Provisional Refusal Based on Opposition of an International Application Designating China
2021-04-28
Borsam IP
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For a Chinese national trademark, the opposition window opens after the substantive examination completed. CNIPA will issue a Notification of preliminary approval of the trademark application and publish the trademark application on the Trademark Gazette for the opposition, i.e. three months from the publication date. But different with the national trademark, the opposition for an international application shall be filed within three months after the first day of the following month since the World Intellectual Property Organization organizes the publication of the International Trademark Announcement. That means the publication is before the examination of the national trademark offices, so it may cause that the application was refused by both opposition and refusal, which is common for a Madrid international application.
What is the difference of a Notification of Ex Officio Refusal and Notification of Provisional Refusal Based on an Opposition for an International Application?
A. Notification of Ex Officio Refusal
An international application designated China will be passed to Intellectual Property Administration of China (CNIPA) for substantive examination. During the substantial examination, the Trademark Office will examine the registrability based on national law, when a provisional refusal may be issued based on absolute and relative grounds.
The provisional refusal based on absolute grounds refers to trademarks that do not meet the basic requirements such as distinctive character, consisting of prohibited factors or illicit intention of registration of the applicant. The relative grounds for refusal are mainly based on identical or similar trademarks or prior rights, and interest that should be protected legally.
B. Notification of Provisional Refusal Based on an Opposition
Differing from the national trademark process that a trademark with preliminary approval will be published after substantial examination being done, the opposition procedure of international registration is a proposed procedure, and the opposition is filed before the substantive examination. Since the opposition occurs during the prescribed period of issuing a provisional refusal, CNIPA conducts the substantive examination and the opposition procedure in parallel. According to paragraph 2 of article 45 of Regulation on the Implementation of the Trademark Law of China, the Trademark Office shall notify the International Bureau of any opposition in the form of refusal. Therefore, the Notification of Provisional Refusal Based on An Opposition is actually a Notification of Responding to Opposition in the form of provisional refusal, rather than a refusal resulting from the official substantive examination.
C. Why do you receive both Notification of Ex Officio Refusal and Notification of Provisional Refusal Based on an Opposition for the same trademark?
As we mentioned before, the international application is published by WIPO prior to the examination by the national trademark offices, and the Ex officio refusal may be issued based on absolute or relative grounds. The opposition period and the examination period of each office are overlapped in the initial 4 months, and they are different procedures given to different entities by the trademark law. Hence, the opposition procedure may be activated whenever no matter the examination is started or not, and also, the examiner will make a decision based on the absolute or relative grounds no matter an opposition raised. But that doesn’t mean those procedures will go to the end parallelly, to the contrary, the decision of the opposition will rely on the examination result.
Flowchart of the opposition of an international application
As shown above, in judicial practice, CNIPA usually conducts the substantive examination before issuing the decision of opposition. Once the trademark is refused in the substantive examination, the opposition actually loses its subject, and the procedure would be terminated. The examination on the opposition will only go forward if the examiner doesn’t refuse this application in the substantive examination.
How to file an opposition for an international application?
The time limit to file an opposition regarding the international application is three months beginning on the first day of the month following the trademark publication date. The deadline is non-extendable, but the opponent may submit statement and evidence within the three-month supplement period.
Any third parties are entitled to oppose a pending application existing absolute grounds for rejection to registration, such as being devoid of the genuine intention of use or distinctive characters, or existing circumstances that prohibited to use or register as trademarks which are prescribed under article 4, 10, 11, 12 and 17(4) of The Trademark Law of China, while an opposition based on relative grounds should be filed by a prior rights holder or an interested party, claiming the violation on article 13(2), (2), 15, 16(1), 30, 31 or 32 of the Trademark Law. The provisions regulate protection of prior filed or registered trademarks similar to the pending trademark and earlier rights, e.g. trademark, copyright, trade name and domain name right, etc. The opponents should provide evidence to support the claimed rights, such as a certificate of copyright/domain name/trademark registration.
Comments
For most people who used to focus on Chinese national trademark publication merely, they are likely to ignore the publication by WIPO but keep on eyes of the Trademark Gazette of CNIPA. Hence, if a national application meets a high risk of opposition, the applicant may consider getting an international registration first and then designating on China for extended protection. By this way, the application may probably get around the monitor of the potential opponent and reduce the chance of receiving opposition.
If the opposition raised, it is suggested to take the chance of presenting arguments and evidence to overcome the obstacle and enhance the likelihood of successful registration. The substantive examination is influential, but the opposition can also hinder the registration even the trademark is not refused during substantial examination stage. Taking fair use of every chance to fight for the application is undoubtedly conservative and least-risky.
References:
1. <How to Acquire Trademark Protection in China through International Registration under Madrid System>: http://www.cpt.cn/uploadfiles/20121025162114697.Pdf
2. < China: Provisional Refusal Based On Opposition Concerning International Registrations Designating China>: https://www.mondaq.com/china/trademark/930390/provisional-refusal-based-on-opposition-concerning-international-registrations-designating-china
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