China adopted the third amendment to its Trademark Law on 30 August 2013, with effect from 1 May 2014.
The amendment simplifies application procedures, restructures opposition proceedings, targets bad-faith registrations, strengthens protection for well-known marks, increases sanctions for infringement and tightens regulation of trademark agencies. The changes to opposition proceedings are fundamental and deserve particular attention from applicants.
1. Limits on who may oppose and on the grounds available
Under the earlier law, anyone could oppose a preliminarily approved and published mark on any statutory ground. The broad entitlement had encouraged abusive oppositions, harming right holders and consuming administrative and judicial resources.
Under the amended law, prior right holders and interested parties may oppose on the relative grounds in Article 13(2) and (3), Article 15, Article 16(1), and Articles 30, 31 and 32. Anyone may oppose on the absolute grounds in Articles 10, 11 and 12. The amendment therefore distinguishes the grounds available according to the opponent’s standing.
An opponent relying on relative grounds must establish its identity, for example with a company registration document, and its status as a prior right holder or interested party, and explain the applicable statutory grounds. These requirements are expected to reduce abusive oppositions and improve the efficiency of responses.
2. A simpler opposition procedure
Under the earlier system, either the opponent or the opposed applicant could request review by the Trademark Review and Adjudication Board (TRAB) of the Trademark Office’s opposition decision, and could challenge the review decision through administrative litigation.
Under the amended law, if the Trademark Office rejects the opposition, it approves registration directly. The opponent cannot request opposition review, but may seek invalidation of the registered mark before the TRAB under Articles 44 and 45.
If the Trademark Office refuses registration following an opposition, the applicant may request review. If the TRAB then finds that the opposition does not justify refusal, the mark proceeds to registration; the opponent cannot challenge that registration decision through the former opposition-review litigation route. If the TRAB upholds the refusal, the applicant may bring an administrative action.
Thus, an applicant faced with a refusal retains review and litigation remedies, while an unsuccessful opponent must move to the separate invalidation procedure after registration. Opponents should make full use of the initial opposition stage and submit the strongest available grounds and evidence to prevent registration.
3. Shorter examination periods
At the time of the article, opposition proceedings commonly took more than three years. The amended law requires the Trademark Office to decide an opposition within 12 months after the publication period ends. In special circumstances, an extension of six months may be approved. The TRAB must decide an applicant’s review of a refusal within 12 months after receiving the review request, also subject to an approved six-month extension in special circumstances.
These limits are expected to shorten the registration process substantially. The original article also anticipates tighter practical schedules for supplementary documents and responses, although the detailed deadlines had not yet been specified at publication. Both opponents and applicants should therefore prepare to respond promptly.
4. Suspension of review proceedings
Where an applicant seeks review of a refusal arising from opposition, and the determination of relevant prior rights depends on another case before a court or administrative authority, the amended law allows the TRAB to suspend the review. Review resumes once the reason for suspension has been resolved. An applicant’s cancellation action against a cited earlier mark may, for example, provide a basis for seeking suspension.
Express provision for suspension helps coordinate related proceedings and gives both parties time to resolve the underlying rights dispute. Parties should consider using this procedure where the circumstances justify it.
