Trademark Opposition in Mainland of China· Published on 2016-11-16 17:39:26 · 266 read Opposition
Trademark oppositions refer that the holders of prior rights and the interested parties deem the trademark preliminarily approved and published by CTMO is in lack of validity, proposing the trademark should not be approved to CTMO within three months from the date of publication.
The legal procedure asking for opinions on the preliminarily approved trademarks in public, aims to openly and fairly ensure the trademark rights, and improve the quality of trademark registration examination. The opposition procedure is set to strengthen the supervision from the public society aiming at the work of trademark examination, reduce the mistakes in the examination, intensify the brand awareness, and provide an opportunity to the holders of prior rights and other interested parties to protect their rights, prevent the right conflict. Trademark opposition helps to protect the rights and interests of prior registrant, but also avoid the applicant from obtaining underserved exclusive rights.
Article 33 of Newly-revised 《Chinese Trademark Law》 regulates
“The holders of prior rights and the interest parties who deem the trademark preliminarily approved and published stands in violation of the provisions of Article 13, Section 2 & 3; Article 15; Article 16, Section 1; Article 30; Article 31; Article 32 of this Law; and any third parties that deem the trademark stands in violation of the provisions of Article 10; Article 11 and Article 12, can raise the opposition to CTMO with three months from the date of publication.”
Article 13, Section 2
Where a trademark applied for registration in respect of identical or similar goods is a duplication, imitation or translation of other person’s well-known trademark which has not been registered in China and the applied trademark is likely to cause confusion, it shall not be allowed for registration and shall be forbidden from practical use.
Article 13, Section 3
Where a trademark applied for registration in respect of different goods is a duplication, imitation or translation of other person’s well-known trademark which has been registered in China and the applied trademark is likely to mislead the public and bring harms to the interests of the registrant of the well-known trademark, it shall not be allowed for registration and shall be forbidden from practical use.
Where the agent or representative of the owner of a trademark applies for registering the trademark in his own name without authorization and the owner of the trademark has raised an opposition against the same, such a trademark shall not be allowed for registration and shall be forbidden from practical use.
Where a trademark applied for registration is identical with or similar to another person’s prior used but yet unregistered trademark, in respect of same or similar goods, and the applicant has contractual or business contacts, or other relations other than those prescribed by the preceding paragraph, with the prior trademark user so that the applicant definitely knows the existence of this person’s trademark, if this person files an opposition, the applied trademark shall not be registered.
Article 16, Section 1
Where a trademark has a geographical sign of the designated goods which do not originate from the place where the geographical sign indicates and is likely to mislead the public, such a trademark shall not be allowed for registration and shall be forbidden from practical use. However, where such a trademark has been approved and registered out of goodwill, it shall continue to be valid.
Where a trademark the registration of which has been applied for is not in conformity with the relevant provisions of this Law, or it is identical with or similar to the trademark of another person that has, in respect of the same or similar goods, been registered or, after examination, preliminarily approved, the Trademark Office shall refuse the application and shall not publish the said trademark.
Where two or more applicants apply for the registration of identical or similar trademarks for the same or similar goods, the preliminary approval, after examination, and the publication shall be made for the trademark which was first filed. Where applications are filed on the same day, the preliminary approval, after examination, and the publication shall be made for the trademark which was the earliest used, and the applications of the others shall be refused and their trademarks shall not be published.
The application for trademark registration shall not be allowed to harm other person’s prior rights, and no preemptive application by any unfair means of a trademark which has been used by another person and has a certain influence shall be allowed for registration.
The following signs shall not be used as a trademark:
Those identical with or similar to the State name, national flag, national emblem, national anthem, military flag, military emblem, military song, or medals etc., of the People’s Republic of China, and those identical with the name or the symbol of the Central State government organizations, as well as the name of the specific place where the Central State government organizations are located or the name, device of any symbolic building of the place;
Those identical with or similar to the State name, national flag, national emblem or military flag, etc., of any foreign countries, except those approved by the government of the country concerned;
those identical with or similar to the name, flag or emblem etc., of any international intergovernmental organization, except those approved by the international intergovernmental organization concerned or unlikely to mislead the public;
Those identical with or similar to the official sign or inspection mark indicating control and guarantee, except those with official authorization;
Those identical with or similar to the symbols, or names, of the Red Cross or the Red Crescent;
Those having the nature of discrimination against any nationality;
Those deceptive, which are likely to mislead the public to misidentify the quality or other characteristics or place of origin of the goods; and
Those detrimental to socialist morals or customs, or having other adverse social impact.
The geographical names as the administrative divisions at or above the county level and the foreign geographical names well-known to the public shall not be used as trademarks, but those geographical names having otherwise meanings or serving as component part of a collective mark or certification mark shall be exclusive. Where a trademark using any of the above-mentioned geographical names has been approved and registered, it shall continue to be valid.
Any of the following marks shall not be registered as a trademark:
Those only having the generic names, designs or models of the goods in respect of which the trademark is used;
Those only having direct reference to the quality, main raw materials, function, use, weight, quantity or other features of the goods in respect of which the trademark is used;
Others lacking in distinctive features.
Any of those marks mentioned in the preceding paragraphs can be registered as a trademark only after it has acquired distinctive features in practical use and become distinguishable.
Those devices in the shape originating from the nature of the goods, existing for achieving technical effect of the goods or enabling the goods to keep substantive value shall not be registered as three-dimensional trademarks.