Recently, the role of trademark coexistence agreement has been questioned in the process of registration.
Already in December 2016, the Intellectual Property Court of Beijing ruled a case on coexistence of trademarks and hence had to clarify the situation. A trademark application was denied by the Trademark Review and Adjudication Board – referred to as TRAB – because of its many similarities with a prior trademark, which could have led to public’s confusion. It was denied although a trademark coexistence agreement was signed between the earlier mark owner and the applicant. The Intellectual Property Court of Beijing reversed the decision arguing that both rights’ holder and trademark’s applicant were sharing the same interest and also some distinction could be done. Consequently, similarities only between the trademarks do not suffice to reject such coexistence. The point of view of the rights holder and the new applicant must also be considered.
In February, another case highlighted the necessity to reach a consensus on the matter. The TRAB, in the line with IP Court of Beijing and Beijing High Court, rejected the coexistence of two similar trademarks considering it would create confusion to the public. The Supreme People’s Court overruled their decisions and enlightened the outcome of a conflict where a consent letter had been signed by the earlier trademark owner.
Indeed, by signing the consent letter, the cited owner agrees to the registration of a similar trademark. It is the first time the Supreme Court recognized two similar trademarks to be co-existed. The highest Chinese Court took a pragmatic decision in which it took into consideration consumers’ interests as well as both trademark’s owner and applicant. Naturally, both signatories had to express in the consent letter the divergences between the trademarks and in what extent the registration would not confuse the public.
However, in a latest similar case, the Appellate Body of Beijing High Court rejected the approval of a trademark application on the ground that the applied mark had so many similarities with the prior mark that the confusion would be inevitable. Therefore, it stressed that a coexistence agreement do not automatically leads to the registration of a trademark which need to be dissociated from the prior one.