Successfully handling rejection reviews, based on a prior similar mark, in the past has proven difficult. Rather than simply giving up registration of an important trademark, recent China Trademark Review and Adjudication Board (TRAB) decisions indicate that an effective alternative for applicants is trying to reach a co-existence agreement with the owner of the cited mark. If there is a slight difference between the preliminarily rejected trademark and the cited mark, and the marks do not cover identical goods or services, a co-existence agreement could become “a must” for overcoming a preliminary official rejection.
Recently we received a favorable decision for a client from the TRAB on a trademark rejection review. Since the rejected trademark and the cited mark differed only in one of ten letters and the two marks also covered similar goods, we expected the board to reaffirm the previous rejection based on Chinese trademark examination criteria. The obvious deciding factor resulting in a favorable review was the Co-existence Agreement entered into by our client with the owner of the cited mark. The co-existence agreement in essence consented to the registration and use of the trademark by our client in China.
Written by Zhu Fangjin, Associate, Trademark Group