Trademark opposition

Trademark opposition aims to ensure fairness and transparency of the trademark registration process, and to protect the rights and interests of authentic right holders. There are generally two types of opposition applications: one is the oppositions made on absolute grounds (eg violation of laws and regulations, maliciousness, lack of distinctiveness, etc.), in that case anyone can file an opposition; the other one is the oppositions raised on relative grounds (eg identical or similar products, squatting of trademark registration, trade name rights, name rights, portrait rights and copyrights, etc.), in that case only interested parties can mount opposition. In most cases, oppositions are made on relative grounds.

An essential prerequisite for whether the Trademark Office will accept the opposition on relative grounds you filed is that you must be an interested party. Generally, there are three situations where one may be regarded as an interested party of a trademark. The first type is prior right holders with the same or similar prior trademark (including famous trademarks, geographical indications, prior trademarks of connected products or services under a different category); the second type is interested parties who infringes copyright, name right, trade name right, portrait right, and design patent right, etc; the third type concerns applicants who squat trademarks of others, and can amount to a substantive squatting relationship.

To satisfy the prerequisite of being an interested party, the next stage is important, which is to sort out and collect the exact reasons for your opposition. This is also a key step for your successful opposition. It can be said that the more organized and the clear your reasons, the greater the chance of success. Under normal circumstances, the success rate of opposition is higher if the following four situations are proved:

  1. Your trademark and the trademark you opposed to share the same sales channels and the same consumer group, and the co-existence of both trademarks in the market at the same time will cause confusion to the public;
  2. Your copyright or design patent rights are infringed;
  3. Your product enjoys a substantial reputation (unlike famous trademarks, reputation refers to the extent your product is known to a certain population in a certain area);
  1. Substantive squatting of trademark (by your agents, partners, suppliers, manufacturers, relatives, etc.)

After submitting your collated materials to the Trademark Office, it will determine whether to allow your opposition after a 12-month examination (in special cases it can be extended by 6 months).

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