With the continuous increase in the activities of filing Trademark
Applications in China, the total number has exceeded
around 30 million. Well, it is undoubtedly beneficial for the applicants in
particular and the nation as a whole. However, if considered in the view of the
enormous volume of already existing trademark applications and registrations,
the new requests are facing remarkably higher risks of getting rejected because
of being the same or similar to prior trademarks. Are you also among those who
are looking for Trademark Registration in China but
have a fear of refusal? Don’t be afraid. In this article, you will be aware of
the essential information that would help in preventing the rejection of your
trademark application in China.
The most efficient and common means to overcome such refusal is a
co-existence agreement signed with or the letter of consent signed by the owner
of the prior registered trademark conflicting with yours. Although the
co-existence agreement and letter of consent may not play a decisive role in
overwhelming trademark refusals, Intellectual
Property Attorneys, examiners,
and judges dealing with trademark registration in China are holding an open
attitude toward these documents. Indeed, over half of the agreements or letters
are often accepted, thus enabling trademarks to be granted registration.
Whether it is a co-existence agreement or a letter of consent, the
same will be accepted if subject to factors like the degree of similarity
between the two trademarks, the business fields to which they belong, their
customer groups, and the status quo of co-existence in the market. The reason
why trademark authorities go for this practice is – despite the aspect that
displays the trademark right as a private right, consumers’ interests need to
be taken into account. It means, the co-existence of two trademarks, if appear
giving rise to confusion creating problems for consumers, the same will be
considered detrimental to consumers and then will be rejected. On the other
hand, if the trademarks don’t create confusion, then the co-existence will be
deemed acceptable.
Things to Be Remembered while
Submitting Co-existence Agreements
·
The agreement signed with an entity outside the jurisdiction of
China should be notarized and legalized
·
If the agreement defines the geographical scope of co-existence,
then mainland China must be included
·
The agreement must specify both – the cited trademark, as well as
the trademark for which the applicant has applied
·
Although there are no strict time limits for filing a particular
co-existence agreement, the trademark applicants are advised to submit the
documents as early as they could. It is advisable because the timeframe for
the Intellectual Property Office in China and
the court to review the trademark refusal case is constantly being shortened.
Possibilities of Overcoming
Refusals by Using Co-existence Agreements
Case1: Successful
The trademark application filed for a term COOLPRO in regards to a
prior trademark CODIPRO. Here, 1) the designated products related to the two
trademarks, though belonging to machinery equipment yet falls under different
categories. 2) Moreover, if overall visual effects and pronunciations are
considered, the two marks appear dissimilar to each other to some extent. 3)
The co-existence agreement and letter of consent are the genuine expressions of
the intention of the cited trademark owner.
In this case, the new and the cited marks differ to some extent in
terms of designated goods and representations. Besides, the agreement shows the
clear intention of the cited trademark’s owner. Hence, in the absence of
evidence demonstrating that the co-existence agreement or letter between the
two parties will cause damage to the public interest, the cited trademark must
no longer pose a hindrance against the new one.
Case 2: Failed
The trademark application for SmartWing (in the italic font)
refused by citing a prior trademark SmartWing (in a standard font). Here, 1)
both the cited trademark and the refused trademark share identical elements,
i.e., English alphabets, and thus constitute similar representation. 2) The
refused trademark having its representation and designated products similar to
that of the cited trademark can lead to confusion and misleading amongst the
relevant public. Although the letter of consent and co-existence agreement
succeed in resolving the conflict of interests and civil rights amid the
refused mark’s applicant and the cited mark’s owner concerning the trademark
registration and exercise of rights, the system still operates to safeguard
public’s interests.
In this situation where the chances of confusion and
misidentification of the source of items by the relevant consumers cannot be
ruled out, the application for trademark registration fails to comply with the
provisions of the Trademark Law in China.
Conclusion
Under the current scenario, co-existence agreements are often
disregarded as the trademark for which the applicant wants to obtain
registration is identical with a prior mark in most cases. Nevertheless, there
are possibilities of acceptance if both the trademarks are distinguishable.
Therefore, the applicant should seek a co-existence agreement with the owner of
the cited trademark to overcome the refusal. Furthermore, as the court
and Trademark
Attorneys in China hold an open attitude
towards such matters, it is worth trying to lodge a lawsuit with the help of a
deft attorney even if the co-existence agreement is turned down in a trademark
review suit against refusal at the Intellectual Property Office.
Don’t forget to
follow us on social media:
Contact - US
Website:
www.kashishipr.com
