When receiving a notification of refusal for a trademark application, many applicants may choose to file an appeal arguing the significant difference between the applied trademark and cited trademark. However, the unilateral argument cannot always persuade the examiners even though the differences do exist. Under this circumstance, a letter of consent/coexistence agreement may help to increase the chance of success in a trademark review case.
Attributes of letter of consent
During the substantial examination of trademark registration, CNIPA will conduct a search on identical or similar trademarks designated on similar and related items. Any identical or similar trademark designated on similar goods will possibly confuse the public about the source of related goods/services, so CNIPA may refuse the later trademark for registration. That’s still not ruling out the circumstances that two trademarks are similar in a way but not to such an extent as to confuse the public. If so, the applicant may file an appeal to argue the significant difference together with a letter of consent from the holder of the cited trademark, or a coexistence agreement between the two parties of the applied trademark and the cited trademark.
A letter of consent usually refers to a written declaration that a prior trademark registrant positively agrees to the registration and use of a similar trademark filed later on similar goods/services. The letter shall include detailed information about the trademark of two parties, a statement on the consent of registration and use of the applied trademark, and an effective signature or seal from the trademark holder.
Adoption of a letter of consent
Though the letter of consent is a remedy for a trademark refusal, it hasn’t been stipulated explicitly in Trademark Law of China, but it has become a common practical approach to achieve approval of registration in an appeal case. Also, there are relevant regulations in judicial interpretation and examination guidelines applicable for a concrete case. According to Beijing High People’s Court Guidelines for the Trial of Trademark Right Granting and Verification Cases, when judging whether the trademark in dispute is similar with the cited trademark, the coexistence agreements may be used as prima facie evidence to exclude confusion. In practice, a letter of consent has the same effect as a coexistence agreement under this provision.
In an administrative proceeding, if the applicant submits a letter of consent, the examiner may take the consent into account when judging the trademark similarity and possibility of confusion to the public, but the final decision shall comply with the Trademark Law and guideline of examination. If the designated goods/services of the two trademarks mutually have close connections and two trademarks are highly similar, a letter of consent will probably not be accepted. The consent between the holders of the trademarks cannot be a reasonable excuse for the possibility of confusion to the public. When the two trademarks have a certain degree of similarity, but can still be distinguished from each other, the examiner may adopt the letter of consent and exclude the confusion.
A letter of consent or a coexistence agreement can help to overcome the refusal based on trademark similarities, but only when the trademarks are not too similar to be identified. The applicant shall seek advice from an attorney as early as possible to buy more time for the preparation of the letter. If the applicant decides to obtain a letter of consent, the letter should be submitted in time as evidence and completed with required notarization and legalization if it’s signed outside of mainland China. Additionally, the letter of agreement shall not include engagement that violates the Trademark Law or other illegal issues. The counterparty of the letter of consent shall be the holder of the cited trademark.