TRADEMARK DISPUTES: OPPOSITION/ INVALIDATION/ CANCELLATION
1. What legal measures could be taken if any third party has applied-for or registered a trademark which is identical with or similar to your trademark in respect of similar goods?
For a preliminarily approved trademark publication, any party may file an opposition with the Chinese Trademark Office within 3 months from the publication date.
For a trademark has been granted for registration, a prior trademark registrant may file an application for cancellation of disputed mark with the Trademark Review and Adjudication Board (TRAB) within fives years from the date of approval of the trademark registration. For those trademarks registered before December 1, 2001 but have not been registered for five years, no such application for cancellation can be filed.
2. How to calculate the deadline for filing opposition against the trademark publications preliminarily approved by the Chinese Trademark Office? Whether such deadline can be extended?
The opposition period is 3 months from the date of publication. If the opposition deadline expires on the public holidays, the first working day after the holiday shall be regarded as the deadline for filing opposition. For example, if a trademark application is published on February 7, 2002. The opposition period should be from February 7, 2002 to May 6, 2002. Since May 6 and May 7 are Chinese national holidays, the deadline can be extended to May 8 which is the first working day after the holiday.
The opponent is not allowed file a request for extension of time for filing opposition.
3. How to calculate the deadline for filing opposition against International Trademark Registration applying for territorial extension into China?
The deadline for filing opposition against International Trademark Registration applying for territorial extension into China is within three months from the first date of next month after the publication of WIPO’s Trademark Gazette. For example, WIPO published Trademark Gazette on May 1 and May 30, the opposition period for all marks being published in both Gazettes is calculated from June 1, and ends on September 30.
4. What is the procedure to cancel a trademark registration which violates the provisions of prohibitory clauses of Trademark Law or was acquired improperly?
According to Article 41 of the Trademark Law, where a registered trademark stands in violation of provisions of Articles 10, 11 and 12 of this law, that is, the trademark registration violates the prohibitory clauses of Trademark Law, any party may file a request with the TRAB to cancel such registered trademark.
Where a registered trademark stands in violation of the provisions of Article 13, 15 16 and 31 of this law, that is, the trademark registration was acquired improperly, the owner of the mark or any interested party may, within 5 years from the date of registration, request the TRAB to cancel such a registered trademark.
5. Under what conditions a registered trademark can be canceled by the Trademark Office?
The registrant alters a registered trademark unilaterally, changes name, address or other registered matters without recrodal, or assigns the registered trademark without approval.
6. Whether a suit can be filed with court if the interested parties are dissatisfied with the decision or adjudication made by the Trademark Review and Adjudication Board (TRAB)?
Where the interested party is dissatisfied with the decision of TRAB, a law suit can be lodged with the people’s court within 30 days from receipt of the decision.
Currently, according to the appointment of Supreme Court, only Beijing No. 1 Intermediate Court has jurisdiction over trademark cases against TRAB or CTMO.
7. Whether an application for review or adjudication can be withdrawn if the applicant does not intend to proceed further?
Before the TRAB has made a decision or adjudication, the applicant may withdraw its application by explaining the reason in writing to the TRAB. If the application is withdrawn, the review and adjudication procedure is terminated. But if the TRAB only receives formal request for withdrawal the application after the decision or adjudication is made, it shall not affect the validity of TRAB’s decision or adjudication.
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