BKIP Limited

COPYRIGHT BKIP 2019
Opposition to PRC Trademark Application Jan 2019
Oppositions should be filed within 3 months from the date of publication in the Chinese Trademark Gazette (if an application is published on 13 March, the deadline to oppose will fall on 13 June). The deadline is non-extendable.
The grounds on which opposition can be lodged
An application may be opposed on "absolute grounds" or "relative grounds". The relevant provisions are provided below.-
Absolute grounds
Applications may be opposed on absolute grounds as follows (according to Articles 10, 11 and 12 of the Trademark Law):-
 Article 10 prohibits registration of trademarks that resemble the name of a country, national flag, emblem, anthem, army flag, army emblem, military song or medal of a country; or marks that resemble the names, flags or emblem of intergovernmental organizations, the Red Cross and the Red Crescent; or marks that are ethnically discriminatory, or deceptive with respect to the quality, origin or other characteristics of the designated products; or marks that resemble the names of well-known foreign place names. Article 10 also prohibits registration of trademarks that may have a negative effect on social morality or may cause other negative social influence.
 Article 11 prohibits registration of trademarks that are only generic name, graphics or model number of the designated goods/services, or marks that describe the quality, materials, features and functions, weight, quantity or other characteristics or trademarks that are lack of distinctiveness.
 Article 12 prohibits registration of three-dimensional marks that are in the shape generated exclusively from the nature of the products, or the shape that is necessary to accomplish the technical effect, or the shape that enables the products to achieve their substantive value.
Relative grounds
Applications may be opposed on relative grounds as follows (according to Articles 13, 15, 30, 31 and 32 of the Trademark Law):-
 Article 13 stipulates protection to prior famous trademarks. For prior registered famous trademarks, protection may be extended to dissimilar products/services, if the mark will mislead the consumers with respect to the origin of the goods, and if the interests of the prior registrant may be prejudiced. For unregistered prior famous marks, the protection is limited to similar goods/services.
 Article 15 deals with the circumstance where an agent or representative seeks trademark registration of the principal's trademark in the absence of the principal's prior consent, and the principal files an opposition. This article also applies to situation where the applicant is aware of other party's trade mark through agreements, contracts or other relationships prior to filing.
 Article 30 applies where the opposed trademark is similar to other’s prior registered or preliminarily approved trademarks in respect of identical/similar goods.
 Article 31 applies if the opposed trademark application is similar to the subject of a prior application in respect of identical/similar goods.
 Article 32 also prohibits registration of other's trademark that had been actually used in China on the same or similar goods and that substantial reputation has been acquired via actual use.