Why Only an Interested Party may File an Opposition to a Trademark Application in China

(By Luo Yanjie) Abstract: The new Trademark Law stipulates that only the interested party may file an opposition to a trademark application based on relevant grounds. Previous opposition proceedings were so complicated that the new Trademark Law removes the trademark opposition review proceedings completely, with the exception of the review period of twelve months.

Our Trademark Law has been revised many times since its inception in 1982. In August 2013, the National People’s Congress approved the latest revised Trademark Law. In today’s post, we will analyze and compare the two Trademark Laws from the standpoint of the revised opposition system.

1. The new Trademark Law confines the subjects of a trademark opposition application.

With regard to trademark opposition, the 1982 version of Trademark Law regulated that “Any person may, within three months from the date of publication, file an opposition against a trademark that has, after examination, been preliminarily approved. If no opposition has been filed, or if it is decided that the opposition is not justified, the registration shall be approved, a certificate of trademark registration shall be issued and the trademark shall be published. If it is decided that the opposition is justified, no registration shall be approved.” Despite there being some revision on this article, it still preserves wording stating that “any person may file to oppose a trademark application that has been preliminarily approved”.

With regard to the reasons for filing a trademark opposition, generally, they are categorized as those having a relative reason and an absolute reason. Absolute reasons are comprised of the mandatory provisions of the trademark itself as regulated in the Trademark Law. In contrast, relative reasons mainly refer to those where the disputed trademark infringes another’s rights, e.g., rushed registration of a well-known trademark, infringing another’s prior rights. However, in the previous version of the Trademark Law, it did not stipulate that there is an “interested relationship” between the opposing subject and relative reason, resulting in a large number of opposing parties meddling in the affairs of other parties, and in a sense violating the private and individual power of the trademark law and its associated rights. Even worse, many of these oppositions have been filed in bad faith to gain a competitive and financial advantage.

Therefore, the 2013 version of Trademark Law clearly stipulates: any holder of prior rights, or interested party may, within three months from the date of publication, in violation of the provisions of Article 13 Paragraph 2, Article 13 Paragraph 3, Article 15, Article 16 Paragraph 1, Article 30, Article 31, or Article 32, or any person may, in violation of the provisions of Article 10, Article 11, or Article 12, file to oppose a trademark application that has been published after a preliminary examination and approval.

2.      The 2013 version of Trademark Law redefines the opposition system to adequately prevent bad faith in an opposition application.

Previously this was a rather complicated opposition process: when an opposition has failed, an opposing party may apply for a trademark review with the Trademark Review and Adjudication Board, however, there was no specific review period defined. In some cases this lack of review period, has led to a registrant being unable to receive a registered trademark for many years, due to incessant filing of oppositions. In practice, some organizations and individuals file oppositions in order to delay the eventual granting of a trademark right to gain unfair advantages and profits in the interim.

In relation to aforementioned issue, the 2013 version of Trademark Law regulates that the Trademark Office shall consider the facts and grounds for an opposition and shall decide whether a trademark registration will be approved. It also removes such complicated review proceedings for trademark opposition, except the review period of twelve months. If the Trademark Office decides the opposition to be false and approves the registration, the opposing party may request the Trademark Review and Adjudication Board consider nullification of the registered trademark. In trademark nullification procedures and current laws, the big difference in the opposition review is that the disputed trademark is valid during this nullification procedure, which can prevent someone from deliberately filing an opposition to delay a company rightfully obtaining copyright.


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