In China, companies and individuals may file a trademark opposition to contest a preliminarily approved trademark registration.
Once the trademark is preliminarily approved, it will be publicly announced in the trademark gazette. During the preliminary approval period, companies and individuals may file an objection application. If successful, the trademark will not be registered. For companies, the trademark opposition can be utilised to stop malicious trademark registrations of its own trademarks. Below, we outline the main aspects of trademark opposition in a Q&A.
1. What is trademark opposition under the Trademark Law of the People’s Republic of China (‘Trademark Law’)?
According to the Article 33 of the Trademark Law, trademark opposition refers to the procedure in which any natural person, legal person, or other organization or institution may file an opposition application, within a statutory period, against a designated trademark application which has been preliminary approved and published on the trademark gazette by the Chinese Trademark Office.
The stipulated statutory period is three calendar months, starting from the day after the preliminary publication in the trademark gazette.
2. Can the same trademark opposition be filed against more than one trademark applications?
Oppositions filled against trademark applications with different application numbers shall be filed separately. However, opposition filed against a trademark application with more than one class may be filed jointly by specifying the classes or separately.
3. What are the supporting documents required to file?
- Trademark opposition application form
- Identification document of the Opponent (in case of foreign legal person, the business certificate issued by the local authority is generally required)
- If the Opponent entrusts a trademark agent to file the Trademark Opposition, then a Power of Attorney shall be signed/sealed by the entrusting party
- Factual evidence and legal grounds
4. What type of evidence may support an opposition?
Where the Opponent has not yet registered its trademark in Countries (Regions) outside of China upon the trademark opposition, the Opponent may utilise the following materials to demonstrate its prior-right of the disputed mark:
- import/export products bearing the disputed mark in or from China such as customs clearance receipts, service agreement signed with import/export agent, orders.
- If the products are manufactured in China for sales abroad – the manufacturing contract, invoices, payment bank confirmation slips.
- If the products/services are sold/rendered in the Chinese territories – the sales contracts, purchase orders and sales invoices
- If the products/services are promoted in China – the promotional materials published by relevant media, including newspaper, magazines, social media.
Where the Opponent has registered its trademark in Countries (Regions) outside of China upon the trademark opposition, the Opponent may utilise following materials to demonstrate its prior-right of the disputed mark:
- Trademark registration application receipt or Trademark registration certificate issued by the relevant Trademark Office
Important notes for evidence collection and submission:
- The mark used on the products/services shall be clearly visible
- Date on all materials shall be prior to the filing date of the opposed trademark application
- Materials from third parties is preferred, while materials from the Opponent (brochure, websites etc.) will bear less weight and will be deemed as auxiliary material for the examiner’s reference only
5. What is the timeline for a trademark opposition?
According to the article 35 of the “Trademark Law”:
“In the event that an objection is raised against a trademark published after preliminary examination, the Trademark Office shall consider the facts and grounds submitted by both the dissenting party and the person challenged and shall decide on whether the registration is allowed within 12 months upon the expiration of announcement after investigation and verification and notify the dissenting party and the person challenged in writing.”
“Where the Trademark Office decides to approve the registration, it shall grant a certificate of trademark registration to the person challenged and publish the same. In case the dissenting party is dissatisfied, it may request to the Trademark Review and Adjudication Board for nullification of the registered trademark according to Article 44 and Article 45 hereof.”
“Where the Trademark Office decides not to approve the registration and the person challenged is dissatisfied, it may apply to the Trademark Review and Adjudication Board for review within 15 days upon receipt of the notice, which shall, with 12 months upon receipt of the notice, make a ruling for the review and notify the dissenting party and the person challenged in writing. In the event that the person challenged is still dissatisfied with the ruling of such review, it may file a lawsuit before the People’s Court within 30 days upon receipt of the notice. The People’s Court shall notify the dissenting party of participation in the proceedings as a third party.”
Under ordinary procedures, a trademark opposition may take 9 to 12 months. The procedures may be further prolonged if the case proceeds to litigation.
