China: Article 30 Of The Chinese Trademark Law–A Double-Edged Sword In Trademark Examination And Opposition

Last Updated: 1 June 2016
Article by Hui Gao and Xi Chen

Introduction:

Article 30 of the Chinese Trademark Law plays different roles and achieves different effects in trademark examination and opposition procedures. By analyzing the different applicable circumstances of this article in trademark examination and opposition procedures, the authors hereby put forward their suggestion to perfect Article 30 of the Trademark Law.

Article 30 of the Trademark Law provides that "Where a trademark application does not comply with the relevant provisions in this Law or is identical with or similar to a registered trademark used in connection with the same or similar goods, its registration shall be refused by the Trademark Office after examination and the mark shall not be published."

As the purposes and protected legal interests in official active examination are different from those in concerned party's opposition cases, Article 30 of the Trademark Law thus becomes a double-edged sword in trademark examination and opposition procedures and plays different roles in different procedures.

I. While applying Article 30 of the Trademark Law in trademark examination procedure, literal interpretation shall be used.

When examining a trademark, the Trademark Office may, pursuant to Article 30 of The Trademark Law, cite any article of The Trademark Law to refuse a trademark application. For instance, Article 50 is currently cited by the Trademark Office to refuse a trademark application under the ground that the trademark cannot be approved within one year since the expiration of the validation period of the prior similar mark. Article 50 of the Trademark Law provides that "where a registered trademark has been cancelled, invalidated or has not been renewed upon expiration, the Trademark Office shall not approve any application for the registration of a trademark that is identical with or similar to the said trademark for a period of one year from the date of cancellation, invalidation, or the date of expiration."

The legal basis on which the Trademark Office cites Article 50 of the Trademark Law to refuse a trademark application is the provision of Article 30 of the Trademark Law that "Where an application for registration of a trademark is not in compliance with the relevant provisions of this Law...the Trademark Office shall refuse to accept the application and shall not publish the same." While applying Article 30 of the Trademark Law in trademark examination procedure, literal interpretation shall be used. That is to say, the Trademark Office may cite any article of the Trademark Law to refuse a trademark application.

When examining trademarks, the Trademark Office exercises the rights afforded under the law for the purpose of protecting public interests and preventing confusion. Therefore, the rights endowed by law to the Trademark Office to refuse a trademark application that "is not in compliance with the relevant provisions of this Law" are in conformity with the original intention of trademark examination set up by law and are in conformity with the legislative objectives of protecting public interests.

II. In opposition cases, restricted interpretation shall be applied to Article 30.

Article 33 of the Trademark Law provides that "Any holder of prior rights, or interested party may, within three months from the date of publication, in violation of the provisions of Article 13 Paragraph 2, Article 13 Paragraph 3, Article 15, Article 16 Paragraph 1, Article 30, Article 31, or Article 32, or any person may, in violation of the provisions of Article 10, Article 11, or Article 12, file to oppose a trademark application that has been published after a preliminary examination and approval. Where no opposition is filed after three months, the application shall be approved for registration, a certificate of registration shall be issued, and the mark shall be published."

Article 30 of the Trademark Law provides that "Where a trademark application does not comply with the relevant provisions in this Law or is identical with or similar to a registered trademark used in connection with the same or similar goods, its registration shall be refused by the Trademark Office after examination and the mark shall not be published."

In consideration of the above two articles, some people hold that the prior right owner or any interested party may file an opposition against a trademark application in accordance with any provisions of the Trademark Law. It means that the prior right owner or interested party may file an opposition not only in accordance with the absolute reasons specified in Article 33 of the Trademark Law, namely Article 10, Article 11 and Article 12, but also in accordance with other articles of the Trademark Law, for instance Article 4 and Article 7.

In our opinion, restrictive interpretation shall be given to Article 30 in Article 33 of the Trademark Law. That is to say, Article 30 in Article 33 of the Trademark Law only refers to "Where a trademark application is identical with or similar to a trademark of another party that has been registered or accepted in respect of identical or similar goods, the Trademark Office shall refuse to accept the application and shall not publish the same", not including "Where an application for registration of a trademark is not in compliance with the relevant provisions of this Law ... the Trademark Office shall refuse to accept the application and shall not publish the same". The authors hereby elaborate the above claim from the following aspects.

a. The above conclusion may be made by the method of system interpretation.

Article 33 of the Trademark Law provides that any person may file an opposition against the application for registration of a trademark with the Trademark Office if he finds that the application stands in violation with the provisions of Article 10, Article 11, or Article 12 of this law. In this article there is an expressive explanation by sample mode about the absolute reason for raising an opposition, namely one may only raise an opposition based on the absolute reasons in Article 10, Article 11 or Article 12. This means that the reason based on which the prior right owner or any interested party may file an opposition in accordance with Article 30 as specified in the first half of Article 33 does not include other provisions concerning absolute reasons that may be contained in the contents "not in compliance with the relevant provisions of this Law" in Article 30. The explicit and sample-mode provision on absolute reason for opposition in Article 33 of the Trademark Law has already excluded the rights of the opponent to file an opposition based on other absolute reasons.

b. The above conclusion may also be made by way of historical interpretation.

The provision about opposition in the Trademark Law 2001 edition is in Article 30, namely "Any party may, within three months from the date of the publication, file an opposition against the trademark that has, after examination, been preliminarily approved." This means any party may raise an opposition by any relative or absolute reason.

Article 33 of the amended Trademark Law provides that "the prior right owner or any interested party" may file an opposition in accordance with Article 30 and "any party" may file an opposition in accordance with the provisions of Article 10, Article 11, or Article 12. The purpose of this revision is to confine the qualification of the opponent who files an opposition based on relative reasons and to confine the legal provisions cited by any party who files an opposition based on absolute reasons so that opposition in bad faith be constrained, trademark registration process be speeded up, and the private-right remedy nature of opposition system be returned in consideration of the monitoring role of social public over trademark examination.

Every revision of legal provisions is by no means just a revision of wording. It contains fundamental legislative attempt in itself. Therefore, restricted interpretation of Article 30 appearing in Article 33 of the Trademark Law shall be used from the point of view of historical interpretation method.

c. Trademark Laws of other countries have restrictions on the qualifications of opponents and reasons for oppositions.

Trademark Laws of other countries have strict restrictions on the qualifications of opponents and reasons for oppositions. The restrictions on opponent's reasons for opposition and qualifications of opponent specified in the Trademark Laws of other countries prove that opposition procedure are mainly used as private-right remedy methods. Therefore, to make restricted interpretation of Article 30 appearing in Article 33 of the Trademark Law of China is in conformity with the major trend of international practice.

d. Under the circumstance of restricted interpretation of Article 30 of the Trademark Law in an opposition, how to explain the decision made by the Trademark Office not to approve the opposed trademark in accordance with Article 7 of the Trademark Law?

After the implementation of the amended Trademark Law, there is the circumstance that the Trademark Office makes decisions not to approve the registration of opposed trademarks in accordance with Article 7 of the Trademark Law, which provides that "any application or use of a trademark shall abide by principles of honesty and credit." Though Article 30 is also cited in its decision, the Trademark Office did not make judgment on similarity of trademarks and likelihood of goods in the decision. This means that the Trademark Office made the decision not to approve the registration of the opposed trademark by citing Article 7 under the right empowered to him to examine a trademark in accordance with any provisions in the Trademark Law. The Trademark Office also played a role of trademark examiner in the opposition procedure and therefore could make the decision not to approve the registration of the opposed trademark pursuant to Article 7.

Opposition procedure is an effective supplement to trademark examination of the Trademark Office, providing the Trademark Office with a chance of reexamination to remedy the omissions in the examination by the Trademark Office. As in the opposition procedure the Trademark Office also functions as a trademark examiner, the Trademark Office may apply Article 4 and Article 7 and so on to make a decision not to approve the registration of an opposed trademark. This is not in contradiction to the conclusion herein that restricted interpretation shall be given to Article 30 appearing in Article 33.

III. Suggestions on revising legal provisions concerning opposition in the Trademark Law

Hegel said that "the clearer a law is enacted, the easier to implement its provisions". This means that literal interpretation is the most explicit and straight forward in legal interpretation methods. Though Article 30 is a double-edged sword in trademark examination and opposition, if Article 30 and its referencing provisions could be amended to some extent, social public may use the most straight forward method of literal interpretation to correctly understand and apply the law. For this purpose, the authors hereby suggest that Article 30 and Article 33 be revised as follows:

Article 30 of the Trademark Law:

Where an application for registration of a trademark is not in compliance with the relevant provisions of this Law, the Trademark Office shall refuse the application and shall not publish the same.

Where an application for registration of a trademark is identical with or similar to a trademark of another party that has been registered or accepted in respect of identical or similar goods, the Trademark Office shall refuse the application and shall not publish the same.

Article 33 of the Trademark Law:

The prior right owner or any interested party may, within three months from the date of publication, files an opposition against an accepted and published application for registration of a trademark, if he finds that the application stands in violation of the provisions of Article 13, paragraph two or three, Article 15, paragraph one of Article 16, paragraph 2 of Article 30, Article 31 or Article 32 of this law, or any party finds that the application stands in violation with the provisions of Article 10, Article 11, or Article 12 of this law. If no opposition is filed within the specified period, the trademark shall be registered, a certificate of registration shall be issued, and the registration shall be published.

IV. Conclusion

Article 30 of the Trademark Law is a double-edged sword in trademark examination and opposition procedure, which may not only save the limited resources of administrative examination of trademarks to raise the efficiency of trademark registrations, but also give play to social public in monitoring the examinations of the Trademark Office to protect social public interests.

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.

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