In trademark application practice, many applications are rejected by the China Trademark Office (CTMO) due to similarity with a registered or applied trademark holding earlier priority. When refusal happens, it is common that trademark applicants take different paths or approaches to protect its interest. The most common remedies followed by these trademark applicants are the following:
Filing appeal to the Trademark Review and Adjudication Board (TRAB) arguing the significant differences between the trademark of application and the cited trademark, which will not cause public confusion; or
Filing opposition, if still doable, invalidation application or non-use cancellation against the cited trademark.
However, in addition to the above remedies, there is another option available which may help to overcome the refusal by the CTMO. Some trademark applicants may consider submitting a letter of consent if the examiner issues an unfavorable decision due to a trademark with earlier priority.
A letter of consent is a written document which takes the form of a contract or ―more often― unilateral declaration between the trademark applicant and the owner of the trademark with earlier priority. By means of this document, the owner of the prior trademark should consent the registration and use of the similar trademark filed by the applicant on the same or similar goods or services.
The approach of letter of consent is not stipulated explicitly in China Trademark Law, nor has been formally admitted in China. In practice, however, the TRAB has been maintaining this pragmatic approach to the extent of admitting the validity of the letter when reviewing a trademark application after rejection, provided that the following requirements are met:
1. The involved trademarks are still distinguishable even if the difference between them is slim;
2. None of the trademarks are contrary or detrimental to public policies, specifically to socialist morals or customs;
3. The conflict parts in the involved trademarks are consisted of English words or characters; in most cases, the conflict English words or characters are not identical, but in rare cases the TRAB supports the co-existence of the trademarks with identical English words and characters;
4. If the involved trademarks are both used in the Chinese market, they should not cause confusion about the source of the goods; in order to provide some evidences to the TRAB, the parties may:
Indicate that the owners of both trademarks are affiliated entities, if that is the case; or
Find another solution to make the trademarks distinguishable to the consumers and show the TRAB that the involved trademarks will not incur any possible risk of confusion or association; that can be reached by means of including some provisions in the Letter of Consent that define specific limits to the use of the involved trademarks to avoid confusion or association; for example, the provisions could be agreements on different areas for the products protected under each involved trademark, agreements on use of different products, etc.; and
5. The letter has to be notarized and properly legalized if it is signed out of the mainland of China, or otherwise the TRAB will not accept it.
Therefore, if the letter of consent can be successfully signed, it may be helpful to convince the review examiner that both the applicant and prior registrant believe that the applicant’s trademark will not result in consumer confusion if it is registered. Thus, the success rate of the review will be enhanced.
The letter of consent enjoys great deference in the procedure because the CTMO may assume that the parties to the agreement will be in the best position to determine whether consumer confusion will occur. This leads us to the conclusion that the letter of consent can be generally accepted in the review practice and a number of refused trademarks may be successfully approved for registration after submitting a letter of consent signed by the owner of the cited trademark.
In regards to comparative law and taking a look how this topic is managed by intellectual property practice overseas, it is worth keeping in mind that the letter of consent is a useful approach broadly accepted by many intellectual property offices worldwide, such as the USPTO and UKIPO. Moreover, its use has rose in recent years and international intellectual property offices tend to generally accept such a document because they consider that the parties, as the subjects involved in a certain market, are in the best position to determine that no risk of confusion or association for the consumers is foreseeable.