On August 30, 2013, the Amendment to the Trademark Law was passed by the standing committee of the National People’s Congress and will become effective on May 1. 2014.
The Amendment made many changes on the trademark system, including the addition of sound marks, multiple class, e-filing, strengthened protection against piracy, increased fines, compensation and statutory damage against infringement, strengthened protection of well-known trademark, etc. Among the changes, amendments to the opposition system are significant and worth to be much concerned by the applicants.
- Restriction on opponent and grounds of the opposition
According the current Trademark Law, any person may file an opposition against the published trademark with any reason. So in practice lots of oppositions were filed in bad faith for improper benefits, which brought damages to the right owner’s interest, as well as waste the resources of administrative and judicial authorities.
In the amended trademark law, the prior right holders or interested parties may file oppositions according to provisions of Article 13.2, 13.3, Article 15, Article 16.1, Article 30, Article 31, Article 32(opposition based on comparative grounds) or any person may file oppositions according to provisions of Article 10, Article 11, Article 12(opposition based on absolute grounds), which limits and distinguishes the qualification of opponents and the applicable legal reasons for the opposition.
Thus, in future the opponent with comparative grounds shall provide identity materials, and documents to prove its being prior right holders or interested parties, and also state facts and grounds according to corresponding articles. These changes are hoped to reduce the number of bad faith oppositions, and help the involved parties to prepare more targeted opposition or response to the opposition.
- Simplified opposition procedures.
According to the current system, where any party is dissatisfied with the decision of the Trademark Office, he or it may apply for a review to the Trademark Review and Adjudication Board (TRAB). And where any party is dissatisfied with the ruling of the TRAB, he or it may institute legal proceedings with the people’s court.
The amended trademark law stipulates that, if the opposition fails at the Trademark Office level, the mark would immediately proceed to registration, and the opponent is not entitled to appeal to the TRAB but allowed to invalidate the mark to the TRAB after its registration according to Article 44, 45. If the opposition wins at the Trademark Office level, the opposed party may still appeal to the TRAB. If the TRAB decides the opposition is not justified, the mark would proceed to registration directly, and the opponent is not entitled to institute a legal proceeding with the court. If the TRAB also decides the opposition is justified, the opposed party may bring the case to the court.
Briefly speaking, for a unfavorable decision, the opposed party has two relief procedures, the appeal to the TRAB and the lawsuit to the court, but the opponent only has on procedure of opposition.
Therefore after the new Trademark Law taking effective, the opponent must make full use of the opposition by stating the grounds and providing the evidences to the best of its ability, in order to defeat the mark in the opposition procedure rather than in the later invalidation procedure.
- Shortened time limit
Currently, the opposition procedure needs more than 3 years to be finished. According to the new Trademark Law, the Trademark Office shall make a ruling of the opposition within 12 months from the publication date of the mark, and a period of 6 months is available only for special cases. For the appeal filed by the opposed party on the opposition, the TRAB shall make a ruling within 12 months, and a 6-monts extension is also available for special cases.
The shortened time limit would speed up the registration of the mark, but accordingly, the time for filing supplementary materials or response to the opposition are also reduced for the parties, which require them to act and respond quickly.
- Establishment of suspension procedure
According to the new Trademark Law, the TRAB may suspend the review on an opposition where a determination of prior rights involved is based on the decision of a base pending before the administrative authority or before the court. The proceedings can be restored when the reason for suspension no longer exists.
The suspension procedure is helpful to coordinate the examination of related cases, and also give additional time for the parties to arrange or adjust their actions.