Recently, the Qiaodan Company (Qiaodan is the pronunciation of Michael Jordan’s name), a Chinese domestic sporting goods manufacturer, confronted trademark troubles on IPO in China, because Nike has opposed to 8 trademarks of Qiaodan, claiming that it might lead to the confusion with Nike’s “Air Jordan”. Nevertheless, such opposition was refused by China Trademark Office, and Nike filed no administration lawsuit afterwards.

The opposition filed by Nike to Qiaodan is based on the provision of the China trademark law:

Any person may, within three months from the date of the publication, file an opposition against the trademark that has, after examination, been preliminarily approved. If no opposition has been filed after the expiration of the time limit from the publication, the registration shall be approved, a certificate of trademark registration shall be issued and the trademark shall be published.

This is the so-called system of trademark opposition, and the following is Bridge IP Law Commentary’s interpretation on its function and methods:

I. The function of trademark opposition

The establishment of Trademark opposition system is to make the trademark reviewed and examined by public after internal review in the Trademark Office for the less administrative work error. Although it regulates that any one is entitled to file the opposition, the procedure is initiated by the owner of first registered trademark or those interested party of the opposed trademark in practices. Thus gives them a chance to protect their own rights and interests and avoid rights conflicts after trademark authorization.

II. The procedure of the trademark opposition

According to the law, the trademark opposition shall be filed within 3 months after being preliminarily approved. A preliminarily approved trademark means the mark is considered qualified to be administrative licensed by the Trademark Office, and soon will be published on website or announcement of the Trademark Office. Anyone bearing any different opinion on the approval is allowed to apply the trademark opposition.

Meanwhile, by the law, the applicant can provide complementary evidence within 3 months after the opposition, which shall be noted on the written opposition. We recommend all the applicants make such note for it on one hand could get enough time to prepare the evidence, and on the other hand it could delay the registration of trademark.

At last, it shall be noticeable to the applicants that all evidence related to the trademark opposition will be copied and delivered to the respondent for defense. Therefore, the applicant should not to submit any materials with confidential information.

III. The legal basis of trademark opposition

In practice, the application of trademark opposition may base on the reasons below, and the following is our analysis on the matters for attention:

(1) Being identical or similar to the first registered trademark

Normally it is hard to opposite by this reason, for the similarity or identity shall be determined by the Trademark Office in the internal examination. As to the case mentioned above, the Trademark Office will not easily overthrow its statement in the opposition procedure, and determine the confusion between Qiaodan and Air Jordan. However, if the applicant still insists on the opposition reason, an evidence for the influence of the first registered trademark (not a well-known trademark) is demanded, which aims at the widening of the similarity scope as decided by the Trademark Office.

(2) Being identical or similar to the well-known trademark

Trademark law has stronger protection on the well-known trademark. And the two situations of the examination omission of the administration are as follows:

First, when the registered trademark does not apply for cross-class protection, the opposition could be filed even the similar trademark is not in the same class with the opposed one;

Second, as to the unregistered well-known trademark, the opposition could only be filed when the similar trademark is in the same class with the opposed one.

In addition, the applicant may apply the cognizance of well-known trademark in the procedure of opposition, so as to help the opposition.

3. The violation of the prior right

Trademark Bureau generally does not examine if the trademark will violate a prior right. If there are exact evidences for such violation, then the opposition applied thereby is highly possible to be supported. Generally the prior rights include copyright, company name right, portrait right. Nevertheless, it is controversial if the enterprise name right is one of “prior rights”. For more information of this, please refer to our related post. In the case of Nike vs Qiaodan as mentioned above, the right of person name is not included in the “prior rights “, even for the big figure like Michael Jordan.

IV. The opposed trademark with elements of registration refusal

This means that the trademark include the element prohibited registered as a trademark pattern. As the same, it shall also be examined by the Trademark Office in advance, and for this reason any opposition basing on this reason is not likely to be supported. And those oppositions for this reason are mainly for the delay of the authorization of the trademark and to win the time for other trademark related issues, which functions more on operation strategy.

Other posts on our website:
1. The Actual Term of Trademark Registration in China
2. How to Apply for the Trademark Record in China Custom
3. How to improve the success rate of trademark registration in China?
4. Matters for Attention in Trademark Refusal Review in China
5. Introduction of China’s Legal System of Trademark Renewal
6. Introduction on the Regulations concerning the Capital Contribution in IPR or Domain Name in China
7. The Copyright Registration in China Could Be FREE?
8. China Copyright Protection Term Longer than EU’s?
9. Matters for Attention in the Patent Preliminary Injunction Application in China(I)
10. Matters for Attention in the Patent Preliminary Injunction Application in China(II)

Author: Mr. Luo Yanjie
Attorney-at-law of DeBund Law Offices
Co-author: Mr. You Yunting
Founder & Editor-in-Chief of Bridge IP Law Commentary
Partner & Attorney-at-law of Shanghai DeBund Law Offices
Email: Bridge@chinaiplawyer.com, Tel: 8621-5213-4900,
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Bridge IP Law Commentary is a website focus on the introduction of commercial laws in China, especially the intellectual property laws. All the posts here are our original works. And all news or cases referred here are from public reports, and our comments or analysis are of due diligence, neutrality and impartiality, representing our own opinions only and are our original works. You may contact us shall you have any opinions or suggestions.

 

 

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