Nancy Zhang
• Consent letter is often a strategy used to overcome a refusal issued by the CNIPA where there is potential confusing similarity between marks.
• This strategy has a much lower chance of success when the marks are identical.
• Artful drafting of the consent letter and crafting the specifications will increase the chances of being accepted by the CNIPA, including identical marks.
1. Case background information
The China National Intellectual Property Administration ("CNIPA") recently supported the Review on Refusal filed by a US company by accepting the consent letter involving two identical trademarks. In this case, the CNIPA recognized that the co-existence of the two identical trademarks (hypothetically referred to as "ABC") is not likely to confuse the public on the same software products (though for different purposes), and thereby decided that the applied-for trademark be approved for registration.
2. Benefits and significance
A consent letter is a written document signed by the owner of a senior trademark consenting to the registration and use of a junior identical or similar trademark on the same or similar goods or services.
Although there are no express provisions in Chinese Trademark Law for a consent letter, in practice, it has become a common remedy for the applicant to overcome cited marks. Nevertheless, this available remedy is not always accepted by the CNIPA. In examining the consent letter, apart from private interests, the CNIPA will consider whether the co-existence of the trademark will have a prejudice effect on the public's interests. Generally, for two identical trademarks, the CNIPA adopts a very conservative attitude in accepting the consent letter, considering that the likelihood of confusion is inevitable, and the public interest will be jeopardized and thus tending to reject the consent letter.
This case demonstrates the CNIPA's increasing flexible attitude in accepting the consent letter. Although the trademarks are identical and the goods of both parties are all computer software, the CNIPA fully considered the type and potential users of the respective computer software and therefore recognized that no confusion would be likely.
Although the CNIPA's examination is conducted on a case-by-case basis, it provided guidance for future cases.
3. Practical Tips for Applicants to Overcome Citations to Obtain Trademark Registration via Letters of Consent
These guidelines should be followed in seeking a consent letter as the remedy to overcome an identical cited mark:
a. Using specifications with limitation language in filing new applications, which should minimize the risk of confusion. The limitation language should not only help increase the chances in obtaining a consent letter from the owner of the cited mark but also help persuade the CNIPA to accept the consent letter.
b. Illustrating, in detail, in the consent letter the differences between the goods/services under the respective trademarks, such as different functions, different target consumers, and actual use information including actual use manner. All of these considerations would help to support the examiner's discretion to believe no confusion is likely in the actual use of the trademarks.
