By Yang Hua Ding Xianjie and He Tongjun King&Wood Mallesons’ Intellectual Property Group
What should we concern: when determining the level of similarity between trademarks, it should be limited to comparing the part that the citation mark has acquired the right to exclusive use with the mark in application. The part that is disclaimed of the exclusive right to use in an early registration even if has distinctiveness should not constitute a valid part for comparison and impede registration of a later filed trademark.
“Disclaiming the right to exclusive use” in trademark application refers to the situation in which the proprietor makes a disclaimer to give up any right to exclusive use for a part of the trademark, in order to avoid rejection of the whole application due to registrability issue of the disclaimed part. Signs prohibited from registration due to lack of distinctiveness are the part that is more commonly disclaimed of the right to exclusive use. In practice, some proprietors also disclaim the right to exclusive use for a part that has distinctiveness (the Disclaimed Part), which gives rise to the issue referred above, whether the Disclaimed Part will function to impede the registration by others of a later filed application. Continue Reading Trademark comparing: disclaimed part no longer valid even with distinctiveness
