Trademark opposition and defense strategies

• The reasons for trademark opposition applications and the presentation of facts are beyond the control of the trademark holder. However, the trademark holder has often completed the preliminary review of the trademark when it receives the trademark objection. Based on the 2022 Intellectual Property Office report, a total of 146,000 trademark opposition applications were reviewed, with a success rate of 56.9% (including a partial success rate of 11.8%) .
• If the trademark objection defense fails, the trademark holder can further assert its rights through a review of denial of registration (both the opponent and the respondent can apply). Based on the report, there were 3,005 reviews in 2022, with a success rate of 32.1% ( Including partial success rate 21.1%) .

At present, the proportion of opposed trademarks in the overall number of trademarks in my country is increasing year by year, and small and medium-sized enterprises are the main targets of opposition. Objection defense is a good opportunity for trademark applicants to refute the facts claimed by the other party and state relevant reasons. With an overall success rate of 50%, it is currently the lowest-cost remedy.

If you abandon this procedure and choose not to defend, the trademark will directly enter the opposition procedure, and the examiner will make a decision based on the evidence provided by the opponent. At this time, it will no longer be under the control of the trademark applicant. Compared with the trademark opposition defense, In this case, it is more likely that the trademark will be declared unregistered or withdrawn.

1. Common objection reasons and defense strategies:

1. Cases and defense strategies for objections filed against infringement of other people’s prior trademark rights

Rejection of trademark appearance similarity: Articles 30 and 31 of the Trademark Law of the People's Republic of China .

Related cases: "Decision to register the "Kasi" trade standard No. 62902716"

• There is no obvious overlap in the areas of use of the trademarks of both parties.
• The overall meaning, text composition, and call are all different.
• The overall appearance design is obviously different, and the public can distinguish it with just ordinary attention.

2. The opposed trademark completely contains the text of the trademark cited by the opponent

In this situation, as the party being opposed, it is quite difficult to defend, especially if the dispute occurs within the scope of the same or similar goods. In this case, I cannot promise the outcome of the defense and will not engage in risk representation.

3. Infringement of other people’s prior rights (copyright, patent, trade name rights, etc.) was challenged

Judgment based on Article 32 of the "Trademark Law of the People's Republic of China" ; Article 13 determines the behavior of clinging to prior rights of a well-known (well-known to the relevant public), which is the most important argument in the defense of trademark objections . If there is an obvious visual difference in the first word, it is necessary to pass the objection. Common reasons.

2. Summary of trademark laws:

Article 10 of the Trademark Law of the People's Republic of China : Misidentification, place names (administrative divisions at or above the county level), and adverse effects

Article 11 of the Trademark Law of the People's Republic of China : Lack of distinctiveness

Article 15 of the Trademark Law of the People's Republic of China : Squatting

Article 19, Paragraph 4 of the Trademark Law of the People's Republic of China : Non-agency registration of trademark agencies

Article 44, Paragraph 1 of the Trademark Law of the People's Republic of China : Comprehensive Judgment