To acquire the exclusive right of trademark, China adopts “first-to-file” principle instead of “first-to-use” principle. The trademark applicant, in the registration process, is not required to provide any materials to prove the commercial use or the intention to use the trademark in the future, which actually enables the applicant to pre-emptively register the trademark. As a professional intellectual property firm, we are always monitoring the trademark publication and resisting the “trademark squatting” which is becoming more severe than ever.
Generally speaking, filing the Trademark Opposition is the most cost-saving and convenient way to cope with the “trade squatting”. By filing Trademark Opposition, third parties may use opposition proceedings to oppose the acceptance of a trademark application after it has been accepted and published. The publication period lasts for three months.
The deadline for filing Trademark Opposition XXX (SN: XXX) is XXX. However, considering the preparation and writing of the relevant documents, please email us the materials required and payment proof before XXX.
The legal grounds for filing the Trademark Opposition
China Trademark Law
Article 30 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.
Article 31 An application for the registration of a trademark shall not create any prejudice to the prior right of another person, nor unfair means be used to pre-emptively register the trademark of some reputation another person has used.
Why we consider it a necessity to file the Opposition:
1. The Opposee will enjoy the exclusive right of the registered mark if it passed the three-month publication, which is disastrous because it is very difficult to regain the mark if registered. The Opposee may create its brand culture concerning the subject mark in its market promotion. The consequence might be: the Opposer permanently loses the mark in China.
2. Once the mark is registered successfully, the Opposee can apply to record the mark in the customs and the administrative authority, which will definitely affect the opposer’s commercial use of the mark, as far as production, processing, selling, import & export are concerned.
3. An opposition usually takes about 18 to 24 months. Either party not satisfied with the verdict can file Trademark Review for Opposition which will last another 18 months. So it can prevent the Opposee from obtaining the trademark for at least 3 to 4 years, which can be a useful buffer to the Opposer. It helps to win the time to negotiate with the Opposee even though the Opposition fails, otherwise the Opposer will be placed in total disadvantage.
Documents required to file the Opposition:
-The Opposer’s certificate. İf the Opposer is a person, then the passport is needed; if the Opposer is a company/enterprise/organzation, then the registration certificate is needed.
-The Opposer’s address
-The Opposer’s seal/signature
Both English and Chinese versions are needed.
Documents to support the Oppostion: (The supporting documents can be filed in the subsequent three months after Opposition application)
-The Opposer can always show original design concept and proof: the contract where the Opposer entrusted a design company to draw a logo, the communications between the Opposer and the designer, etc.
-Other intellectual property certificates like copyright, patent, etc.
-The proofs for commercial use
Both English and Chinese versions are needed.