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General Countermeasures against Obstacles of Prior Trademarks in Trademark Application
Richard GAO
Trademark Attorney
Trademark Department
Linda Liu & Partners
An application for trademark registration is mainly rejected or partly rejected by the Trademark Office based on the absolute grounds such as having unhealthy influences or devoid of distinctiveness, or relative grounds of constituting similar trademark with a prior application or registered trademark on the same or similar goods. Thereinto, relative ground of refusal because of a prior trademark is the most common reason. However, where an application for trademark registration is refused by the Trademark Office, the trademark does not meant to be “sentenced to death”. According to provisions of the Trademark Law, where the applicant is dissatisfied with the Trademark Office’s decision in refusing the application, he may, within fifteen days from receipt of the notice, file an application with the Trademark Review and Adjudication Board for the review of the refusal. Different from the application stage of the trademark, the applicant may fully advocate his grounds and submit relevant evidences in the stage of review. In practice, many trademarks, which were initially rejected by the Trademark Office, were eventually registered through filing a review. Therefore we suggest the applicant, on the basis of careful analysis of the refusing ground of the Trademark Office, filing a review and taking corresponding countermeasures against the obstacle formed by the prior trademark, so that the applied mark may be preliminary approved. Against the obstacle formed by the cited mark, the writer hereby makes several suggestions, listed as follows:
1. Verifying the Status Information of the Trademark
For relative grounds of refusal involving a prior trademark, the applicant, after receiving the refusal notification, shall firstly verify the information of the cited mark in the Refusal Notification. Information needs verifying mainly includes: the status of the cited mark, whether the specified goods are similar, etc. The status of the cited mark shall be firstly verified with their status information recorded in the online database of the Trademark Office (http://sbj.saic.gov.cn/sbcx/). International trademark registration usually needs to be further verified in the online trademark database of WIPO. Where the cited mark is found to be invalid or partly invalid on the conflicting goods or services, the obstacle may be easily overcome by submitting invalid information of the cited mark in the review. In addition, the applicant shall also verify whether the designated goods or services of the applied mark are similar to the designated goods or services of the cited mark in accordance with the Classification of Similar Goods and Services. Where the goods or services are not similar, the obstacle may be overcome by claiming that the goods or services are not similar in the review.
2. Comparing the Similarity between the Applied mark and the Cited mark
In determining whether two marks are similar, the examiner mainly refers to the Trademark Examination Guideline compiled and issued by the Trademark Office. Therefore, the applicant, after receiving the refusal notification, shall comprehensively analyze and determine the legal basis and specific reasons of the examiner in refusing the applied trademark, and at the same time check whether the determination of the Trademark Office in the similarity between the applied mark and the cited mark is basically in consistence with the content described in the Trademark Examination Guideline, and whether exceptional circumstances shall apply. For example, where fonts of the initial letters of the marks are obviously different, the meanings are obviously different, or overall appearances are significantly different, the refusal may be overcome by claiming such differences and submitting evidences such as explanations in dictionaries.
3. Filing Opposition, Invalidation or Cancelation against the Cited Mark
Where the cited mark is maliciously registered before the application date of the applied mark, if it hasn’t been registered, the applicant, after the publication of the cited mark, may file an opposition against the cited mark with the Trademark Office in accordance with Article 33 of the Trademark Law.
If the cited mark has been registered, or if the cited mark is registered improperly, the applicant may timely file a request with competent authorities to invalidate the trademark in accordance with Article 44 or 45 of the Trademark Law. If the cited mark is not approved or is invalidated, the obstacle formed by the cited mark would be overcome.
In addition, as China has many non-used trademarks, many registrants do not actually use the trademarks or have actually deceased. These trademarks may be canceled through filing a cancellation against a registered trademark which has not used for three consecutive years (hereinafter referred to as: non-use cancelation) in accordance with Article 49 of the Trademark Law. Non-use cancelation is one of the commonly used countermeasures against the obstacle formed by a prior trademark. The applicant, after receiving the refusal notification, shall verify whether the registration of the cited mark has reached three years. In determining the registration time, the applicant shall notice that for a registered trademark which underwent opposition or review of opposition, the registration time shall be calculated from the publication date of its registration; for an international trademark registration, the registration time shall be calculated from the date when its 18-month examination period expires. Where the registration date of the cited mark has indeed reached three years, the applicant shall investigate whether the mark is used through an on-site investigation or internet investigation whether the cited mark is used. Where the use of cited mark is indeed not found, the applicant may apply a non-use cancellation. If the cited mark is cancelled eventually, it would not form an obstacle to the applied mark.
In the practice, if differences exist between the applied mark and the cited mark or between the designated goods and services of the two marks, the applicant may consider to negotiate with the owner of the cited mark and request him or her to provide a Letter of Consent to agree the registration and use of the applied mark, or sign a Trademark Coexistence Agreement to agree the coexistence of the applied mark and the cited mark.
If the owner of the cited mark agrees to provide a Letter of Consent or to sign a Coexistence Agreement, such Letter of Consent or Trademark Coexistence Agreement would normally be adopted by competent authorities as the basis for the registration of the applied mark. Therefore, as a countermeasure against the obstacle, the applicant may try to negotiate with the registrant of the cited mark and ask it to provide a Letter of Consent or to sign a Coexistence Agreement. In negotiation of providing a Letter of Consent or signing a Trademark Coexistence Agreement, the applicant shall note:
(1) Before negotiation, the applicant shall make sure that the applied mark has not been used and does not constitute trademark infringement; otherwise the applicant’s risk of being sued of infringement would increase;
(2) In practice, according to the requirements of competent authorities, the Letter of Consent and the Trademark Coexistence Agreement shall be notarized (for Chinese parties) or notarized and legalized (for foreign parties). Therefore, such requirement shall be reminded to the registrant of the cited mark during negotiation;
(3) Relevant information of the applied mark and the cited mark shall be explicitly listed in the Letter of Consent and the Coexistence Agreement to increase the success rate of the review, including: application number, application date and designated goods of the applied mark, registration number, registration date, and designated goods of the cited mark.
5. Negotiating for Trademark Assignment
The applicant may also negotiate with the owner of the cited mark to assign the cited mark. If the owner of the cited mark agrees to assign the trademark to the applicant, the parties may submit an application for the assignment to the Trademark Office. If the assignment of the cited mark is eventually approved, the obstacle would be overcome.
It’s worth noting that aforementioned countermeasures 3 to 5 are generally adopted after filing the review. According to the amended Trademark Law, the Trademark Review and Adjudication Board shall complete the review of refusal within nine to twelve months. In practice, individual cases of review of refusal are completed even sooner. However, as the required time for aforementioned non-use cancellation, negotiation for Letter of Consent, assignment of trademarks, and filing opposition or invalidation is uncertain, where the applicant hopes to take aforementioned countermeasures to overcome the cited mark, it needs to explicitly request in the trademark review to suspend the review examination, and submit relevant evidences to the examiners for their reference.
