In today's fiercely competitive business world, trademarks, as intangible assets of enterprises, carry the brand image and market value of the enterprise. However, the phenomenon of malicious trademark registration is not uncommon, and the registration of trademarks by specific related parties is a headache for many enterprises.

This behavior not only disrupts market order, but also seriously damages the legitimate rights and interests of enterprises. Today, let's delve into the relevant legal basis, judicial judgment standards, and response strategies for specific related parties to illegally register trademarks. Combining cases, we present a practical "guide to safeguarding rights" for everyone.

1、 Legal basis for specific related party registration

Focus on Article 15 (2) of the Trademark Law

The core legal basis for specific related parties to register trademarks is Article 15 of the Trademark Law, which is divided into two paragraphs to jointly regulate the registration behavior between specific related parties.

The first paragraph mainly focuses on the specific relationship between agents and representatives. The second paragraph is the focus of this discussion, which regulates the act of registering someone else's trademark knowingly due to contracts, business dealings, or other relationships, except for agency and representative relationships. It can be clearly seen that the second paragraph is a supplement to the first paragraph, greatly expanding the scope of "specific relationships". In actual case handling, we can flexibly choose to apply corresponding terms based on the specific relationship between the two parties in the case.

The application of Article 15 (2) of the Trademark Law requires two core elements: prior use and specific relationship. This time we will focus on the determination and application of "specific relationships". According to the Trademark Examination and Adjudication Standards, common specific relationships include the following two types:

1. Contractual business relationships: such as commercial transactions, commissioned processing, franchising, investment, etc. all belong to this category;

2. Other relationships: such as kinship, affiliation, etc.

In addition, the "Guidelines for the Trial of Administrative Cases of Trademark Authorization and Confirmation" issued by the Beijing High Court further clarify that, except for agency and representative relationships, other relationships that can know someone else's trademark and should be actively avoided belong to the "other relationships" stipulated in Article 15 (2). That is to say, as long as someone knowingly registers a trademark through a contract, business transaction, or other relationship, they are within the scope of this clause.

2、 Case analysis

Judicial judgment criteria for specific relationships

In practice, the determination of specific relationships can be divided into two situations: "direct business relationship" and "indirect business relationship". Among them, cases involving indirect business transactions are more complex and require higher levels of evidence. Below, we will analyze in detail with specific cases.

（1） Direct business relationship: easy to retain evidence and low difficulty in judgment

In cases of direct business transactions, due to direct communication between both parties, evidence is usually easier to retain and the criteria for judgment are relatively simple. Here are two typical cases to share with you:

Example 1: Registration under Labor Relations

The respondent had previously held a sales position in the applicant's company and, despite knowing the existence of the applicant's disputed trademark, still engaged in unauthorized registration.

In terms of key evidence, the applicant submitted labor arbitration mediation documents, internal company emails, etc., which directly prove the existence of a labor relationship between the two parties. The final result is that the reviewing authority determines that the two parties constitute a specific relationship as stipulated in Article 15 (2) of the Trademark Law, and rules to declare the disputed trademark invalid.

Example 2: Pre registration in Cooperation Negotiations

The applicant claims that the legal representative of the respondent had pretended to negotiate cooperation, and during the negotiation, both parties communicated about the disputed trademark related information. Moreover, both parties are practitioners in the same region, and the respondent is aware of the trademark previously used by the applicant.

The key evidence includes the WeChat chat records and phone recordings submitted by the applicant, which directly prove the existence of the business relationship. The reviewing authority determines that the respondent was aware of the applicant's trademark and used a specific relationship to register it, and based on Article 15 (2) of the Trademark Law, the disputed trademark is declared invalid.

Summary: In cases of direct business dealings, the prior user only needs to provide reasonable evidence to prove the existence of business dealings or other commercial relationships between the two parties, and combined with the prior use evidence, there is a high probability that it can be determined to constitute a specific related party's unauthorized registration. The requirements for evidence in such cases are relatively simple, and the difficulty of presenting evidence is relatively low.

（2） Indirect business relationship: It is necessary to establish relevant evidence and make a comprehensive judgment

In cases of indirect business dealings, both parties usually establish connections through third parties, fourth parties, and other entities, making the case more complex and requiring comprehensive evidence and even related case information for judgment. Here are two typical cases to share with you:

Example 3: Pre registration under the transmission of affiliated companies

The applicant (prior trademark user) and its parent company have indirect business dealings with the respondent (registrant) and its affiliated companies. Specifically, the applicant's parent company had a distribution relationship with the respondent's affiliated companies, and the respondent and its affiliated companies registered multiple trademarks around the applicant's trade name and brand.

In terms of key evidence, the applicant submitted proof of prior application for the trademark, proof of association between the respondent and its affiliated companies, comparison materials with similar trademark logos, proof of overlapping business scope (including lubricant sales), evidence of plagiarism by the respondent's affiliated companies from other brands, and evidence of repeated registration of the applicant's series of trademarks by the respondent.

The key point of the trial is that the reviewing authority is not limited to the evidence of a single case, but rather connects the commonalities of the eight series of cases and comprehensively considers the following factors: ① the applicant's trademark application was filed earlier; ② The respondent has a related relationship with the affiliated company; ③ Both parties have similar trademarks and overlapping business scopes; ④ The respondent has engaged in repeated registration behavior with obvious subjective malice.

The final result is that the reviewing authority determines that the respondent and its affiliated companies have a competitive relationship with the applicant in the same industry, constituting a specific relationship as stipulated in Article 15 (2) of the Trademark Law. It is presumed that they are aware of the applicant's prior trademark, and the final ruling declares all 8 disputed trademarks invalid.

Example 4 Indirect registration promoted by multiple programs

The applicant (prior trademark user) and its legal representative have indirect connections with the respondent (registrant), the original trademark applicant, and the respondent's company salesperson. The applicant claims that the respondent was aware of their unregistered trademark and registered it in advance.

In terms of key evidence, the case has advanced to the first instance stage of administrative litigation, and the applicant has submitted key evidence - email correspondence records between the applicant's legal representative and the respondent's company salesperson, which mentioned the disputed trademark in the email; Moreover, the respondent admitted in court that they had engaged in commercial negotiations with the applicant (without forming a formal cooperation).

The trial process is as follows:

1. Invalidation stage: The examiner considers that the applicant's evidence is insufficient and maintains the disputed trademark registration.

2. Administrative litigation first instance: The court, based on email evidence and the respondent's self admission, determines that the two parties constitute the relationship stipulated in Article 15 (2) of the Trademark Law and rules that the disputed trademark is invalid.

3. Administrative litigation second instance: The court further confirms that the commercial negotiation occurred before the disputed trademark application date, rejects the respondent's appeal, and upholds the original judgment; Finally, the State Intellectual Property Office re ruled and declared the disputed trademark invalid.

Summary: If the objection or invalidation procedure fails, we can try to advance the administrative litigation procedure. The court will consider various factors more comprehensively during the trial, and may uncover key evidence during the litigation stage, providing new paths for safeguarding rights. For core trademarks, it is recommended to continue with the subsequent procedures after the initial procedures have failed, without missing any detailed evidence.

3、 Combination of legal provisions applicable

Response when specific relationship claims are not recognized

If the existing evidence is insufficient to support the determination of a specific relationship, we can apply Article 15 (2) of the Trademark Law in combination with other legal provisions. At this point, although the evidence regarding a specific relationship cannot be directly established, it can help the examiner form a mental evidence, which is beneficial for the determination of other legal provisions. Below are a few examples of combination applications shared with everyone.

Example 5 Article 15, Paragraph 2+Article 30

The applicant claims that the respondent knowingly registered the prior trademark before terminating the business cooperation between the two parties. The applicant also claims Article 30 of the Trademark Law (prior rights), but the designated goods of the cited trademark and the disputed trademark do not constitute similar goods in the traditional sense.

The key point of the trial is that the examiner comprehensively considered two factors: ① the two parties had a business cooperation relationship and belonged to the same country, which presumed that the respondent was aware of the applicant's trademark; ② The designated goods by both parties have a high degree of correlation in actual production and sales, constituting similar goods.

As a result, the examiner believes that the coexistence of the disputed trademark and the cited trademark can easily lead to confusion and misidentification, and based on Article 30 of the Trademark Law, the disputed trademark is declared invalid.

Example 6 Article 15 (2)+Article 44 (1)

The applicant and the respondent have business addresses adjacent to each other, and the applicant suspects that the respondent conspired with their former employees to register the trademark, but the evidence is insufficient.

In terms of key evidence, the applicant submitted preliminary evidence of the relationship between the two parties, as well as malicious evidence from the respondent - six trademarks were registered around the applicant's trademark in a short period of time, and a lawyer's letter was sent to the applicant (inferring that they were aware of the applicant's trademark).

The key point of the trial is that the examiner comprehensively considers the correlation between the two parties and the malicious registration behavior of the respondent, and believes that they have the intention to seek illegal benefits by using other well-known brands.

As a result, according to Article 44 (1) of the Trademark Law (obtaining registration by other improper means), the disputed trademark is declared invalid.

Summary: Even if there is insufficient evidence of a specific relationship, we should still actively provide evidence. Relevant evidence can help the examiner infer that the respondent is aware of the applicant's prior trademark, forming favorable evidence and laying the foundation for the application of other legal provisions.

4、 Summary of coping strategies

Comprehensively safeguard trademark rights and interests

Based on the above case, the following summarizes the core coping strategies for specific related parties to register trademarks:

01 Advance Layout, Source Avoidance

It is recommended that enterprises (especially small and medium-sized enterprises, startups) apply for trademarks as early as possible and prepare their intellectual property layout in advance. In business activities, it is important to keep evidence such as commercial transactions and transaction vouchers for future reference.

02 Comprehensive evidence collection, details are king

When a trademark is registered by a specific related party and a claim is made under Article 15 (2) of the Trademark Law, comprehensive evidence should be collected as much as possible, such as contracts, emails, chat records, labor relationship certificates, etc. Even if individual evidence is insufficient, comprehensive evidence from the entire case may still prove the existence of a specific relationship.

03 Rule combination, flexible and applicable

If the specific relationship claim is not recognized, it can be combined with Article 30 (similar trademarks, similar goods) and Article 44 (1) (malicious registration) of the Trademark Law for application. Actively submit specific relationship related evidence to assist the examiner in forming evidence.

04 Multi program promotion, multiple means of evidence collection

In terms of procedure: After the failure of objection and invalidation procedures, it is recommended to proceed with subsequent procedures such as administrative litigation for core trademarks.

In terms of evidence collection: When the existing evidence is insufficient, one can try conducting on-site investigations (such as visiting registered factories, inspecting production materials, etc.), or communicating with the registered person (phone, WeChat, etc.) to explore the other party's loopholes and obtain favorable evidence.

I hope the above content can help everyone deal with trademark registration by specific related parties more calmly and effectively safeguard their legitimate rights and interests. On the road of intellectual property protection, let us work together to create a fair and orderly market environment!