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A Brief Introduction to the Primary Points to be Considered When Filing Opposition Based on Article 31 of Trademark Law
Sophia XIAO
Trademark Attorney Linda Liu & Partners
As people’s awareness of trademark law is rising year after year, more and more trademark oppositions are filed as an efficient instrument to defend their own rights. It is reported that the number of oppositions filed in China exceeded 18,000 in 2007. Evidence shows that trademark opposition plays a very important role in reducing rights conflicts, avoiding confusion between trademarks and prohibiting preemptive registrations. However, we also notice that the success rate of opposition is far below 50%. Although some of the oppositions are decided not to be justified because they are malicious oppositions or the opponents are eager to protect their own rights and thus filed oppositions without reasonable basis. Many cases show that the opponent cannot collect or submit sufficient evidence to invalidate the right, or the evidence is collected without careful attention. As a result, the claim of invalidation cannot be supported by sufficient evidence. Therefore, we would like to take this opportunity to briefly explain you how to submit relevant evidence according the specific opposition case. The cases applied in Article 31 of Trademark Law are taken as examples.
According to the provisions of Article 31 of Trademark Law, an application for registration of a trademark shall not create any prejudice to the prior right of another person, nor unfair means be used to preemptively register the trademark of some reputation another person has used. This article is one of the most important articles we use in current practice of trademark opposition. When a claim based Article 31 is proposed, the submitted evidence should be emphasized according to circumstances as different claims on different prior rights, the other party’s malice, the opponent’s prior use of the trademark, and so on.
I. Claims on different prior rights
There are provisions on prior trademark rights in Article 28 and Article 29 of Trademark Law. “Prior rights” in these articles refer to the prior rights of copyright, design patent, trade name, patent right (utility model), portraiture right, name right, etc. therefore, when a claim of prior right is proposed, the following evidence should be emphasized.
1. When a claim of copyright is proposed, copyright registration certificate, the prior publication or printed materials of the production should be submitted.
2. When a claim of design patent is proposed, the patent certificate or annual fee payment certification should be submitted.
3. When a claim of trade name right is proposed, a business license bearing the trade name, registration and advertising materials, and commercial documents such as contracts and invoices bearing the trade name, should be certified and submitted. Please notice that the date of registration and the use of the trade name should be earlier than the application date of the opposed trademark. The reputation of the trade name in the relevant Chinese market should also be explained and quoted. In addition, the party should prove that the registration and use of the opposed trademark is likely to cause confusion and misrecognition among consumers.
II. Claims on unfair means in registration
As the subjective malice is hard to be directly proved, the opponent usually submits relevant objective evidence in order to form the evidence chain to prove the subjective bad faith of the opposed. For instance, the following evidence can be included.
1. Evidence to prove the opposed party knows or should know the opponent’s prior use of the trademark, such as both parties are in the same business field of the same region, with same or similar marketing channels and scopes; they have bad business or cooperation relationship before the application date of the opposed trademark; they have had dispute, etc.
2. Evidence to prove the opposed trademark is an imitation or copy of the opponent’s prior used trademark, such as the trademark is originally created and used on the product and registered by the opponent, which is not a common word that anyone can imagine. The analysis of the imitation of the original, which shows the opposed mark and the opponent’s trademark are identical or similar can also be evidence.
3. The relevant evidence to prove the designated goods or services constitute similarity, such as the definition of the designated goods by dictionary or relevant authority.
It is known that if the opponent expects to extend the protection to unregistered trademark of dissimilar goods or services, the provisions of Article 13 of Trademark Law regarding well-know trademark should be cited.
III. Claims on prior use and reputation
In order to prove the prior use, legal evidence before the application date of the opposed trademark should be submitted, for example the contracts, invoices, bill of lading, importing and exporting certificates of the designated goods or services which bear the opponent’s trademark: exhibition and exposition materials; newspapers, magazines, TV and outdoor media, other advertising materials that bear the mark, etc. Although the requirement of the evidence is not as strict as those for the recognition of a well-know trademark, article 31 requires the valid use evidence as much as possible to prove the reputation of the mark. Furthermore, if the opponent have used the trade name against other’s infringement, the corresponding evidence will be beneficial to the opponent. The opponent’s sponsorship or attending commonweal activities and various awards or honors are also of advantage to prove its reputation.
In the above context, we have briefly introduced the key points when filing an opposition based on Article 31 of Trademark Law. We hope it will be helpful to the readers.
