Trademark Opposition Strategy

The trademark is raised the opposition is very pervasive by person or organization during the process of registering the trademark. How to file the trademark opposition is very important.

Case Brief:

Jiangsu Heng Rui Medication Controlling Limited Company (hereinafter intitule protestant) received the information: Haffmy-Rosy Controlling Limited Company (hereinafter intitule person challenged) will register “邦诺”trademark in Class 5 in China. However, protestant registered the “诺邦”trademark in Class 5 in China. “邦诺” trademark and “诺邦” trademark is very closely similar and “邦诺” trademark will affect “诺邦”trademark exclusive right. Therefore, protestant will file the opposition.

Main Problem of the Case

• File the opposition procedure.
• File the opposition Strategy.

File the opposition procedure

• Any person may file an opposition to a trademark which has been give a preliminary examination and approval within three months from the day it was publicly announced.
• Anyone applying for trademark registering may not damage the existing rights of others obtained by priority, neither may it register, in advance, the trademark that has been used by others and has become influential.
• If a party disagrees with the decision of trademark office’s, it may apply to the Trademark Review and Adjudication Board for a re-examination with in 15 days from the day on which the notification of decision is received.

If a party doesn’t agree with the ruling of the Trademark Review and Adjudication Board, it may bring a suit before a People’s Court with in 30 days from the day on which the notification is received.

File the opposition Strategy

• Protestant must take an actively amicable settlement measure.
• Protestant should find and prepare a lot of evidence. For example, Protestant should prepare the relative market condition and sales volume, cooperation relations, the relations between the protestant and person challenged, protestant trademark is the far-fame trademark.
• Protestant should find a lot of reasons to file the opposition. For example, whether the trademark is the same mark or similar mark, whether the trademark infringes the formerly rights, whether the person challenged composes the malfeasance competition, whether the protestant trademark is the far-famed trademark, whether the trademark is malice application and so on.

Analysis:

Protestant should face to the trademark opposition actively and take many measures and strategy. Protestant may protect his trademark by raising the opposition if he try himself best to find and prepare a great deal evidence and make a strategy. As the above case, State Administration of Industry and Commerce make a ruling that the protestant’s application reason come into existence and “邦诺” trademark not be approved.

James Bai
Attorney at Law
Allen & John Law Firm