1. Summary

Trademark Dispute is a case in which there is dispute in the registered trademark, namely, the dispute between two proprietors of similar registered trademarks which arise for the reason of similarity between those two trademarks in similar goods/services, or the dispute between the proprietor of well-known trademark and the proprietor of a registered trademark which is identical or similar to the well-known trademark. The essence of the trademark dispute is whom the exclusive right of the trademark or the right to use the trademark belongs to, namely, the request of proprietor of prior registered trademark rights to withdraw the subsequent registered trademark with different opinion from CTO, or request of proprietor of well-known trademark rights to withdraw a registered trademark with different opinion from CTO.

2. Scope of disputes.(article 41 of China Trademark Law)

1) Where a registered trademark stands in violation of the provisions of Articles 10, 11 and 12 of this Law, or the registration of a trademark was acquired by fraud or any other unfair means, the Trademark Office shall cancel the registered trademark in question; and any other organization or individual may request the Trademark Review and Adjudication Board to make an adjudication to cancel such a registered trademark.

2) Where a registered trademark stands in violation of the provisions of Articles l3, l5, l6 and 3l of this Law, any other trademark owner concerned or interested party may, within five years from the date of the registration of the trademark, file a request with the Trademark Review and Adjudication Board for adjudication to cancel the registered trademark. Where a well-known mark is registered in bad faith, the genuine owner thereof shall not be restricted by the five-year limitation.

3) In addition to those cases as provided for in the preceding two paragraphs, any person disputing a registered trademark may, within five years from the date of approval of the trademark registration, apply to the Trademark Review and Adjudication Board for adjudication.

3. Qualifications of Applicants

1) The applicants of disputes opened on the basis of article 41(1) of China Trademark Law could be anyone.

2) The applicants of disputes opened on the basis of article 41(2) of China Trademark Law could be trademark owner concerned or interested party.

3) The applicants of disputes opened on the basis of article 41(3) of China Trademark Law could only be trademark owner concerned with his trademark filed earlier than the dispute trademark.

4. Time Limit

1) The dispute on the basis of article 41(1) of China Trademark Law only aims at the trademarks registered after January 13, 1988.

2) The dispute on the basis of article 41(2) of China Trademark Law should be filed within 5 years from the date of approval of the dispute trademark registration, but where a well-known mark is registered in bad faith, the genuine owner thereof shall not be restricted by the five-year limitation.

5 Procedure

1) The applicant files the dispute application form in duplicate in front of TRAB with dispute grounds.

2) TRAB sends duplicate copy of dispute application form to the defender, and gives it a prescribed period to respond in writing. There will be defense in public by both parties when necessary.

6 Ruling and Results

TRAB will make a ruling on the basis of facts and laws as:

Where the grounds for dispute are established, the dispute trademark will be cancelled

Where the grounds for dispute are not established, the dispute trademark will be maintained.

The ruling will be sent to both parties and CTO in writing. Where the trademark is cancelled, the defender should send back the Trademark Registration Certificate to CTO in prescribed period, and advertised as well.

7 Remedies

Article 33: Where an opposition is filed against the trademark that has, after examination, been preliminarily approved and published, the Trademark Office shall hear both the opponent and applicant state facts and grounds, and shall, after investigation and verification, make a decision. Where any party is dissatisfied, it or he may within fifteen days from receipt of the notification, apply for a reexamination, and the Trademark Review and Adjudication Board shall make a decision and notify both the opponent and applicant in writing.

    Any interested party who is not satisfied with the decision made by the Trademark Review and Adjudication Board within thirty days from the date of receipt of the notice, may institute legal proceedings in the People's Court. The People's Court shall notify the other party to the trademark reexamination proceeding to be a third party to the litigation.

Article 49 Any party dissatisfied with the decision of the Trademark Office to cancel a registered trademark may, within fifteen days from receipt of the corresponding notice, apply for a review. The Trademark Review and Adjudication Board shall make a decision and notify the applicant in writing. 
Any interested party dissatisfied with the decision by the Trademark Review and Adjudication Board may, within thirty days from the date of receipt of the notice, institute legal proceedings in the People's Court.

8. Notes

1) Article 32: Where a party needs to supplement related evidence after filing an application for review and adjudication or making a response, a statement for this purpose shall be made in the application or in the response, and the said evidence shall be submitted within three months from the date on which the application is filed or the response is made; if no evidence is submitted at the expiry of the time limit, the party shall be considered given up the supplementing of related evidence.

2) If the application needs to be supplemented or corrected, the applicant shall be notified to make supplements or corrections within 30 days from the date of receipt of the notification. If, after being supplemented or corrected, the application still does not conform to the provisions, the Trademark Review and Adjudication Board shall refuse it, and notify the applicant in writing and give the reasons therefor; if no supplements or corrections are made at the expiry of the specified time limit, the application shall be considered withdrawn and the Trademark Review and Adjudication Board shall notify the applicant in writing.

3) Parties should make the law reference clear in dispute application.

4) Parties should provide list of exhibits in writing, and classify and number the exhibits, give introduction of the source, facts certified by exhibits, and sign and seal them.

5) Parties should file the duplicate of documents in number of parties on opposite side.