We were retained recently to handle a China trademark appeal as to a rejection our client received while being represented by their previous legal representatives in Hong Kong. It appeared that our client’s supplier in Dongguan or another party affiliated with them, had filed for the TM before the client did. This is commonplace in China. Hence, our firm’s first task for clients doing business in China is to secure their IP rights as it is a “first to file” jurisdiction and the clients’ suppliers and China competitors will attempt to trademark and patent technology before the client is able to file for their own protection, resulting in a loss of their future intellectual property rights in China.
The previous Hong Kong law firm (overpriced and inexperienced in matters involving mainland China intellectual property matters) received the client’s Certificate of Incorporation and had their Mainland patent agents file an application for that TM with the State Intellectual Property Office (SIPO).
Because the client’s supplier had previously filed a TM application with SIPO, a notice of rejection due to the previous filing by the competitor/supplier was mailed out by SIPO. Under Chinese law, an appeal of the rejection notice is due within 15 days from the date of the receipt of the notice.
However, it is meaningless to appeal the rejection notice if there is a previous filed application (the competitor’s). SIPO will reject the appeal of the rejection notice as if there is an existing same trademark application that has already been filed.
Under these circumstances, instead, the foreign client must file an opposition against the previous filed trademark application (the competitor’s application) and apply for a new trademark just as same as the original contemporaneous with filing an opposition to the competitor’s TM application.
In order to accomplish this successfully, one must look to when the competitor’s publication period commenced, in other words, the date it was published. Under Chinese law, there is a three (3) month period during this publication for any parties with superior rights (i.e. the client who already has a previously granted USPTO TM) to file an application and opposition against the competitor’s application for the TM.
This is in accordance with the Trademark Law of the People’s Republic of China, Article 33:
“For a preliminary approved and published trademark, within three months from the date of publication, a prior rights holder or an interested party which believes that paragraph 2 or 3 of Article 13, Article 15, paragraph 1 of Article 16, Article 30, Article 31, or Article 32 of this Law is violated or any person which believes that Article 10, 11, or 12 of this Law is violated may file an opposition with the Trademark Office. If no opposition has been filed upon expiry of the publication period, the registration shall be approved, a certificate of trademark registration shall be issued, and the registered trademark shall be published.”
The Hong Kong IP firm was advising the client (wrongfully and expensively) that they must appeal from the rejection notice they received from SIPO. Fortunately, we were retained to step in and file and application and opposition against the competitor’s application for trademark rights to our client’s company name in China.