Trademark Opposition under China’s 2019 Trademark Law: An Earliest Action Needed to Tackle Bad Faith Trademark Squatters in China
Attorney Le Quang Vinh – Bross & Partners
Only 11 months is the average time for you to obtain a certificate of trademark registration issued by the China National Intellectual Property Administration (CNIPA). Hence, filing an opposition (usually on/after 7th month) against a preliminarily approved trademark is the earliest legal action helping early prevent your brand names squatted in China. Bross & Partners outlines trademark opposition procedures under China’s 2019 Trademark Law.
Procedure for Trademark Opposition at CNIPA
China’s 2019 Trademark Law permits third parties to object to applied-for trademarks (national trademarks) which are directly filed with CNIPA, within 3 months from the date of the applied-for trademark published by CNIPA. It is worth noting that unlike Vietnam, CNIPA merely preliminarily approves and announces which applied-for trademarks do not violate absolute grounds and relative grounds.
For international trademarks (filed through the Madrid system designating China), there are 3 differences in comparison with national trademarks:
Difference in published gazette: international trademarks are only published in WIPO’s weekly gazette (WIPO Madrid Monitor), while national trademarks are announced in CNIPA’s trademark gazette in Chinese (注册证明公示系统 (cnipa.gov.cn)
Difference in terms of order for examination: published international trademarks may be opposed prior to CNIPA’s substantive examination while national trademarks will not be published until they are preliminarily approved.
Difference in due date for opposition: deadline for opposing international trademarks is 3 months from the first day of the month immediately following the month of publication by WIPO while deadline for opposing national trademarks is fixed at 3 months from the date of publication by CNIPA.
With respect to the standing, only the owner of a prior right or a third party with related interests, if a contested trademark has been published, has the right to file an opposition against such contested trademark, if one of the legal grounds stated in Article 13 (para. 2 & 3), Article 15, Article 16 (para. 1), Article 31 is considered violations. However, any third party may file an opposition if he or she believes that the contested trademark violates Article 4, Article 10, Article 11, Article 12, or Article 19 (para. 4).
The objector shall pay an official fee of 450RMB if an opposition is submitted online, or 500RMB if filed in paper applicable for one contested trademark per class containing up to 10 items of goods or services (roughly 1,490,000VND or 1,650,000VND).
Where no opposition is filed on time, CNIPA will officially approve and grant a certificate of trademark registration (e-certificate only). At the time, the applicant for published trademark becomes the owner of such trademark and has the exclusive right to use the trademark in Chinese territory. A trademark registration certificate is valid for 10 years from the date of approval of registration. However, legal protection of a registered trademark only arises throughout the territory of mainland China, not including Hong Kong, Macau and Taiwan.
Based on the review of the evidence, arguments, and legal ground submitted by both the objector and the objectee, CNIPA shall, within 12 months (18 months in a complicated case, issue a decision on approval, partial refusal, or total refusal.
If the objector is dissatisfied with CNIPA’s decision, he or she can proceed to invalidate the contested trademark upon registration. Where the objectee does not agree with CNIPA, he or she can file a review, and bring the case to the first-instance court (Beijing IP Court) and the second-instance court (Beijing High People’s Court)
Legal Grounds in support of a Trademark Opposition
In general, marks seeking for registration as trademarks in China must simultaneously comply with 5 principles:
(1) they are not prohibited from registration and use
(2) they have distinctive characters
(3) they do not conflict with the other’s prior rights
(4) they do not fall into the cases of bad faith filing, including registration with no intention of use or filing with malicious nature
(5) they do not infringe upon other’s earlier registered trademark, or other’s earlier unregistered trademark that has a certain influence, or other’s trademark that is recognized as well-known trademark. The above principles are concretized into absolute grounds and relative grounds.
To win an opposition, the objector must accurately cite absolute grounds and/or relative grounds along with evidence and arguments proving that the contested trademark violates the cited legal ground.
Article 4: A trademark is filed in bad faith and is not for the purpose of use.
Article 10: A trademark is contrary to provisions concerning signs prohibited from registration.
Article 11: A trademark lacks distinctive features.
Article 12: A three-dimensional trademark has functionality and indistinctive character.
Article 19 (para. 4): A registered trademark in the name of an industrial property agency but registered for goods or services other than legal representation services in class 45 under the Nice classification.
Article 44: Trademarks obtained by fraud or other improper means.
Article 13: A trademark infringes upon famous trademark.
Article 15: A trademark of another person with whom the applicant has an agent, representative or other business relationship.
Article 16: A trademark infringes on other’s geographical indication.
Article 30 and Article 31: A trademark infringes upon an earlier registered trademark or earlier filed trademark.
Article 32 (para. 1): a trademark infringes upon other’s prior rights other than trademark right
Article 32 (para. 2): A trademark is identical with or similar to another person’s unregistered trademark that has been used and has a certain influence.
Bross & Partners, an intellectual property company ranked Tier 1 in 3 consecutive years (2020-2022) by Legal 500 Asia Pacific, has rich experience in registering and resolving IP disputes specifically trademarks in China.
Please contact Email: Vinh@bross.vn; Mobile: 0903 287 057; Zalo: +84903287057; Skype: vinh.bross; Wechat: Vinhbross2603.