Trademark oppositions work in China. I know this because we regularly file and win China trademark oppositions for our clients. In fact, just today I got word of yet another favorable decision from the China National Intellectual Property Administration (CNIPA).
Before we go any further, let’s explain what trademark oppositions are, for those unfamiliar with the subject. When an application to register a trademark is filed, CNIPA will first review the trademark application to make sure it doesn’t have any objections to the registration of the trademark (I say CNIPA here, but USPTO does the same for U.S. applications, IMPI does the same in Mexico, and so on). If it has no objections to the registration of the trademark, CNIPA will then “publish” the mark and give other interested parties a chance to raise their objections, in the form of trademark oppositions. In China, the opposition period is three months (compared to one month in the United States).
To illustrate how trademark oppositions work in practice, consider this made-up example, based on a very common scenario. Chinese company applies to register the trademark “ABC” in connection with certain apparel goods. Though no one else has applied to register the “ABC” mark, there is a U.S. company that has for the last few years been manufacturing apparel in China using the “ABC” mark.
As we regularly point out on this blog, China is a first-to-file country when it comes to trademarks. As a result, if the Chinese company successfully registers the trademark, it will have superior rights, meaning that the U.S. company’s ongoing use of the “ABC” mark could constitute trademark infringement. Needless to say, the Chinese company’s registration will prevent the registration of the “ABC” mark by the U.S. company.
The U.S. company is not entirely out of luck, though, and this is where trademark oppositions come in. According to China’s Trademark Law, a trademark application may not infringe upon another party’s “existing prior rights”, a concept that includes copyrights. If the U.S. company’s logo incorporates the ABC mark and otherwise meets the requirements for copyright protection, the Chinese company’s trademark application may infringe on the U.S. company’s prior right — that is, its copyright over its logo.
During its initial examination, CNIPA will only review trademark records. It will not review copyright records. A party that wishes to object on the grounds that another party’s trademark registration would infringe on its copyright has the burden of raising the objection, which it can do through trademark oppositions. And here’s the kicker: one need not formally register a copyright in China enjoy copyright ownership. In other words, even if you do not have a registered China copyright, you can use your (unregistered) copyright to oppose the trademark. I will save for a later post what constitutes an unregistered copyright in China, but for now, suffice to say that they do exist and we have successfully opposed Chinese trademarks on their basis.
Trademark oppositions can also be helpful in cases involving trademark squatting. Parties can oppose the registration of their trademark by a squatter. CNIPA is generally quite receptive to trademark oppositions filed against squatters, even when the opponent’s own use of the trademark in China is very limited.
Again, China trademark oppositions work. What’s more, they are relatively speedy and inexpensive. According to the Trademark Law, a decision must be handed down within a year of the end of the opposition period. And because the process is relatively streamlined, costs are reasonable. For these reasons, more and more foreign companies are not only filing trademark oppositions, but winning them as well, paving the way for their own trademark protection.
