In the journey of trademark registration, the opposition process is a crucial checkpoint that can determine the fate and market position of a brand. Trademark opposition procedures vary across countries, from publication periods to opposition rulings, where legal and business wisdom come into play at every step. This article will provide an in-depth analysis of the similarities and differences in the trademark opposition processes of five key countries: China, the U.S., Japan, the EU, and South Korea, offering valuable insights for companies engaged in global trademark strategy.

China’s Trademark Opposition Procedure

Publication and Opposition Period: In China, the opposition period begins from the date of the preliminary examination and publication of the trademark and lasts for three months. The starting date is typically the day after the publication.

Eligibility to File Opposition: Any person who believes that a trademark published by the Trademark Officelacks legality may file an opposition. It is common for prior rights holders or interested parties to file opposition based on identical or similar trademarks.

Required Documents for Filing Opposition: Opponents must submit two copies of the trademark opposition application to the Trademark Office, along with proof of identity and supporting evidence. The evidence must clearly state the request and factual basis, such as proof that the opposed trademark violates the prohibitive provisions of the Trademark Law.

Timing for Submitting Evidence: Evidence can be submitted with the opposition application. If it cannot be submitted at that time, the opposition application must state this, and the evidence must be supplemented within three months from the date of filing the opposition.

Response by the Opposed Party: The Trademark Office notifies the opposed party to respond within 30 days of receiving the notice. The response must rebut the opposition’s reasons and include supporting evidence.

Hearing/Oral Examination: China’s trademark opposition procedure primarily involves written examination, and hearings or oral examinations are generally not held.

Examination Period: The Trademark Office must make a decision on whether to approve the registration within 12 months after the publication period, with a possible extension of six months in special cases.

Consequence of Failing to Respond: If the opposed party fails to respond within the prescribed period, it does not affect the opposition examination, and the Trademark Office will rule based on the available materials.

Review of Opposition Decision: If dissatisfied with the opposition decision, the opposed party can request a review by the Trademark Review and Adjudication Board within 15 days of receiving the decision. The opponent can file an invalidation application. 

U.S. Trademark Opposition Procedure

Publication and Opposition Period: The U.S. trademark opposition period is relatively short, lasting only 30 days. Opponents can file an opposition or request an extension of time to file within this period.

Eligibility to File Opposition: Anyone who believes the published trademark conflicts with their rights can file an opposition.

Required Documents for Filing Opposition: Opponents must file the opposition application with the United States Patent and Trademark Office (USPTO), along with supporting evidence to substantiate the opposition.

Timing for Submitting Evidence: Evidence can be submitted with the opposition application or supplemented later as required by the USPTO.

Response by the Opposed Party: The USPTO will notify the opposed party to respond, and the response deadline will be determined by the USPTO.

Hearing/Oral Examination: The U.S. trademark opposition process may involve depositions, evidence discovery, and oral hearings, making the procedure complex and costly.

Examination Period: The examination period is typically long, depending on the complexity of the case and the efficiency of the USPTO.

Consequence of Failing to Respond: If the opposed party fails to respond within the prescribed period, the USPTO will make a decision based on the available materials.

Review of Opposition Decision: If dissatisfied with the opposition decision, either party can file a lawsuit in court.

Japan’s Trademark Opposition Procedure

Publication and Opposition Period: Japan’s opposition period is within two months of the trademark registration publication date.

Eligibility to File Opposition: Anyone who believes the published trademark conflicts with their rights can file an opposition.

Required Documents for Filing Opposition: Opponents must submit the opposition application and supporting evidence to the Japan Patent Office. The evidence must clearly state the request and the factual basis.

Timing for Submitting Evidence: Evidence can be submitted with the opposition application or supplemented within the additional opposition period.

Response by the Opposed Party: The opposed party must respond within a specific period after receiving the opposition notice, as prescribed by Japanese trademark law.

Hearing/Oral Examination: Japan’s trademark opposition procedure primarily involves written examination, and hearings or oral examinations are generally not held.

Examination Period: The examination period typically ranges from 1 to 2 years, depending on the complexity of the case and the progress of the review.

Consequence of Failing to Respond: If the opposed party fails to respond within the prescribed period, it does not affect the examination, and the Japan Patent Office will rule based on the available materials.

Review of Opposition Decision: If dissatisfied with the opposition decision, either party may file a lawsuit in court.

EU Trademark Opposition Procedure

Publication and Opposition Period: The EU trademark opposition period is within three months of the publication date and cannot be extended.

Eligibility to File Opposition: Anyone who believes the published trademark conflicts with their rights can file an opposition.

Required Documents for Filing Opposition: Opponents must submit an opposition application and supporting evidence to the European Union Intellectual Property Office (EUIPO).

Timing for Submitting Evidence: Evidence must be submitted in accordance with EUIPO’s requirements during the opposition process.

Response by the Opposed Party: The opposed party must respond within the prescribed period, as determined by EUIPO.

Hearing/Oral Examination: The EU trademark opposition procedure normally does not involve oral hearings, and the process is primarily based on written submissions.

Examination Period: If the cooling-off period is used, the entire process can take up to 2–3 years or more.

Without the cooling-off period, the case is usually resolved within 1–2 years, depending on the complexity of the case and the review progress.

Consequence of Failing to Respond: If the opposed party fails to respond within the prescribed period, EUIPO will rule based on the available materials.

Review of Opposition Decision: If dissatisfied with the opposition decision, either party can appeal to the EUIPO Boards of Appeal.

South Korea’s Trademark Opposition Procedure

Publication and Opposition Period: South Korea’s opposition period is within two months of the publication date, which is fixed and cannot be extended.

Eligibility to File Opposition: Anyone who believes the published trademark conflicts with their rights can file an opposition.

Required Documents for Filing Opposition: Opponents must submit an opposition application and supporting evidence to the Korean Intellectual Property Office (KIPO).

Timing for Submitting Evidence: Evidence must be submitted in a timely manner as required by KIPO during the opposition process.

Response by the Opposed Party: The opposed party must respond within the prescribed period, as specified by Korean trademark law.

Hearing/Oral Examination: South Korea’s trademark opposition procedure may involve hearings or oral examinations, depending on the case's complexity and KIPO’s decision.

Examination Period: The examination period is approximately 6 to 12 months, depending on the complexity of the case and the review progress.

Consequence of Failing to Respond: If the opposed party fails to respond within the prescribed period, they may be considered to have abandoned the trademark application, resulting in a successful opposition.

Review of Opposition Decision: If dissatisfied with the opposition decision, either party can file an Appeal to the Korean Intellectual Property Trial and Appeal Board (KIPTAB).

Conclusion

A comprehensive analysis of the trademark opposition procedures in China, the U.S., Japan, the EU, and South Korea reveals differences in legal systems, procedural settings, and examination efficiency. Companies engaged in global trademark strategy should thoroughly understand and comply with the trademark opposition procedures of each country, devising scientific and reasonable opposition strategies to safeguard their brand rights. Moreover, fostering international cooperation and communication in trademark matters will contribute to the healthy development of global trademark protection.