Trademark Office accepts first trademark opposition application filed by law firm

China

In accordance with the Measures for the Administration of the Engagement of Law Firms in Trademark Agency Business, which entered into force on January 1 2013, law firms are now entitled to handle trademark issues administered by the China Trademark Office and the Trademark Review and Adjudication Board (TRAB).

On November 6 2012 the State Administration for Industry and Commerce and the Ministry of Justice jointly released the aforementioned measures. The measures, which contain 25 articles, allow law firms, upon authorisation by their clients, to handle trademark matters administered by the Trademark Office and the TRAB, including:

"(1) Applications for trademark registration, modification of a trademark application/registration, renewal of a trademark registration, applications for assignment of a trademark application/registration, amendment of a trademark application/registration as per [the Trademark Office]’s request, pledge registration of a registered trademark, recordal of a trademark licence contract, trademark opposition, trademark annulment, trademark revocation, applications for Madrid international registration, as well as other trademark-related matters administered by the China Trademark Office under the State Administration for Industry and Commerce;

(2) Filing a review of refusal and review of opposition against a trademark application, filing a review of revocation and dispute against the registered trademark, as well as other trademark-related matters administered by the Trademark Review and Adjudication Board; and

(3) Other matters pertaining to international trademark registration."

On March 28 2013 the Trademark Office accepted the first application for trademark opposition filed by a local law firm.

Law firms intending to act as trademark agents must file an application for recordal with the Trademark Office and deposit an advance payment of the official fees into the office’s designated account. Where the law firm’s advance payment is insufficient to cover the official fees, the Trademark Office and TRAB are entitled to reject the law firm’s application.

A total of 7,846 firms have been recorded with the Trademark Office since the measures came into effect.

The measures should be applauded by law firms in China, as this allows them to provide full trademark agency services. Nevertheless, opportunities come with challenges, and the access of law firms to the trademark agency business will intensify competition among players in the industry.

Jiang Nan, Wan Hui Da Law Firm & Intellectual Property Agency, Beijing

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