A checklist for trade mark oppositions

If you are planning to oppose a trade mark application in China, you may want to check this article for possible grounds and cautionary tips.

For oppositions based on absolute grounds, there are no qualification requirements: anybody can file an opposition. But for oppositions based on relative grounds (prior rights), you should be careful. At the initial filing, you need to prove that you are holder of the prior rights or an interested party. Failure to prove your qualification may result in non-acceptance of the opposition.

The so-called absolute grounds are specified in Articles 10, 11 and 12 of the Trademark Law.

Article 10 prohibits use and registration of trade marks that resemble the name of a country, national flag, emblem, anthem, army flag, army emblem, military song or medal of a country; or marks that resemble the names, flags or emblem of intergovernmental organisations, the Red Cross and the Red Crescent; or marks that are ethnically discriminatory, or deceptive with respect to the quality, origin or other characteristics of the designated products; or marks that resemble the names of well-known foreign place names. Article 10 also prohibits use and registration of marks that may have a negative effect on social morality or may cause other negative social influence.

Article 11 prohibits registration of trade marks that are only the generic name, graphics or model number of the designated goods, or marks that describe the quality, main materials, use and function, weight, quantity or other characteristics or marks that generally lack distinctiveness.

Article 12 prohibits registration of three-dimensional marks that are in the shape generated directly from the nature of the products, or the shape that is necessary to gain the technical effect, or the shape that allow the products to achieve their substantive value.

Relative grounds are specified in Articles 13, 15, 30, 31 and 32 of the Trademark Law.

Article 13 provides protection to prior famous trade marks. For prior registered famous trade marks, protection may be extended to dissimilar but related products, on the precondition that if existence of the mark will mislead the consumers with respect to the origin of the goods, and if the interests of the prior registrant may be harmed. For unregistered prior famous marks, the protection is limited to similar goods/services.

Article 15 deals with the circumstance where an agent or representative seeks registration of the principal's trade mark without the principal's consent, and the principal files an opposition. This article also applies if there is proof that the applicant is aware of other party's trade mark through agreements, contracts or other relationships before filing.

Article 30 applies if the opposed mark is similar to your prior registered or provisionally approved marks in respect of identical/similar goods.

Article 31 applies if the subject of an approved application is similar to the subject of your pre-dating application in respect of identical/similar goods.

According to Article 32, oppositions can be based on prior rights, for example prior design patent, trade name, copyright, right of personal name and right to portrait.

Article 32 also prohibits registration of another's trade mark that had been previously used in China on the same or similar goods to the extent that a reputation has been established.

In China, normally bad faith alone is not a basis of opposition, but under certain circumstances oppositions based on bad faith of the applicant may be justified. Articles 7 and 44.1 of the Trademark Law are used to prohibit trade mark applications filed in bad faith.

Article 7 provides in general that use and registration of a trade mark should follow the principle of honesty and good faith. In view of the generalness, it is arguable whether Article 7 can be applied to cases directly, as some people believe the idea of Article 7 has been embodied in Articles 13, 15, 30, 32 etc. But in practice the CTMO has made some decisions in opponents' favour where obvious bad faith of the applicants has been proved.

Article 44.1 of the Trademark Law provides that if a registered mark violates Articles 10, 11 and 12 of the Trademark Law, or if the mark was registered by way of deceptive means or other improper means, the TMO may declare invalidation of the mark; other entities or individuals may bring an invalidation action with the TRAB against the mark. Though it appears that Article 44.1 applies to invalidation procedure only, in practice it may also apply to opposition cases.

Application of Articles 7 and 44.1 are still controversial in opposition cases, so it is advisable to claim both when the following facts exist:

• the applicant for the trade mark in question filed some other trade marks resembling another's prior distinctive marks; or

• the applicant for the trade mark in question filed some other trade marks resembling another's prior unique trade name, corporate name or names of other organisations, or unique name, packages or decorations of others' prior well-known products; or

• the applicant for the trade mark in question filed a large number of trade mark applications clearly without actual intention to use; or

• the applicant for the trade mark in question offers to sell its mark at a high price, forces others (normally the trade mark owner) to get into business agreements, or asks for a large sum of money for transferring or licensing the mark without using the mark by himself.

1. When opposing a mark based on prior rights, proof of rights must be submitted when filing the notice of opposition. Otherwise, the opposition may result in non-acceptance.

2. As opposed to the old Trademark Law, under the current law, if the CTMO decides that the opposition is not justified, the opposed mark will get registered immediately. The opponent does not have a chance to file a review. Though in the opposite case, if the CTMO decides that the opposition is justified, the applicant for the opposed trade mark will have a chance to appeal the decision to the TRAB.

3. Given the above point 2, the opponent may want to apply all legal stipulations and pile up the evidence in an opposition, which on the other hand, is not advisable, as the CTMO has made an express requirement that only the most pertinent evidences can be accepted and considered. Paper evidence exceeding a certain amount may be refused. Also, too many claims may have an adverse effect on the examiner. So the balance here can be very tricky.

4. An opponent, who has lost an opposition case, can initiate an invalidation action against the mark with the TRAB within five years from the registration date of the mark. Though you have five years to make the move, our suggestion is the sooner the better so that the TRAB examiners will see the opponent's willingness and aggressiveness in protecting his own rights.

Lily C Lei	Changhong HE

Liu Shen & Associates

10th Floor, Hanhai Plaza 

(1+1 Plaza)

10, Caihefang Road, 

Haidian District

China

Tel: +86-1068681616

Email: mai@liu-shen.com