Recently, on October 7th, 2023, the CNIPA published an official Notice by which it informed that, starting from December 1st, 2023, for all opposition cases, trademark agencies "should submit electronic applications through the trademark online system, and no longer submit paper materials".

With this move Chinese trademark agencies will not anymore be able to use the traditional paper system and can only rely on CNIPA online system to file oppositions. Being the Notice only applicable to trademark agencies, it seems that IP owners can still file paper oppositions (if not formally represented by trademark agencies).

We understand that CNIPA is trying hard - and this is much appreciated! - to accelerate the trademark examination and granting process, even in cases where rejection and/or opposition are encountered.

Indeed, we have first-hand experience that online system for trademark filing, appeal against preliminary rejection and opposition works better in terms of total time of the process comparing to the paper system. The online system ensures a faster processing than the paper system.

The online system for oppositions has been already in place from quite some time and therefore this should not be an issue for trademark agencies that have already created and used CNIPA online system. For those agencies that have not used online system, they have to move quickly and adopt it.

However, we foresee some issue with oppositions online system especially for famous brands with large reputation evidence file. The online system allows the opposition applicant to upload a maximum of 250MB, while a typical file for an opposition relating a trademark which enjoys certain reputation or is well-known might go up to 1 or 2 GB. Reputation is a heavy burden.

In the current practice trademark agents deal with the maximum storage issue by using the paper procedure and physical filing of materials (usually in CD-Rom), meaning that, despite the availability of the online system, they have kept filing oppositions via the paper system circumventing the 250MB limit.

Now, with the abolition of the paper filing system this possibility will be stopped and the storage space in the online system is clearly not enough for oppositions in which the opponent is an IP owner of a trademark which enjoys certain reputation or is well-known.

Now, in this coming scenario, Chinese IP owners can still file oppositions using the paper system and not using a trademark agent that can only use the online system. A trouble, with some kind of solution.

Foreign IP owners instead need - by law - to appoint a local trademark agent to file any procedure at CNIPA and therefore they only have the possibility to file oppositions via online system.

This means that foreign IP owners will necessarily have the limit of 250 MB evidence storage. If the foreign trademark is highly reputed or well-known, 250MB of storage space for evidence is not enough. A trouble with no solution, at currently.

If no changes are implanted before December 1st Chinese IP owners of famous brands can still adopt the paper system to file opposition and provide reputation material through this system. On the opposite, foreign IP owners, that necessarily need to appoint an agent, Will suffer the 250MB limit to the storage space.

Given what above, with humble attitude we would suggest CNIPA to put in place solutions as soon as possible since pressure on trademark agents representing foreign famous brands is increasing day by day.

Herein a few solutions we have thought to possibly tackle the 250MB limit.

  • CNIPA enlarges the online storage space for all cases or for cases in which well-known or reputed trademark are at stake;
  • CNIPA allows filing paper materials for longer time period for trademark agencies (but this would be in contrast with the recently issued notice);
  • CNIPA allows that evidence materials are stored into some external online cloud disk reachable with a link provided in the evidence file without possibility to alter the file after the deadline;
  • CNIPA allows agencies that represent opponents with certain degree of reputation/opponents that are well-known trademark owners to file opposition in paper when the reputation files are too big.

Meanwhile, considering the worries that no solution will be ready for December 1st, careful attorneys representing foreign famous brands are preparing a special mini reputation file that can fit the 250MB storage space that will be used from December 1st if no solution is found.

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.