In many countries and regions, if a mark is rejected by the Trademark Office with citing prior similar mark, a very common practice is that the applicant could seek for the letter of consent from the owner of cited mark to overcome such rejection. For example, in Hong Kong, the examination rule is very flexible, and as long as the two marks are not identical, the letter of consent will be accepted. The China National Intellectual Property Administration ("CNIPA") used to have a more lenient approach towards accepting letters of consent in their examination process. However, their attitude has changed recently.
Attitude for the letter of consent
There are no formal regulations or notices issued by the CNIPA to clarify such change. However, as of the end of 2021, a more stringent examination is carried out on the letter of consent, and it will only be accepted by CNIPA if the marks have significant differences. If you are familiar with CNIPA's practice, then you would conclude that the likelihood of a letter of consent being accepted is very low. From then on, a large number of review decisions no longer accept letters of consent, even in cases where the marks are related to affiliated companies.
Reason of change
We all know that the trademark right is a private right, and therefore, the CNIPA intends to protect the private rights based on the agreement reached by both parties. Under such circumstances, the letter of consent is accepted. However, these lenient rules have raised new issues below:
1) Coexistence of similar marks poses a threat to the interests of customers. The primary purpose of a mark is indentifying the source of goods and services. However, the letter of consent between two parties will not be able to rule out the risk that consumers confuse the two similar marks are from different identities. This confusion can ultimately undermine the foundation of the mark.
2) There are a large numbers of similar marks coexist, it is inevitable that the CNIPA's examination rule and level will be questioned by the applicant when their filed mark is continuously rejected and there are so many prior similar marks coexisting.
Tips
Under such strict rule of letter of consent, it has rise more challenge to the applicant for registering their mark. For facing such changes, we suggest the client with below tips.
1. Using the same entities to file the new application and implementing centralization of the management of the marks, so that to avoid the potential rejection that may arise due to the marks of the affiliated company.
2. Conducting the formal trademark search before filing the mark to better value the registrability of a mark. If facing too many prior marks and hard to remove the prior marks, then the applicant could turn to amend the mark to register it more easily.
3. Seeking other ways to remove the prior similar marks. The applicant could consider buying the prior marks, filing non-use cancellation, opposition, invalidation actions against the prior marks.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.