As one of the largest countries in the world, China is characterised by a huge number of trademark applications. In popular classes, the risk of refusal is significant, especially for short two- or three-syllable trademarks. This presents entrepreneurs with the challenge of protecting their unique brand in a highly competitive environment and a race for exclusive rights.
As one of the largest countries in the world, China is characterised by a huge number of trademark applications. In popular classes, the risk of refusal is significant, especially for short two- or three-syllable trademarks. This presents entrepreneurs with the challenge of protecting their unique brand in a highly competitive environment and a race for exclusive rights.
Receiving a refusal from the China Trademark Office (CNIPA) does not mean the end of the road. The applicant has the right to appeal the decision. The requirement is to submit the relevant documents and present convincing arguments. The process can be complicated, but it is a chance to protect your trademark. Success in the appeal process depends on the successful presentation of arguments and evidence. The defence strategy can vary, but most often it is necessary to demonstrate that the mark is unique, different from others and does not infringe the rights of third parties. Documentation should be complete and well thought out to successfully defend your rights.
There is also the option of applying for a letter of consent. This is the consent of the owner of a similar mark to allow both marks to co-exist in the marketplace. Although this is an option, it should be noted that obtaining such a letter may involve additional costs and may not always be accepted by the Office. In making its final decision, the Office will be guided by the principle of avoiding potential consumer confusion as to brand names and offerings.
The decision to appeal should be well considered. It should take into account the potential costs, the length of the process and the prospects of a positive outcome. In some cases, particularly where the risk of rejection is high, it may be worth considering modifying the trademark or finding an alternative solution. The opposition process in China can be complex and challenging. It is worth considering working with experts in the Chinese market. Professional assistance from an attorney such as Trademark Partners will increase the chances of a successful resolution of the case and effective trademark protection.
While the Chinese market offers tremendous opportunities for entrepreneurs, it also comes with the risk of trademark rejection. It is important to be prepared for the possibility of an appeal and to understand that there are effective ways to defend your trademark. Properly preparing your documentation and possibly seeking a settlement with other parties are key steps in securing your rights.
Grounds for refusal may include lack of distinctiveness. This is a situation where the mark is not unique or distinctive enough to be registered because of previous applications. Absolute grounds for refusal may be, for example, that the mark does not comply with the law, is offensive or descriptive.
You will need to prepare an appeal, which needs to address the reasons for refusal and argue that your mark should be protected. While you cannot do anything on your own, an appeal to the Chinese Trademark Office (CNIPA) can only be filed by a local agent, such as one working with Trademark Partners. Let us know how we can help.
The chances depend on the specific circumstances of the case, the legal arguments, the evidence gathered or the degree of similarity between the opposing marks (those standing in the way of you registering). The longer your mark has been on the market, you have registrations in other territories, you have evidence of use, it is well known in the industry, etc., the better the chances. It takes time to prepare good documentation, but it will definitely help your argument in an appeal.
The appeal process usually takes between 6 and 12 months. In special cases it can take longer. It all depends on the specific case and the efficiency of the internal functioning of the Office.
Refusal may be based on similarity to existing marks, lacking distinctiveness or failing to comply with local regulations.
A Letter of Consent is a document in which a company with trademark protection in the class you are interested in agrees that the China Trademark Office (CNIPA) will grant protection to your trademark despite their initial opposition. The CNIPA may or may not take the signed consent letter into consideration. It will assess the risk of misleading consumers about the origin of the goods. In other words, CNIPA will decide to what extent the similarity of your marks and the convergence of your offerings and markets are such that a potential customer could be confused by the mark you intend to use.
You usually have 30 days from the date you receive the decision to appeal. However, the lawyer representing you must have time to prepare the appeal documents, so do not appeal at the last minute. In addition, last-minute appeals often involve additional costs.
Yes. You cannot do anything on your own. An appeal to the Chinese Trademark Office (CNIPA) can only be made through a local representative, such as those working with Trademark Partners. Let us know, we know how to help.
Costs may vary depending on the complexity of the case, the number of opposing trademarks (which may conflict with your registration), and the amount of documentation to be translated. Contact us for a quote.
The chances depend on the specific circumstances of the case, the legal arguments, the evidence gathered or the degree of similarity between the opposing marks (those that are in conflict with your registration). The longer your mark has been on the market, the more registrations you have in other territories, the more evidence of use you have, the more well-known your mark is in the industry, etc. Preparing good documentation will definitely help in a successful opposition.
You cannot change a trademark in an existing application. A new application is needed. You can find out everything from a professional attorney. Let us know, we know how to help.
Usually, unfortunately, you cannot appeal after the deadline.
This is risky. If you do not have exclusive rights to a mark and your use of it does not infringe the rights of others, the risk of legal problems is moderate. However, if the Office has cited conflicting marks in the grounds for refusal (which conflict with your registration) and you are aware of this and use the mark despite not registering it, the risk of legal problems increases. Remember that only valid protection rights give you the exclusive right to use the mark for the products specified in the protection certificate.
The original rejection decision, grounds of appeal and documentation supporting the argumentation and power of attorney are required.
The Office examines the appeal and issues a new decision. It usually takes between 6 and 12 months to do this.
Yes, negotiation is often an effective way to resolve conflicts. However, successful negotiation does not guarantee that the Office will grant protection for your mark. The Office’s policy is to avoid confusion the client about the mark.
The Office’s decision is final after consideration of the appeal, but may be appealed to the Beijing IP Court.
Consider changing or modifying the mark to avoid conflict.
Yes, new evidence can be submitted during the appeal process.
Proving distinctiveness when appealing is a common strategy. However, the key is to prove its uniqueness, market recognition or originality of design well. Good documentary evidence in support of the distinctive character thesis is therefore of the essence.
Yes, some marks may be excluded for legal or ethical reasons. You can read more here.
Consider consulting an expert in Chinese culture and language to adapt the mark. However, if there is an absolute ground for refusal of trademark protection, the chances of registration are slim.
Yes, but it requires a strong argument and strong evidence.
If you do not file an appeal, you will fail to get the trademark registered. Using the trademark in the market without valid protection may involve the risk of infringing the rights of third parties.
You do not need to come to China to appeal. All you need to do is hire a professional representative. Let us know, we know how to help.
Yes, foreigners can file appeals, but representation by a professional representative is always required. Let us know, we know how to help.
You can request a letter of consent. A letter of consent is a document in which the company that has protection for the mark in the class you are interested in agrees that the Office will grant protection for your mark, despite their initial opposition.
If you receive a refusal of protection for your trade mark because of the existence of another, previously filed, similar trademark, you can try to obtain a letter of consent from the owner of that trademark at the appeal stage. It depends only on his goodwill (and perhaps the amount of the fee) whether he will sign the letter of consent for you or not.
The letter of consent is to be sent to the ?China Trademark Office as part of the appeal against the refusal to register.
If your markets do not overlap (e.g. you are an exporter to Poland and only buy in China under your own brand and the other company is an exporter to Australia and also buys in China under its own brand), the chance of the agreement under a letter of consent is considerable.
No. The China Trademark Office (CNIPA) may or may not consider the signed consent letter. The CNIPA assesses the extent to which granting you protection would confuse consumers about the origin of the product or service. In other words, the Office will decide to what extent the similarity of your marks and the convergence of your offerings and markets are such that a potential customer could be confused by the marks you intend to use.