This article discusses filing an opposition action and responding to an opposition action for an international registration.
Filing an opposition action
For national trademark applications, after the application is filed, the National Intellectual Property Administration, PRC (“CNIPA”) will initiate a preliminary examination to check the application formalities. Assuming everything is in order, the CNIPA will issue a formal filing receipt and then begin the substantial examination. If no rejection is issued by the CNIPA, they will preliminarily publish the applications for opposition purposes for 3 months.
While for international registrations, the CNIPA conducts the ex officio examination and the opposition procedure in parallel and does not republish international registrations for opposition purposes.
The time limit to file an opposition against an international registration is 3 months beginning on the first day of the month immediately following the month in which the international trademark has been published in the WIPO Gazette. The time limit cannot be extended but there will be a 3 month supplementary filing period after filing the opposition action.
Opposition actions can be filed by: 1) proprietors of earlier rights or an interest party, if the trademark violates the second and third paragraph of Article 13, Article 15, the first paragraph of Article 16, Article 30, Article 31, or Article 32 of the Trademark Law; or 2) any person, if the trademark application violates Articles 4, 10, 11, 12 and 19.4 of the Trademark Law.
Proprietors of earlier right could be proprietors of prior filed or registered similar marks, prior copyrights, prior name right, prior trade name rights, prior portrait rights, etc. When the opposition actions are filed by proprietors of earlier rights, the opponent needs to submit documents showing that they are the proprietors of earlier rights, such as copy of trademark information of prior filed or registered similar marks, pieces of prior use evidence of similar marks, copyright certificate for similar logos, and etc.
An interested party could be the trademark licensee, the assignee of the earlier legal rights, etc. When the opposition action is filed by an interested party, the opponent needs to submit documents showing that they are an interested party, such as copy of licensee contract, or trademark assignment contract, etc.
Responding to an opposition action
The CNIPA sends the notification of provisional refusal based on opposition to the holder through WIPO. The time limit for the holder to respond to opposition is 30 days from the date that the holder receives the notification. The time limit cannot be extended but there will be a 3 month supplementary filing period after filing the initial response.
The holder must appoint a local representative to respond to an opposition action for an international registration. It is not compulsory to respond to the opposition action. If the holder does not respond to the opposition, the CNIPA will examine the case based on what submitted by the opponent. However, it is recommendable to take this chance to present our arguments and evidence, and to challenge the arguments and evidence submitted by the opponent to enhance the chance of success. Information about local representatives can be obtained from the CNIPA’s website. Our firm, Kangxin Partners, P.C. (http://en.kangxin.com), providing comprehensive IP services, is glad to assist you. Please feel free to contact me at firstname.lastname@example.org with any inquires or questions.
This is part five of a series of articles on the topic of international registrations designating China. More articles will be available soon.