CHINA OPPOSITION
grounds for trademark opposition. The draft provides that the possible legal grounds for an opposition are limited to the following: protection of well-known marks, liabilities of
trademark agent or representative,
geographical indications, prior trademark rights, trademark application for identical or
similar marks filed on the same day,
protection based on other prior rights, and registration in bad faith.
Under the current system the CTMO will send a copy of the application for opposition to the applicant, requesting a reply within 30 days. Nevertheless, failure to reply does not affect the adjudication of the trademark.
Any party dissatisfied with the decision on the opposition may, within 15 days of notification of receipt, file an application for review with the Trademark Review and Examination Board (TRAB). During the procedure in front of TRAB, unlike with CTMO, the opponent might be requested to file a counter-reply to the applicant’s reply. Te applicant may then reply to the counter-reply. Te procedure in front of TRAB could be longer, more complex and more expensive than the one in front of CTMO.
In the current system oppositions are examined by CTMO in the first instance and then by TRAB in the second instance. Moreover, any interested party who is not satisfied with the decision issued by TRAB may file an administrative litigation to the People’s Court in Beijing within 30 days of the date of receipt of the notice. The draft provides that oppositions will be examined by TRAB, thus eliminating one instance. The People’s Court will still examine appeals.
A new provision in the draft specifies that where an opposition is raised to a trademark on the grounds of non-compliance with the provision on well-known marks, liabilities of the trademark agent or representative, and registration in bad faith, the prior trademark owner may request TRAB to transfer the exclusive right to the opponent.
Practical tips
CTMO has a pretty low acceptance rate of oppositions. Our personal estimate is that 80 percent of oppositions are rejected by CTMO and at least 50 percent of reviews on opposition are rejected by TRAB. Unfortunately, CTMO does not publish any statistics, so this is merely our estimation. This unfavourable approach should be taken into account in shaping an opposition strategy.
“IT IS HIGHLY
RECOMMENDED TO COLLECT EVIDENCE SUCH AS ADVERTISING IN CHINA (AND ABROAD), INVOICES AND
DOCUMENTS PROVING SALES IN CHINA (AND ABROAD), AND AWARDS AND PRIZES.”
A trademark published for opposition has been already examined by CTMO, as explained above. The opposition then should either highlight a wrong assessment done by the examiner in evaluating facts and grounds already in his possession, or should introduce new facts and grounds that he was unaware of.
Reputation
The higher the reputation, the wider scope of protection granted. To this extent it is highly recommended to collect evidence such as advertising in China (and abroad), invoices and documents proving sales in China (and abroad), awards and prizes won by products bearing the mark, etc.
Bad faith
The opponent should be able to provide CTMO with evidence of the applicant’s bad faith during an opposition procedure.
Warning letter and anti-counterfeiting actions
If the registration of a certain mark is regarded as a potential risk and an opposition is filed, the use of such mark should be regarded as risky as well. To this extent, data collected from the monitoring of the CTMO’s Gazette should be provided by those who take care of anti-counterfeiting, in order to have proper actions executed.
Squatters We
have observed that in many cases
oppositions are instituted against trademarks that are obviously squatted, filed in order to be sold to the owner of the legitimate right. Given the fact that prior use of a trademark
56 World Intellectual Property Review September/October 2012
Zhang Xu has worked in the IP rights industry since 1997 and co-founded HFG in 2003. Xu provides in-depth legal opinion and risk assessment, and has extensive experience in handling trademark infringement, anti-counterfeiting, anti- trust and unfair competition matters.
provides only limited rights, and the negative attitude of CTMO, negotiation in order to obtain withdrawal of transfer may be sensible.
the application or
Expand registration portfolio Despite the fact that it is possible to cancel a mark after three years of non-use, it is advisable to enlarge the trademark portfolio until relevant classes/subclasses are covered.
Zhang Xu is a partner at HFG. He can be contacted at:
xzhang@hfgip.com
Fabio Giacopello is a partner at HFG. He can be contacted at:
giacopello@hfgip.com
Fabio Giacopello joined HFG in September 2010. He is a lawyer with vast experience in IP rights protection in China. A member of INTA’s Anti-Counterfeiting Committee (China Sub-Committee), he is recommended by Global Law Expert for patents in China and is an expert on the IPR-SME HelpDesk, funded by the EU Commission.
www.worldipreview.com
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