Author: Erex Chen
In current trademark application practice, many trademark applications are rejected due to the similarity with the cited trademark. When rejection happens, to safeguard its interest, trademark applicant usually will take remedy measure as follows:
- Filing appeal to Trademark Review and Adjudication Board (the Board) arguing the existence of significant differences between the trademark for application and the cited trademark, which will not cause public confusion.
- Filing opposition or invalidation application against the cited trademark.
In addition to the above remedies, some of trademark applicants may consider submitting a letter of consent issued in the name of the owner of the cited trademark, which allows the registration of the trademark by the applicant, or a co-existence agreement concluded by the applicant and the owner of the cited trademark. However, with regard to the legal effect of such letter of consent or co-existence agreement, the Board and the court give different opinion.
In a trademark application involving trademark STELUX (trademark No. 7522204), the applicant is STELUX Holdings (Group) Limited (“STELUX Group”), the designated commodities for this trademark include boxes of precious metal, watches, jewels, etc in class 14.
After examination, the Trademark Office granted the trademark on boxes of precious metal while rejected the registration request on other commodities such as watches, etc. The given reason is the trademark for application is similar with the cited trademark.
The cited trademark is STELLUX (trademark No. G984611). The designated commodities for the cited trademark include watches, watch glasses, jewels, etc, in class 14. The trademark for application and the cited trademark only differ by a letter L.
After that, the trademark applicant filed appeal to the Board claiming that the trademark for application had been used as its trade name and after long time using, the trademark for application has enjoyed the market recognition. Meanwhile, the trademark applicant raised opposition against the cited trademark. However, the result of the appeal and the first instance administrative lawsuit were not in favor of the trademark applicant.
It is worth mentioning that after the first instance of lawsuit was brought, the trademark applicant submitted to the court a letter of consent issued by the owner of the cited trademark, as well as a co-existence agreement concluded by the applicant and the owner of the cited trademark, which were notarized and legalized. According to the letter of consent, the owner of the cited trademark agreed that the applicant can register and use the trademark filed and the commodities allowed for the trademark include clocks, watches, wrist watches, the works of a clock or watch, watch glasses etc.
After this case entered into the second instance in Beijing High People’s Court, the Court is of the opinion that the letter of consent and the co-existence agreement shall be deemed as the disposition of the right by the prior trademark owner. The disposition does not obviously harm the interest of the public, which shall be accepted by the Court.
On that basis, Beijing High People’s Court finally cancelled the decision made by the first instance court and requested the Board to make a new decision.
At present, the trademark file by the applicant has been preliminary examined and put on publication to the public.
Therefore, we conclude that the letter of consent issued by the owner of the cited trademark shall have substantial influence to the grant of the trademark filed by the applicant.
This article is published solely for the interest of friends and clients and should not be relied upon as the legal advice of any kind from us. Should you have any questions about this article, please contact the partner of Mylink Law Office.
Erex Chen, Managing Partner