Recently, we had a client from the U.S. asking us a question regarding the trademark opposition procedure in China, which seemed to be weird to them that the China Trademark Office (hereinafter referred as the CTMO) still approved the registration of the opposed mark even there was NO response from the opposed party during the opposition period.
It’s pity to hear that our client couldn’t be able to prevent the trademark from being registered in China by his competitor. But we have to admit that this is something different that really exists under the Chinese trademark practice even though it seemed to be strange comparing with the foreign jurisdictions.
From our perspective, it appears that there is no obligation for the CTMO to wait for the opposed party’s response to the opposition notice according to Article 35 of the Chinese Trademark Law. No matter the response is received or not, the CTMO would make the decision after performing the investigation within 12 months after the publication period.
During the opposition procedure, it is really important for us to carefully choose the strategy for opposing the published mark. In our client’s case, they chose the ground of “widely used and obtained substantial influence” against the published mark, which we considered is not a good choice. It is because China is observing the first-to-file system and the examiner would be very strict in examining evidence for widely use and with substantial influence.
Upon a comprehensive analysis of the evidence provided by our client, we believe that the successful rate of the opposition would be much higher if they choose the reason of “agent or representative relationship”, as the opposed party is one of the distributors of our client.
There comes to the remedy for the opposing party if the decision is not favorable. According to Article 35 of the Chinese Trademark Law, if the opposing party is not satisfied with the decision from the CTMO, he/she may file a request for invalidation with the Trademark Review and Adjudication Board (the TRAB). Further, the opponent could file an appeal before the Beijing IP court if he/she is not satisfied with the decision from the TRAB.
Last but not least, we have included here below the related legal basis, Article 35 of the Chinese Trademark Law for your reference.
Where an opposition is filed against a trademark application published after a preliminary examination, the Trademark Office shall hear the facts and grounds submitted by the opposing party as well as the opposed, shall make a decision on whether or not to approve the application for registration within the twelve months from the date of publication after investigation and verification, and shall notify the opposing party and the opposed of its decision, in writing. If an extension is needed, upon the approval of the department of industry and commerce administration under the State Council, the time limit can be extended a further three months.
If the Trademark Office makes a decision to approve an application for registration, a certificate of registration shall be issued, and the mark shall be published. If the opposing party is dissatisfied with the decision, it may file a request for invalidation of the registered trademark according to the provisions of Article 44 or Article 45 of this Law to the Trademark Review and Adjudication Board.