to increase the success rate.

The above answer is based on the judicial practice in Beijing. The judicial interpretations in other provinces and cities may vary. For specific cases, please refer to the local rules and evidence situation.

If you are facing similar problems, it is recommended that you consult a professional lawyer as soon as possible with the relevant evidence materials 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 a dispute arises, please consult a practicing lawyer in time.