In trademark application practice many applications are rejected by Chinese Trademark Office (CTMO) due to similarity with a trademark registered or applied holding earlier priority. When refusal happens it is common that trademark applicants take different paths or approaches to defend its interest. The most common remedies followed by these trademark applicants are the following:
Filing appeal to Trademark Review and Adjudication Board (TRAB) arguing the existence of significant differences between the trademark for application and the cited trademark, which will not cause public confusion.
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 CTMO. Thus, some of 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 oftenunilateral declaration entered into between the trademark applicant and the owner of the mark that the CTMO’s claimed was confusingly similar to the applicant’s mark. By means of this document the owner of the prior mark consents the registration and use of a similar trademark filed by the applicant on the same or similar goods or services.
Although there are no express provisions in Chinese Trademark Law for a letter of consent and has not been formally admitted in China, in practice TRAB has been maintaining a pragmatic approach to this extent admitting the validity of the letter when examining the review case for rejected mark applications, provided that the following requirement are met:
1. The involved trademarks are still distinguishable even if the difference between them are 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 it happened that TRAB supported the co-existence that the consisted English words and characters being identical.
4. If 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 of this fact to TRAB the parties may:
a. Indicate that the owners of both trademarks are affiliated entities, if that is the case;
b. Set out another solution to make the trademarks distinguishable to the consumers and show TRAB that there will be no possible confusion or association risk. That can be reached by means of including some provisions in the Letter of Consent that define certain limits to the use of the involved trademarks and help to avoid any risk of confusion or association. For example: agree on different areas of activity for the products protected under involved trademarks, use of different products, etc.
5. The letter has to be notarized and properly legalized if it is singed out of mainland China, 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 the applicant and prior registrant believe that the applicant’s mark 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 if consumer confusion will result. This leads us to the conclusion that the letter of consent can be generally accepted in the examination 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 mark.
In regards to comparative law and taking a look how this topic is managed by IP practice overseas, it is worth to keep in mind that the letter of consent is an instrument broadly accepted by many IP Offices worldwide, such as the USPTO and UKIPO. Moreover, its use has rose in recent years and international IP offices tend to accept generally accept these documents as they consider that the parties, as the subjects involved in a certain market, are in the best position to assess that no risk of confusion or association for the consumers is foreseeable.