Introduction
You’ve just come up with a catchy name for your new business, but there’s one crucial step before you can start splashing that name everywhere—ensuring no one else has a claim to it. This is where the world of trademarks and, specifically, trademark oppositions come into play. Think of a trademark opposition as someone raising their hand and saying, “Wait a minute, that name is too close to mine, they can’t have it.” A trademark opposition is when brands challenge others they believe to be stepping on their toes. In this post, I discuss how the trademark opposition process unfolds in places like China and the European Union, all with an eye towards convincing you of how crucial this little-known stage can be in the life of a brand.
Trademark Oppositions in General
When a trademark application is filed with a national trademark office, such as the China National Intellectual Property Administration (CNIPA) or the United States Patent and Trademark Office (USPTO), the office will publish the application and allow a period of time for oppositions to be filed. The length of this opposition period varies by jurisdiction.
An opposition must be based on specific legal grounds, such as:
- The trademark is identical or confusingly similar to an earlier-filed trademark.
- The trademark is descriptive or generic and therefore cannot be registered.
- The trademark is used in bad faith.
Once an opposition is filed, the trademark office will consider the merits of the case and issue a decision. The decision may be to deny registration of the trademark, to allow registration to proceed, or to take some other action, such as requiring the applicant to make changes to the trademark.
China Trademark Oppositions
The opposition period in China is three months. In practice, trademark applications by foreign brands are rarely opposed. This is because the CNIPA takes a proactive approach to screening trademark applications and will often refuse applications that are likely to be opposed.
However, foreign brands may still need to file trademark oppositions in China, particularly if they are concerned about bad-faith trademark applications. Bad-faith trademark applications are often filed by trademark squatters who hope to profit from the trademark registration of another party.
The procedure for filing a trademark opposition in China is relatively simple. The opposition must be filed with the CNIPA within three months of the publication of the trademark application. The opposition must be accompanied by a filing fee and a statement of the grounds for opposition.
After an opposition is filed, the trademark applicant has 30 days to respond. The parties then have an additional three months to submit additional evidence. After the evidence is submitted, the CNIPA will issue a decision within 12 months of the end of the opposition period.
To learn more, check out China Trademark Oppositions: They Work!
European Union Oppositions
In the European Union (EU), trademark applications are first reviewed by the European Union Intellectual Property Office (EUIPO). However, unlike in China and the United States, the EUIPO does not review trademark applications for possible conflicts with earlier trademarks. This means that it is up to the owners of earlier trademarks to file trademark oppositions to challenge applications that they believe are likely to conflict with their rights.
The opposition period in the EU is three months. The opposition must be filed with the EUIPO and must be accompanied by a filing fee and a statement of the grounds for opposition.
After an opposition is filed, the trademark applicant has 30 days to respond. The parties then have an additional three months to submit additional evidence. After the evidence is submitted, the EUIPO will issue a decision within 12 months of the end of the opposition period.
Trademark Opposition Strategy Advice
Your brand’s identity is uniquely yours, but the reality is that other brands sometimes drift too close to your territory. That’s where trademark oppositions come in – they can be used to ensure no brand is too close to another Whether you’re just launching a new brand or have been in the market for years, understanding the intricacies of trademark opposition is crucial. By filing a well-prepared and timely opposition, you stand a better chance of preventing the registration of trademarks that may blur the lines between your brand and another.
Filing a well-prepared and timely opposition greatly improves your chances of preventing registration of conflicting trademarks. Here are some strategies for boosting your prospects of success:
- Carefully consider the grounds for opposition and ensure they are supported by solid evidence. The most common grounds are likelihood of confusion with your existing mark, or the proposed mark being merely descriptive.
- Be specific and concise in making your arguments. Avoid vague assertions and focus on how the proposed mark precisely conflicts with your rights.
- Submit any use-based evidence you have, like marketing materials showing date of first use. Use-based rights strengthen your case.
- Research not just identical marks but any similar variations to uncover prior rights you can assert. Even modest variations could help your case.
- For non-use oppositions, carefully comb through registration databases to find any prior registered marks that could support opposition, even if forgotten or abandoned.
- Stay on top of deadlines and fully comply with opposition filing requirements to avoid procedural deficiencies.
- Consider enlisting an experienced trademark attorney to draft and file the opposition to maximize quality of content and argumentation.
- Be prepared to counter the applicant’s response and do not assume that your initial opposition filings will be sufficient. Further evidence and rebuttals may be needed.
- Weigh the costs, risks, and benefits of litigation if you do not prevail initially and wish to escalate the dispute through courts.
With the right diligence, expertise and strategy, your opposition will have a better chance of preventing registration of trademarks likely to cause market confusion and dilution to your own brand rights.
Conclusion
Understanding and utilizing trademark oppositions can be your first line of defense in ensuring your brand’s unique voice does not get drowned out. Arm yourself with information, seek expert advice when needed, and be proactive in protecting what’s rightfully yours.
