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Distinctions between trademark opposition and declaration of invalidation Mar 2020
In the course of business of companies, they may face trademark opposition and trademark invalidation. So, what is the distinctions between trademark opposition and invalidation? What are their respective examination subjects and standards of examination? This article will provide comparisons to explain about the two major procedures of the trademark legal practice.
1. Legal basis
According to Article 33 of Trademark Law of PRC: If a holder of prior rights or an interested party considers that the trademark announced upon publication is in violation of the second or third paragraph of Article 13, Article 15, the first paragraph of Article 16, Article 30, Article 31, or Article 32 of this Law, he may, within three months from the date of the publication announcement, raise objections to the trademark office. Any party that is of the opinion that the aforesaid trademark is in violation of Article 10, Article 11 or Article 12 of this Law may raise objections to the trademark office within the same three-month period. If no objection is raised upon expiry of the announcement period, the trademark office shall approve the registration application, issue the certificate of trademark registration, and make an announcement thereon. This Article is categorised in Chapter III “Examination and Approval of Trademark Registration” of the Trademark Law. Trademark opposition is only for “trademark announced upon publication”, in other words, trademarks that are in the stage of “publication announcement”. Customarily, it is interpreted as opposition can only be filed within the period of publication announcement against trademarks that have obtained the publication announcement number. According to the requirements of the Trademark Law, the registration application of trademark will only be approved if no objection is raised upon expiry of the announcement period, and thus issue the certificate of trademark registration. That is to say that trademarks upon publication announcement have not been approved for registration, and are not trademarks in the legal sense.
Moreover, articles regarding declaration of invalidity of trademark are categorized under Chapter V “Declaration of the Invalidity of Registered Trademarks”. Article 44 of Trademark Law provides that: A registered trademark shall be declared invalid by the trademark office if it is in violation of Article 10, Article 11 or Article 12 of this Law, or its registration is obtained by fraudulent or other illegitimate means. Other entities or individuals may request the trademark review and adjudication board to declare the aforesaid registered trademark invalid. In other words, trademarks that can be declared invalid have procedurally been successfully registered, and are registered trademarks in the legal sense.
2. Distinction in the bodies responsible for acceptance and review
After the restructuring of the National Intellectual Property Administration, the body responsible for the acceptance and review of trademark opposition is the China Trademark Office. The body responsible for the acceptance and review of declaration of invalidity of trademark is the Trademark Appeal Board. When the registrant receives Notification on Acceptance during the procedure of opposition or declaration of invalidity, he can find out the difference between the bodies from the seal of the national authority at the bottom right hand corner of the document.
3. Distinction in timing of application
As mentioned, trademark opposition targets “trademark upon publication announcement”. Holders of prior right and interested parties may file an opposition to the Trademark Office within three months from the date of the publication announcement. While, declaration of invalidity of trademark targets trademarks which have already obtained the certificate of registration. According to the requirements of the Trademark Law, holders of prior right or interested parties may request the Trademark Review and Adjudication Board to declare the registered trademarks invalid within five years from the date of registration of that trademark (ie the date of the announcement of the registration). As to malicious application, holders of famous trademark are not limited by the five-year period.
4. Distinction in the basis of review
The Trademark Office is responsible for both trademark registration and ruling of trademark opposition. The focus and standard of review are the same – mainly on whether the trademarks amount to similar trademarks (two conditions - same or related products, similar diagram must be present to rule that they are similar trademarks). Considerations on the degree of social impact and, the scope of use of the product and the popularity of the brand are relatively weaker. If the opposer has an obvious proof of the hostility of trademark squatting, overly-harsh honour, possession of greater influence and scope of common market sale, then he is very likely to win the opposition case.
The procedure of declaration of invalidity of registered trademark is reviewed by the Trademark Review and Adjudication Board. It is a supervisory review body of the Administration. The major consideration in the review is the honour of the brand of the right holder, the popularity in market, the social influence and whether the co-existence of the trademarks is beneficial to the positive development of the industry. The consideration is beyond merely the similarity between the trademarks.
5. Distinction on the time limit for review
The time limit for the review of trademark opposition is twelve months from the date of the expiry of announcement. The Office shall make a decision as to whether or not to approve registration, and then notify the opposer and the opposed party on paper. If there are any special circumstances requiring an extension, the time limit may be extended for six months upon approval. The time limit of trademark opposition and the date of publication announcement of that trademark are highly related.
The time limit of declaration of invalidity is twelve months from the date of receipt of application for declaration. The Board shall make a judgment as to whether or not to maintain the registered trademark or to declare the registered trademark invalid, and then notify the parties on paper. If there are any special circumstances requiring an extension, the time limit may be extended for six months upon approval. The time limit of declaration of invalidity and the date of receipt of application by the Board are highly related.
In practice, there is a colossal distinction between the opposition and declaration of invalidity of trademark. I have made a practical analysis on the two from the above five perspectives. I hope this article is of some help to you.