In practice, after a trademark has been approved for registration, if someone wishes to challenge its validity, it is generally necessary to do so through an invalidation procedure or a cancellation procedure. In particular, the invalidation procedure requires a longer examination period and higher costs. However, should any potential disputes be identified during the trademark publication period, the opposition procedure offers a more timely avenue for resolution.
The trademark opposition procedure is an important statutory remedy within the trademark registration examination system. It is designed to correct omissions in the trademark examination process through public supervision and rights claims, and to preserve the order of trademark registration. Its core value lies in moving the resolution of rights conflicts forward, so that trademark disputes can be resolved at the registration stage, avoiding the need to protect rights through invalidation proceedings or infringement litigation after the trademark has been approved for registration, thereby significantly reducing the costs of subsequent disputes.
This article summarizes the basic process, required documents, and key practical considerations for trademark opposition, with the aim of providing clear guidance for enterprises that need to initiate opposition proceedings.
I. Trademark Opposition Procedures
Pursuant to the provisions of Article 33 of the currently adopted Trademark Law (as amended in 2019) and the relevant rules of the Implementing Regulations of Trademark Law, the trademark opposition procedure in China mainly includes the following steps
(1) Filing
After a trademark has been preliminarily approved and published, within three months from the date of publication, any prior rights holder or interested party (based on relative grounds, including but not limited to where the opposed trademark: (i) is identical with or similar to a well-known trademark of another; (ii) is applied for by an agent, representative, or other party in a specific relationship with the rights holder, in its own name, without authorization; (iii) is identical with or similar to a prior registered or preliminarily approved trademark; (iv) infringes the prior rights of others; or (v) is filed in bad faith, constituting an act of preemptive registration of a trademark that has been previously used by another and has acquired a certain degree of reputation) or any person (based on absolute grounds, including but not limited to where the opposed trademark (i) is filed in bad faith with no intent to use; (ii) consists of a sign which is prohibited from being used or registered as a trademark; (iii) is devoid of distinctive character; or (iv) is applied for by a trademark agency in respect of goods or services other than those for which it provides agency services) may file an opposition with the Trademark Office of the China National Intellectual Property Administration.
When filing an opposition, the grounds, facts, and legal basis for the opposition shall be clearly indicated, the corresponding evidentiary materials shall be submitted, and the corresponding official fee shall be paid. Where the opposition is filed upon the above-mentioned relative grounds, at the time of filing the opposition, evidence proving that the opponent is a prior rights holder or an interested party shall be submitted at the same time. In addition, at the time of filing, the opponent may state that supplementary evidence will be submitted. Such supplementary evidence shall be submitted within three months from the date of filing the opposition application. Failure to file within the prescribed period will be deemed a waiver of the right to submit supplementary evidence.
(2) Acceptance
After receiving the opposition application, the Trademark Office will conduct an examination on formalities of the application documents. If the application satisfies the requirements for acceptance, the Trademark Office will issue an Official Filing Receipt to the opponent. If the application does not satisfy the requirements for acceptance, the Trademark Office will, depending on the specific circumstances, issue a Notification of Rectification or a Notification of Non-Acceptance.
(3) Response
When the opposition application satisfies the acceptance requirements, the Trademark Office will send a copy of the opposition documents to the opposed party and require the opposed party to file a response within 30 days from the date of receipt of the Notification of Response to Trademark Opposition. If the opposed party fails to file a response, it shall not affect the Trademark Office in making its decision. Should the opposed party wish to submit supplementary evidence, he/she shall indicate the same in the response documents and file such evidence within three months from the date of filing the response. Failure to file within the prescribed period will be deemed a waiver of the right to submit supplementary evidence.
(4) Examination Decisions
The Trademark Office will conduct a substantive examination of the opposition grounds, response opinions, and evidentiary materials, and make a decision on whether to approve the registration based on the facts and grounds presented by both parties:
i. Where the opposition grounds are justified, the Trademark Office will issue an Opposition Decision, disapproving the registration of the opposed trademark.
ii. Where the opposition grounds are not justified, the Trademark Office will issue a Decision of Approving the Registration to the opposed trademark, issue a trademark registration certificate, and publish an announcement to that effect.
iii. Where the opposition grounds are partially justified, the Trademark Office will issue a Decision of Partially Approving the Registration to the opposed trademark, specifying which goods/services are approved and which are refused.
(5) Remedies
If the opponent is dissatisfied with the Trademark Office’s Decision of Approving/Partially Approving the Registration, he/she may, after the opposed trademark has been registered, file an application for declaration invalidation of the registered trademark in accordance with the law. If the opposed party is dissatisfied with the Trademark Office’s Opposition Decision, disapproving the registration of the opposed trademark, he/she may file a review on disapproving the registration within 15 days from the date of receipt of the opposition decision. Further, dissatisfied with the review decision on disapproving the registration, the opposed party may file an administrative lawsuit with the people’s court within 30 days from the date of receipt of the Decision of Review.
II. Documents required for filing the trademark opposition
When filing a trademark opposition, the opponent shall file the following materials:
1. Application for Trademark Opposition
The Application for Trademark Opposition shall specify the following information relating to the opposed trademark: name, classes of the designated goods/services, the trademark application number; the date of preliminary approval publication, the publication number, as well as the names, addresses, and contact details of the opponent and the opposed party.
In addition, the Application for Trademark Opposition shall clearly state the opposition grounds, facts and legal basis, and attach relevant evidentiary materials. If there is a large amount of content, a separate “Statement of Grounds for Opposition” may be attached.
2. Identity Documents of the Opponent
If the opponent is a natural person, a copy of the resident identity card, passport, or other valid identity document shall be submitted; if the opponent is a domestic legal entity or other organization, a copy of the a duplicate copy of business license, certificate of legal institutions unit or other documents proving its legal status shall be submitted, with the official seal affixed; if the opponent is a foreign entity or other organization, Certificate of Good Standing/Existence of the foreign entity shall be submitted.
3. Power of Attorney
Where a trademark agency is entrusted to file an opposition application, a power of attorney shall be submitted. The power of attorney shall specify: the name and address of the entrusting party; the number and name of the opposed trademark; the scope of delegated authority; the specific matters entrusted; and the date of execution. If the opponent is a foreign entity, or an entity from the Hong Kong Special Administrative Region, or the Macao Special Administrative Region, or the Taiwan Region of China, it shall entrust a legally established trademark agency to handle the application.
4. Documents Proving the Opponent’s Qualification (Applicable to opposition applications filed on relative grounds)
Where the opposition is filed upon relative grounds, materials proving that the opponent is a prior rights holder or an interested party, namely documents proving the opponent’s qualification, shall be submitted. Such documents include:
(1) Where the opposition is filed upon being identical to or similar with others’ prior trademark registrations, it is required to submit materials that prove the ownership of the prior registered trademark rights, such as a trademark registration certificate, certified copy of trademark registration or trademark information sheet;
(2) Where the opposition is filed upon being identical to or similar with prior trademark applications, it is required to submit materials that prove the ownerships of the prior trademark applications, such as Official Filing Receipt and/or Publication of Preliminary Approval or trademark information sheet;
(3) Where the opposition is filed upon claiming prior use, it is required to submit evidence of prior use, such as contracts of license, sales invoices, advertising and promotional materials, and other materials that can show the trademark used, the goods or services concerned, and prove the time, user, territory, and influence of the trademark used;
(4) Where the opposition is filed upon infringement on other prior rights, it is required to submit proof of other prior rights, such as certificate of copyright registration, documentary evidence of rights on entity’s trade name; evidence of rights of domain name;
(5) Where protection of a well-known trademark is claimed, it is required to submit evidence relating to the well-known status of the trademark, including the degree of awareness of the trademark among the relevant public, the duration of use, and the duration and geographical scope of promotional activities;
(6) Where the opposition is filed upon the ground of geographical indication protection, it is required to submit materials relating to geographical indication, such as announcements recognizing the product as a geographical indication product, or registration certificates for collective or certification marks;
(7) Where the opposition is filed upon the ground of the trademark being preemptively registered by an agent, representative, or other party in other contractual or business relationship, it is required to submit evidence proving the corresponding relationship, such as agency agreements, distribution agreements, business correspondence, and other relevant materials.
Conclusion
The trademark opposition procedure is an important line of defense for the protection of trademark rights. Through standardized procedural operations and adequate evidence preparation, it can effectively prevent trademarks from being improperly registered and uphold the lawful rights and interests of market participants, as well as the order of fair competition. Parties should prepare application documents within the statutory opposition period and strictly in accordance with legal requirements, so as to ensure that their opposition claims are fully examined and supported.
