By King and Wood Mallesons
On February 18, 2020, the Trademark Office(TM office) of the China National Intellectual Property Administration (CNIPA) issued a notice named Online Publication of the Decisions on Trademark Oppositions. TM office announced in the notice as following: To enhance the transparency of the trademark opposition examination, strengthen social supervision, promote law-based administration, we decide to publish decisions on the trademark oppositions online. The decisions will be published on the China National Trademark website (http://sbj.cnipa.gov.cn/) within 20 working days after delivered, except where any of the following circumstances:
- Commercial secrets or personal privacy are involved;
- The party made written request for the decisions to be private and the TM office consider the request as reasonable ;
- Other special circumstances where the decisions are considered inappropriate to be published online.
As of March 20, 2020, the TM Office has published a total of 221 opposition decisions. By analyzing the published decisions, we found that:
1.Counting by success rate: The success rate of the opposition (including not approved for registration and partially approved for registration) is 44%
According to the results of the published trademark opposition decisions, the success rate of the opposition is 44% when the opposition is tenable. The details are shown as follows：
2.Counting by opponents: The extraterritorial opponents account for 24%
Amongst all the publicized 221 opposition decisitions, we notice 76% of the cases are raised by Mainland Opponents while 24% are from opponents outside Mainland China, including Hong Kong SAR, Macau SAR and Taiwan Province.
3.Counting by the classes: Trademarks in class 35 (advertising and promotion services) have been opposed the most frequently
There are 30 cases in relation to trademarks in class 35 (advertising and other services), which accounts for the largest proportion among the 221 published opposition decisions, followed by class 33 (alcoholic beverages), class 25 (clothing, shoes and hats), class 30 (coffee, desserts, seasonings, etc.), class 29 (meat, frozen fruits, dairy products, etc.), class 5 (medicine, baby food, germicide, etc.), class 41 (education, training, cultural and sports activities, etc.), class 9 (equipment and instruments for scientific or research purposes, audiovisual and information technology equipment, etc.) and class 3 (non-medicated toiletry preparations and grooming preparations).
4.Among the successful opposition cases, the most invoked articles are Article 30 of prior similar trademarks.
In the 97 successful opposition cases (including 74 cases of not approved for registration and 23 cases of partially approved for registration), a total of 84 case decisions invoked Article 30, including 67 cases in which decisions were solely based on this article.
Comments and Recommendations
In 2019, the total number of trademark opposition applications was 141,703, with 89,865 cases concluded. 41,837 applications for trademark registration were rejected (including partial refusal decisions), and the success rate was 46.56%, which is roughly equivalent to the success rate of opposition obtained through analysis of public documents. A trademark opposition procedure initiated by a third party can handle problems that are difficult to find during the initial examination procedure. Therefore, it is an effective means for rights holders to safeguard their trademark rights and prevent others from registering and using similar marks on the same or similar goods.
On the contrary, if the opposed party wins the trademark opposition procedure, he will be able to obtain a trademark registration certificate, which means that the trademark opposition procedure plays an important role in the use and management of the trademark. The TM Office’s publishment of the trademark opposition decision this time will make the examination and trial rules clearer and more directional. It is of reference significance for trademark applicants, interested parties and agencies in terms of the invoking of articles of law for opposition and judgment of trademark trial rules.