According to an announcement issued by the Trademark Office of China National Intellectual Property Administration, they started to fully implement online application for trademark opposition cases from December 1, 2023.
The online application system will allow applicants to submit their opposition cases electronically, eliminating the need for physical paperwork and reducing the time and resources required to process these cases. This will not only make it easier for applicants to file opposition cases, but also for the authorities to review and respond to them in a timely manner.
Despite these advantages, the online opposition filing has one obvious disadvantage, namely the limitation of evidence to be submitted, compared to the traditional paper filing way.
Considering the limitation of evidence for online filing, two kinds of opposition cases can still be filed through the traditional paper way. One kind of cases is the oppositions with evidence to be submitted before the CNIPA and to be forwarded to the opposed party inconsistent for privacy or confidential issue. The other kind of cases is the oppositions with claim to protect the prior marks as well-known marks according to Article 13 of China Trademark Law and the size of evidence to prove the well-known status of marks exceeds 400 MB in total.
For the other cases not referred in the above two situations, it is better to be filed through the online system in order to meet the CNIPA's requirements.
The detail limitation of the evidence to be submitted for these oppositions filed online is that the evidence format should be in PDF, and the total size of evidence should not exceed 200MB in the opposition filing and opposition supplementary stage respectively.
Bearing the limitation in mind, for those opponents who have lots of evidence to submit, it is important to select and submit the evidence of high probative value to support the cases. Below is a list of evidence which may work significantly to prove the reputation of the prior marks for reference.
Document introducing the sales geographical area, sales network, sales channels, sales manner, a full list of stores of the mark in China, etc.
Copies of contracts, invoices, bills of lading, bank records, purchase lists etc. reflecting sales of the goods to the Chinese costumers.
Document introducing the self-operated website, platform, social media accounts and their related data in China, etc.
Documents about important grand events holding by the trademark owner or the exhibitions the trademark owner attended in China.
Public relation or promotional report for advertisements on newspapers, magazines, TV, outdoor, different APPs, etc., printed copy of the internet promotional materials, comments and the print screen of the video comments, etc.
Copies of contracts, invoices and any other documentary evidence between the trademark owner and the advertising agency or PR agency for the promotional activities in China.
Annual report showing sales income, expenditure, etc.
Photos or copies of certificates of honors and awards of the goods bearing the mark.
National library search report.
Protection records of the mark confirming its high reputation or well-known status especially in China.
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.
