We are excited to announced that Yanyan Tang is the newest member of the Lawdit team. Yann is a Chinese Lawyer and Patent Agent specializing in intellectual property law, arbitration and litigation, and company compliances. Yann has joined the Lawdit team to be a UK trainee Solicitor, to become dual qualified.

We are dedicated to providing comprehensive legal service on Chinese trade mark contentious matters, covering trade mark monitoring, retrieval, administrative disputes and litigation, and other related unfair competition. Yann as well as the rest of our IP team will be on hand to discuss the following contentious matters in China.

Opposition against pending application

What is opposition?

When a trademark application has successfully passed pre-examination assessment, it is published on the CNIPA official website (http://wsgg.sbj.cnipa.gov.cn:9080/tmann/annInfoView/homePage.html). Any third party is entitled to file opposition against its registration on either absolute or relative grounds.

Who can oppose a trademark application?

Anyone can challenge the application based on absolute grounds but only the proprietor of earlier right including copyright owner of the mark may file an opposition on relative grounds.

When can opposition be filed?

There is an initial three-month opposition period following the date of the publication of the trademark on the CNIPA official website. Once the opposition period has expired, the opposition deadline cannot be extended.

How much does it cost to file an opposition?

If you want to oppose a trademark application, the government fee involved will be ¥500. There will also be legal fees payable. 

Cancellation or invalidation against registered trademark

What is cancellation or invalidation?

It is a legal procedure to cancel a registered trademark. The applicant may invalid a registered trademark on either absolute or relative grounds.

The common absolute ground for invalidation is that the trademark lacks distinctive character or being categorized as descriptive mark, or being recognized as a generic term for the goods/services which it is registered for.

The relative grounds for invalidation may include a trademark application filed in bad faith, which means that there is a proprietor of earlier right would conflict if it is registered. Additionally, the consequence alongside to cause confusion to the public regarding the source of goods and/or services which the mark is registered for. 

Who can initiate the process?

The trademark office can cancel a registered trademark on either absolute and/or relative grounds. Additionally, any third party can initiate invalidation process under the same circumstance before Trademark Review and Adjudication Board.     

When can cancellation or invalidation be filed?

An application can be filed within five-year period following the date of the subject trademark registration. One exception is that the invalidation process is open to the public without time limit if it is registered in bad faith.

How much does it cost to initiate the process?

If you want to initiate an invalidation process, the government fee involved will be ¥750. There will also be legal fees payable.

Revocation of registered trademark on the grounds of non-use within the period of three years following the date of completion of the registration procedure (or for any uninterrupted period of three years).

What is revocation based on non-use grounds?

It is a legal procedure to remove a registered trademark since it has not been used during a fixed period, normally three years as mentioned, without proper reasons.

Who can initiate revocation process?

The revocation is open to the public and the burden of proof of use is on the trademark owner.  

When can revocation be filed?

A revocation process can be initiated at any time after the trademark has been registered for at least three years.

How much does it cost to file revocation?

If you want to make an application for revocation, the government fee will be ¥500. There will also be legal fees payable.

Revocation of registered trademark on the grounds of becoming a generic term on the goods or services for which the mark is used.

What is revocation based on ‘a generic term’?

It is a legal procedure to remove a registered trademark since it becomes the common name for the goods and/or services for which it is registered. The reason for revocation is to cause a likelihood of confusion to the public.

Who can start revocation proceeding?

Anyone can apply for revocation.

When can revocation be filed?

An application can be filed at any time after a registered trademark has obtained non-distinctive character as generic terms.

How much does it cost to file revocation?

If you want to make an application for revocation, the government fee will be ¥500. There will also be legal fees payable. 

Review against the decision of trademark opposition

What is the review procedure?

If a trademark application is successfully registered in accordance with the decision of trademark opposition, the person who files an opposition could seek invalidation process to remove the registered trademark. By contrast, if the decision is to refuse a trademark application, the trademark applicant could request an appeal to re-examine its unfavourable decision.   

To whom do I appeal?

The competent authority is Trademark Review and Adjudication Board.

When can the appeal be filed?

An appeal within 15 days from the receipt of the decision can be filed. 

How much does it cost to file an appeal?

The government fee is ¥750. There will be legal fees payable.

Review against the cancellation/revocation/invalidation for trademark application

What is the review procedure?

It is a legal procedure to challenge the decision of cancellation/revocation/invalidation issued by the trademark office.

To whom do I appeal?

The competent authority is Trademark Review and Adjudication Board.

When can the appeal be filed?

An appeal within 15 days from the receipt of the decision can be filed.

How much does it cost to file an appeal?

The government fee is ¥750. There will also be legal fees payable.

Trademark administrative litigation

What is trademark administrative litigation?

If either party is unsatisfied with the decision made by Trademark Review and Adjudication Board regarding invalidation, cancellation or revocation for a registered trademark, the administrative litigation could be initiated before the People’s Court.    

Who have the right to challenge?

The trademark owner or the applicant who starts the contentious process before Trademark Review and Adjudication Board.

When can the litigation be filed?

Within 30 days following the receipt of the decision.

How much does it cost to start an administrative litigation?

The government fee is ¥100. There will also be legal fees payable. 

Request to be recognised as well-known trademark

What is well-known trademark?

The available routes to recognise well-known trademark include juridical and administrative process. Juridical process means that the owner can claim the protection of well-known trademark when being involved in trademark disputes in the court system. By contrast, administrative process means that the owner can seek well-known trademark protection when involving in trademark authorization and confirmation process.     

Who can claim the protection of well-known trademark?

The trademark owner whose mark has obtained global reputation and deserves a broader protection across different categories of goods and services.

When can the application be filed?

It differs from case to case.

How much does it cost to claim well-known trademark certificate?

Court fees are based on the value of the claim. Additionally, you may incur other costs such as attorney fees.