Trademark Invalidation and Opposition in China

An opposition is a proceeding in which the plaintiff seeks to prevent the issuance of a registration of a mark on the registrar. Any interested person who believes that he would be damaged by the registration of a mark or any person who believe that public interested will be damaged may file an opposition, but the opposition may be filed only as a timely response to the publication of the mark (within 3 months of publication). An opposition proceeding is adjudicated by the China Trademark Office.

An invalidation proceeding (previously called cancellation) is a proceeding in which the plaintiff seeks to invalidate or cancel an existing registration of a trademark. The proceeding may only be filed after the issuance of the registration. A petition for cancellation may be filed by an interested person who believes that he is or will be damaged by the registration of the mark. The invalidation proceeding is handled by the Trademark Review and Appeal Board.

For opposition proceeding, the China Trademark Office should make a decision within 12 months after the publication of mark, extendable to 18 months.
For invalidation proceeding, the Trademark Review and Appeal Board should make a decision within 9 months after receiving the invalidation petition.

The grounds for opposition and invalidation proceedings are quite similar. Common grounds include:

• The trademark in issue will be used on identical or similar goods is a copy, imitation, or translation of your well-known trademark which has not been registered in China and may easily cause confusion.
• The trademark in issue will be used on different or dissimilar goods is a copy, imitation, or translation of your registered well-known trademark, may mislead the public, and may cause damage to your interest.
• The applicant or registrant of trademark in issue is one of your agents or representatives, who tries to register your trademark without authorization.
• The applicant or registrant of trademark in issue has any contractual, business or other relationship with you and knows the existence of your unregistered trademark, but still applies to register a trademark similar to your unregistered trademark.
  The trademark in issue is identical with or similar to your priorly registered trademark on identical or similar goods.
• The trademark in issue may infringe upon your existing prior rights, such as copyright, design, personal name right, and trade name right.
• The applicant or registrant of trademark in issue registers your unregistered trademark with a certain reputation in bad faith.

For opposition proceeding, if you lose the opposition proceeding, the trademark registration will be granted. You will need to raise an invalidation proceeding before the Trademark Review and Appeal Board (the “TRAB”). If you win, the application of trademark in issue may raise an appeal to the TRAB. The TRAB’s decision is judicially reviewable by the Beijing Intellectual Property Court, whose judgment can be appealed to the Beijing Higher People’s Court.

For invalidation proceeding, TRAB’s decision is judicially reviewable by the Beijing Intellectual Property Court, whose judgment can be appealed to the Beijing Higher People’s Court.