There are fixed procedures in various trademark application and examination cases, but there are still some cases that are quite special. Today, I will sharing with you a case of review of opposition, which is a bit special.
In fact, the normal procedure of review of opposition case is not complicated. When the opposed trademark is not approved for registration in the opposition procedure, the applicant of the opposed trademark can request for a review of opposition. The applicant for review of opposition (the opposed party in the original opposition procedure) submits an application for review of opposition to the CNIPA, and the CNIPA issues the Notice of Original Opponent's Participation in the Review of Opposition to the original opponent of the opposition. The original opponent can choose to submit an opinion on review of opposition or not, and then the CNIPA examines the case and issues a decision on review of opposition.
The case discussed in this article starts from the opposition application. The opponent discovered that the trademark they had not registered but had been using was registered by a third party in bad faith, and then filed an opposition application against the opposed trademark. When the opposition decision is about to be made in the opposition procedure, due to business needs, the opponent wants to negotiate with the opposed party to transfer the opposed trademark to their own name. The opposed party may believe that the opposed trademark has a high chance of not being approved for registration, and therefore agreed to transfer the opposed trademark to the opponent. After reaching an agreement through negotiation, but before the two parties submitted the assignment application for the opposed trademark to CNIPA, the CNIPA issued an decision on this opposition case, ruling that the opposed party rushed to register the trademark that the opponent had used and gained certain reputation through improper means, and ruling that the opposed trademark should not be approved for registration in accordance with Article 32 of the Trademark Law.
Both parties have reached an agreement to maintain the validity of the trademark. Therefore, the opposed party submitted an application for review of opposition and stated in the application that both parties had reached an agreement and that the opposed trademark will be transferred to the original opponent, which no longer violated Article 32 of the Trademark Law. At the same time, both parties actively filed the assignment of the opposed trademark, and transfer the opposed trademark to the original opponent. After receiving the Notice of Original Opponent's Participation in the Review of Opposition issued by the CNIPA, the original opponent also submitted the opinion of review of opposition to the CNIPA, further explaining the situation and submitted the assignment certificate of the opposed trademark. Finally, the CNIPA believed that the trademark had been transferred to the original opponent, that there was no rush registration of the trademark that had a certain impact on others' prior use, and that it did not violate Article 32 of the Trademark Law, so it approved the registration of the opposed trademark.
It can be seen that in some cases, there are "regret medicine" that can be taken during the review of opposition procedure. Such as the case mentioned above.
However, is there a "regret medicine" for all review of opposition procedures? The answer is NO. In fact, the review of opposition cases can be seen to some extent as a reexamination of opposition. When the opposition reason proposed by the opponent is not valid, the opposed trademark should be approved for registration. For example, in this case, the opposed trademark was transferred to the original opponent, and the opposed trademark no longer violated Article 32 of the Trademark Law, so the CNIPA approved the registration of the opposed trademark. However, if it has been determined in the opposition decision that the opposed trademark violates Article 4, Article 10.1.7, Article 10.1.8, etc. of the Trademark Law, namely violates absolute grounds, generally these provisions cannot be overcome through review of opposition. Therefore, in these cases where absolute reasons are violated, the opposed trademark is likely to still not be approved for registration in the end.
It is worth noting that in the case of review of opposition, if both parties reach a settlement or the opposed trademark is assigned to the original opponent, the applicant for review of opposition (the opposed party in the original opposition procedure) shall submit an application for review of opposition, and the original opponent shall submit an opinion for review of opposition after receiving the Notice of Original Opponent's Participation in the Review of Opposition, and further explain the situation to the CNIPA, then the CNIPA can make a decision based on the opinions of both parties and relevant laws and regulations. If the original opponent does not submit an opinion, the CNIPA is likely to believe that both parties have not reached an agreement and may still not approve the registration of the opposed trademark.
In summary, we can reasonably use the review of opposition procedure to maintain some of the trademarks that are not approved in the opposition procedure. At the same time, we also hope that there will be fewer and fewer cases of bad faith registration, and the trademarks order will become better and better!
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.