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Sponsored article: Discussing trade mark opposition

Two legal practitioners evaluate whether opposition should occur before or after trademark registration, weighing up the advantages and disadvantages of both scenarios

Hello, ladies and gentlemen. I’m Christy Li, host of today’s debate on trademark opposition procedure.

We have two contestants today from world famous law firms who were winners in the 2018 debate season. Let us welcome Mr P and Mr A to the stage.

Mr P and Mr A have experience in plenty of countries, and they have both received awards and accolades. For example, Mr A has had wins in Japan and Germany, and people there have hailed him as the father of trademark opposition procedure. Meanwhile, Mr P does not show weakness, and is fully endorsed by China and the UK.

Today the debate relates to a very familiar but controversial topic in worldwide trademark practice – whether opposition should occur before trademark registration or after trademark registration. As this is an informal debate, there will no ballot process today. Let us start with Mr A’s statement.

Mr A: As far as we know, the reason a trademark proprietor files a trade mark application is to acquire an exclusive right, so that they can use the trademark in commercial activities.

Opposition after registration enables trademark proprietors to register a trademark earlier and facilitates the expansion of their business. This is because, for countries that adopt the method of opposition after registration, trademarks will be granted registration without a publication period, which ranges from one month to several months. After the trademarks are registered, anyone/an interested party can file an opposition during the prescribed period.

Secondly, the function of trademarks is to help the relevant public distinguish goods/services sources. Where marketing exists, there will be competition. For opposite parties, creating obstacles in the way of trademark registration is a great weapon. Despite clearly knowing that an opposed trademark does not collide with its prior right, nor is the opposition in the public interest, parties still raise an opposition.

In most jurisdictions, the office usually takes more than 12 months to finish examination of an opposition case, and initiating an opposition could result in delaying registration for over one year. How should such pre-emptive opposition be solved? Opposition after registration could eliminate the risk of bad faith opposition, for the reason that the trademark has been granted registration before the opposition period and cannot be delayed due to the opposition procedure.

Another advantage of opposition after registration that I have to stress is that it enables trademark proprietors to acquire registration certificates earlier, which is a stepping stone in commercial transactions and infringement defence. When running a business, a registration certificate is the only evidence to show ownership, especially for famous websites, like Amazon, Tmall, JD, etc. Without it, all business activities bear the risk of infringements. A registration certificate could show ownership in infringement cases.

By comparison with this situation, opposition before registration delays registration and not only does harm to business activities, but also limits the ability to sue others for infringement. All in all, opposition after registration is a beneficial statutory procedure for trademark proprietors.

Host: Mr A set forth the advantages of opposition after registration, as well as some disadvantages of opposition before registration elaborately. Now let us see how Mr P will fight back.

Mr P: I do not deny that the earlier the registration date, the better. But, you have to compare the short term with a stable status. In my opinion, stability plays the most important role in business. If a trademark can be opposed any time after it is registered, what is the purpose of its registration? Only if the trademark is registered and overcomes the obstacles raised by prior cited marks, can it be registered with a low risk of attack. This is a true registration.

In most legal procedures, public interest overrides private rights and this is the case for trademarks too. When setting up the statutory procedure of opposition, private rights as well as public interest should both be taken into consideration. The purpose of opposition is to take advice from the public, and to carry through trademark right verification publicly, fairly and authentically. Temporary registration without public opinion does not strictly qualify as ownership of a trademark right. Additionally, opposition after registration is a waste of marketing and judicial resources.

In the first place, trademark owners will fully prepare to enter a market for the trademark, but how does it feel when they hear that their registered mark is opposed by third parties and may be rendered invalid? The worst aspect of this is that their mark can be rejected from registration or invalidated after their marketing preparation. It is not hard to conclude that all the preparation is a waste of time and money. In a similar way, jurisdictions have used up time and energy checking and issuing a registration certificate, but have to cancel it after the mark is rejected from registration due to opposition.

To conclude, when deciding whether opposition should take place before or after registration, factors relating to private and public interests should be taken into account, and opposition before registration is preferable to opposition after registration.

Host: Ok, time is over for Mr P. Both contestants expressed themselves logically and reasonably, and both procedures have precedents throughout the world, proving that they have pros and cons. It seems they are equally matched.

As long as it suits the local situation, either method is acceptable and can be adopted.

When deciding whether it is appropriate or not, factors like the annual filing numbers in the local district, the degree of bad faith, the opposition percentage etc. should all be taken into account. No one is born wise or learned. The purpose of discussion is not necessarily for achievement, but to motivate more interested people to join us so that we can find the most effective and beneficial way to manage and mold a healthy and sophisticated intellectual property market.

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