The typical script of such cases is: a brand owner has long used a mark without registering it; a partner or competitor files first; after the trademark enters the preliminary approval announcement, the brand owner discovers it and files an opposition within the three-month period, which is upheld. The following breaks down the winning elements according to the examination logic.
Typical Scenario
A consumer-goods company had used a self-created mark to sell products for years, and the mark had gained a stable customer base in a regional market, but the company had not registered it in time. A merchant that had once negotiated distribution with the company applied to register the mark on identical goods after the negotiations broke down, and the application was published in a preliminary approval announcement. The company discovered it through monitoring in the second month of the announcement period and promptly filed an opposition.
Choice of Opposition Grounds
The company asserted two grounds:
- The latter part of Article 32: the other party registered, by improper means, a trademark that it had already used and that had acquired a certain influence;
- Article 15(2): the parties had a business relationship, and the other party clearly knew of its trademark.
The two grounds support each other: Article 32 establishes "prior use of the mark with influence", while Article 15 establishes "knowledge and impropriety", forming a complete loop.
How the Evidence Was Organized
- Prior use evidence: sales contracts and invoices going back more than three years before the filing date, distributor shipping records, advertising contracts, and local media coverage—continuous in time and dominated by third-party records;
- Influence evidence: sales scale data, a statement on regional market share, and certificates from industry associations;
- Knowledge evidence: correspondence, quotations, and meeting minutes from the distribution negotiations, showing that the other party had encountered and knew of the mark before the filing date.
Walkthrough of the Examination Points
For such cases, the examining authority typically checks: whether the marks are identical or highly similar; whether the goods are identical or similar; whether the prior use was genuine and reached a certain influence; and whether improper means are established. In this case, the chain of pre-filing invoices locked in the prior use, the negotiation emails locked in knowledge, and the complete identity of the marks ruled out coincidence—the opposition was upheld and registration was refused.
Replicable Lessons
- The three-month window can only be caught through monitoring: discovering the case halfway through the announcement period severely compresses the time for preparing materials;
- Timing evidence is the lifeline: all use evidence must predate the other party's filing date—materials postdating it are essentially useless;
- "Knowledge" evidence is more efficient than fame evidence: when direct dealing records exist, there is no need to raise the fame evidence to the well-known trademark level;
- File your own application alongside the opposition: the company filed its own registration application in the same week it filed the opposition, preventing a rights vacuum after the squatted trademark was refused.
For the specific handling of the above matters, you may book an opposition defense service on MyTMBee, with end-to-end assistance from a registered agent.