After a trademark is opposed, CNIPA will serve a copy of the opposition application on the opposed party, who must submit a written defense within thirty days of receipt. A defense is not mandatory, but failing to defend means the examiner can only decide based on the opponent's one-sided materials—a significant risk.
Basic Defense Process
- Sign for the Trademark Opposition Defense Notification and the copy of the opposition application served by CNIPA, and check the opposed trademark, the opponent, and the opposition grounds;
- Submit the Trademark Opposition Defense Statement and evidence within the thirty-day period;
- CNIPA examines both parties' materials and issues a decision approving or refusing registration.
Defense Strategy
First deconstruct the opponent's grounds and evidence, then respond item by item:
- If the opponent claims trademark similarity, argue from the perspectives of sound, appearance, meaning, overall impression, and degree of similarity of the goods that the marks are not similar and will not cause confusion;
- If the opponent claims prior rights, examine whether those rights are genuine and valid, whether they were truly formed before your filing date, and whether their scope covers your goods;
- If the opponent claims you squatted in bad faith, focus on explaining the legitimate origin of your trademark application, its design concept, and actual use;
- Also check the opponent's standing and the form of its evidence—e.g., whether it is a prior rights holder, whether the evidence predates your filing date, and whether the evidence is self-produced.
Defense Materials
These typically include the body of the defense statement, proof of the applicant's qualification, an explanation of the trademark's design concept, evidence of use (sales contracts, invoices, advertisements, packaging photos), and counter-arguments against the opponent's evidence.
Points to Note
The thirty-day period is very short and cannot be extended; start preparing immediately upon receiving the notification. It is best to submit the defense statement and evidence in full at one time, as there is limited room for later supplementation. If dissatisfied with the decision, the opposed party may apply to the trademark review and adjudication authority for a review of refusal of registration within fifteen days of receiving the notification.
If you are facing a similar situation, it is advisable to first consult a registered agent on MyTMBee to assess whether you need to handle an opposition defense before deciding on the next step.