Trademark opposition procedure is applied to published trademarks that passing the substantial examination by the Trademark Office. Regarding a Chinese national trademark application, if any party wishes to oppose a trademark application, there are rules and precautions that should be noticed in advance.
 
The Formal requirement for filing an opposition
 
Firstly, the disputed trademark shall be published and still in the opposition period. For a Chinese national application, the opposition period is three months from the publication date. An opponent needs to confirm the deadline of the trademark first. If the time limit to file opposition has expired, the opposition procedure is inapplicable anymore, and then you may challenge by filing an invalidation request based on similar grounds after its approval.
 
Secondly, the basic request for an opposition requires a Power of Attorney issued by the applicant with signature or seal as well as the identification certificate of the applicant, such as ID card or passport of a natural person, and certificate of status or business certificate of a legal entity.
 
Also, a request form with a stylized format of the opposition is required to be submitted together with the above documents, and the opposing party generally should provide a signature or seal on it. But if the opponent is a foreigner or foreign entity, it can be intended by the representative.
 
Legal grounds for a trademark opposition
 
According to the Trademark Law of China, an opposition can be brought based on absolute grounds and/or relative grounds. Two kinds of legal grounds are applied differently. The absolute grounds can be claimed in opposition and filed by any third party, while the relative grounds are limited to the prior right holders or other interested parties.
 
The absolute grounds are about the trademark exists circumstances that are prohibited from being registered as trademarks, mainly including the situation as prescribed under article 4, 10, 11, 12 and 19(4), among which the most frequently-used grounds are the bad faith of the trademark applicant and violation of the principle of good faith.
 
The relative grounds include the situations in article 13(2), 13(3), 15, 16(1), 30, 31, and 32. The regulations are mainly about the protection of well-known trademarks, prior similar trademark applications/registration, and prior legal rights that can hinder the later published trademark.
 
Oppose a trademark applied in bad faith
 
Since the new Trademark Law has come into effect, the Trademark Office has strictly struck the malicious trademark applications with new rules. The regulations about the refusal of bad faith applications lacking any intention of use also have been executed in the opposition procedure.
 
As an absolute ground for opposition, any third party can oppose the trademark within the deadline accordingly. Generally speaking, if the applicant had filed a large number of trademarks, but with little information about the relevant brands in public, then the trademarks may not be genuinely used. Afterward, if the trademark has high similarity with brands of others, especially the unique elements are identical in both two signs, the trademark is probably a replica.
 
In addition to the direct evidence of bad faith, the opponent may also prove the fame of its brand in China to support the argument. If the brand or trademark of the opponent is well known in among the public, it can be concluded that the opposed trademark was filed in bad faith. Of course, if the opponent has prior applied or registered a same/similar trademark in China, it can also be cited in the opposition.
 
Taking the trademark “mountain buggy” as an example, the opposed trademark was totally identical to the famous brand of baby products Mountain Buggy from New Zealand, applying for registration on similar goods like baby carriers and diaper bags in class 18. On behalf of the genuine owner of the trademark, we filed an opposition against the trademark and claimed the bad faith of the opposed party. By way of proving the bad faith, we illustrated the creation of the original sign and history of the client’s brand, comprehensively comparing two trademarks to discuss the high degree of similarity. Whatsmore, a great amount of evidence of the usage and fame of the trademark in China, were submitted to support the bad faith. Finally, the opposed trademark was refused to be registered on designated goods.
 
Comments

Taking goods use of the institution of trademark opposition can help to stop the registration of a trademark in bad faith in time. Companies having interests in trademark protection in China may plan a trademark monitor project on necessary classes to better prevent the malicious applicant copying or imitating trademarks. Once encountering any copycat incidents, it’s suggested to seek professional advice from a local trademark attorney and develop strategies of opposition.