In China, as in the rest of the world, once a trademark has been granted legal protection, it is subject to the publication process. This is a way of informing the public of the intention to protect a trademark. During the three-month publication period, any interested party has the right to object to the proposed legal protection of the mark. At Trademark Partner, we provide professional assistance to companies in efficiently completing all the tasks and legal formalities involved in filing an opposition to the registration of a trademark in China.
Registering your own trademark in China is a multi-stage process that begins with the filing of an application for trademark protection with the Chinese Trademark Office. Then, after a certain period of time, the Office will issue a preliminary decision on the registration of a particular trademark. If, after the substantive examination of the application, the entrepreneur receives a preliminary confirmation of acceptance, the Office is required to publish the application in the publicly available official gazette (China Trademark Gazette). At this point, the three-month period for filing an opposition to the registration of a trademark begins, counted from the date of publication of this information by the Office.
The basis for filing an opposition to a trademark application may be that it was filed in
bad faith, i.e. by an unauthorised third party who was aware at the time of filing that he
was applying for protection of a trademark that did not belong to him. Among the grounds
for refusal provided by Chinese law are, for example, earlier copyrights, the right to a
well-known trademark or other grounds. In certain cases, the similarity of marks and
goods or services may also be a legitimate ground for opposition.
If no opposition to the trademark is filed within three months from the date of its initial
publication, or if the opposition is rejected, the final information on the registration of the
logo will be published in the Official Bulletin, and only the issuance of a registration
certificate is equivalent to the grant of protection rights for the given trademark in
China.
When faced with the need to file an opposition to the registration of a trademark in
China, the first thing to do is to gather evidence that is credible and justified in the light of
applicable law and good practice. This is extremely important as there is only one chance
to oppose the registration of a particular trademark in China.
However, if the opposition is not accepted by the Trademark Office, the trademark
is automatically protected and the only solution is to file a lawsuit with the relevant IP
court or to have the registration of the trademark declared invalid. This is why it is so
important to work with an experienced and professional attorney when preparing to file
an opposition against a trademark in China. At Trademark Partners, we will take care
of both the preparation of the necessary documents and other formalities related
to filing an opposition with the Chinese Patent Office.
As mentioned above, anyone in China has the right to oppose the registration of a
particular trademark within the three-month opposition period if they have a valid
reason to do so. In order to file an opposition, an application must be filed with the CNIPA
(China National Intellectual Property Administration, commonly known as the China
Patent Office). It is worth contacting a professional representative for this purpose.
The process of opposing the registration of a trademark in China and obtaining a final decision from the Chinese Patent Office can take from 9 to 12 months. In extreme cases, where the Office grants the parties the right to make several references to the opponeny’s arguments, the process can take up to 18 months. If the opposition fails, the trade mark is officially registered. In this case, the only remedy is to file an invalidity action or to ask the competent IP court for a ruling, which requires separate legal steps.
There are certain costs involved in filing an opposition with the Chinese Patent
Office. The final amount of this procedure includes both official fees and costs related to
the services of lawyers and other representatives. The final cost of filing an opposition to
the registration of a trademark also depends on the complexity of the case or the length
of the documents to be translated. However, it is worth bearing in mind that filing an
opposition can protect the company from major financial losses resulting from the
loss of protection of the trademark.
