Keyword
Acceptability of Letters of Consent in Trademark Review

Kavin Tan | Jul 30, 2020

What is a Letter of Consent?
“Coexistence of trademarks” refers to a situation in which different entities use identical or similar trademarks for the same or similar goods or services in commerce, while both trademarks can lawfully co-exist. A “Letter of Consent” (LoC) is an agreement issued by the owner of an earlier trademark which consents to the coexistence of a later-filed trademark with its earlier one. It is possible that refusals due to the similarity to earlier trademarks are overcome after an LoC from the cited mark owners is obtained. We would like to share with you a recent case of ours which can be considered a typical one.

Case review:
The trademark application “BASE FEEL THE COMFORT” was refused as the examiner considered it is similar to earlier trademark registrations which violated Article 30 of the Trademark Law. Details of the application and the cited marks are as follows.

Reproduction of trademarks

Designated goods

        Subclass

Trademark application

Work clothes; work shoes; headgear; shoe inserts for non-orthopaedic protective purposes; work boots; soles for footwear; inner soles; coveralls.

2501;2507;2508

Cited mark 1

Articles of clothing; headgear; boots, shoes and slippers.

2501;2507;2508

Cited mark 2

Articles of clothing; articles of footwear; headgear; boots, shoes and slippers.

2501;2507;2508;

According to Article 30 of the Trademark Law, a trademark registration shall not constitute a similar trademark on similar goods with an earlier registration or application filed by others. In this case, the main argument was that there are certain differences between the trademark application and the two cited marks in terms of overall appearances, composition, combination of characters, etc. Besides, the applicant submitted a notarized and legalized LoC issued by the owner of the two cited marks.

Given the owner of cited marks has consented to the coexistence of the trademark application and its trademarks, the cited marks no longer constitute obstacles for the applied-for trademark. As a result, CNIPA approved the registration of “BASE FEEL THE COMFORT” in the review.

According to Article 8 of Guidelines of Trademark Examination, trademark rights are private rights, so whether there is a conflict between the trademark application and the cited mark is mainly a matter of private right dispute. If two parties reach an agreement of coexistence, the conflict between them shall be found moot.

Are LoCs the panacea for all similarity-based refusals?
NOT REALLY. Trademarks are important symbols used to distinguish the source of goods or services. To determine whether the trademark application constitutes a similar trademark to the cited mark or not, the examiner would consider how similar they are and how likely it would cause confusion to the public. The LoC can only be used as preliminary evidence in terms of confusion elimination. In general, the acceptability of an LoC is influenced by the degree of similarity of trademarks and designated goods/services, as shown in the following table.

Trademarks

Designated goods/services

Acceptability of the LoC

Identical

Identical

LOW

Similar

Identical

HIGH

Identical

Similar

                        HIGH

Similar

Similar

HIGH

In a trademark review case, an LoC signed between the trademark applicant and the owner of the cited trademark can be seen to have eliminated the conflict between the two entities. However, one of the legislative purposes of Article 30 of the Trademark Law is the protection of the legitimate rights and interests of consumers. Thus, the examiner will carefully consider whether the two trademarks can be distinguished by consumers and whether it is likely to confuse the public, before taking the LoC into account.

Formality requirements of LoCs:
1.The cited mark owner shall consent to the application for registration of the trademark application in a written agreement, specifying the information of the applied-for trademark.
2.The letter of consent shall not contain any conditions or time limits.
3.The letter of consent shall be true, legal, and effective. If the owner of the cited mark is a domestic enterprise, notarization of the document is recommended; if it is a foreign enterprise, both notarization and legalization are required.

Conclusion:
As one of the most important means to overcome a trademark refusal, a LoC can be a win-win solution for all parties. However, a LoC is not the silver bullet for all similarity-based refusals as the similarity between two trademarks should be considered, in order to determine whether they are likely to cause confusion and misunderstanding among relevant consumers.

Legal basis:
2019 Guidelines of the Higher People's Court of Beijing for Hearing Administrative Cases on Trademark Authorization and Determination

15.10 [Legal nature of LoCs] LoCs may be prima facie evidence of confusion elimination in determining whether the applied-for trademark and the cited trademark constitute similar trademarks.

15.12 [Legal effect of LoCs]
If the cited mark and the applied-for trademark are the same or substantially the same, and used on the same or similar goods, the application for registration cannot be granted only on the basis of a LoC.
If the cited trademark is similar to the applied-for trademark and is used on the similar goods or services, while the owner of the cited trademark issues a LoC, in the absence of other evidence that the co-existence of the applied-for trademark and the cited trademark will cause confusion in the relevant public about the source of the goods, it can be concluded that the applied-for trademark and the cited trademark do not constitute similar trademarks.

...

Guidelines of Trademark Examination
Article 8, During the trademark review period, the parties involved have the rights to dispose of their trademark rights and rights related to trademark review in accordance with law. On the premise that the public interest of the society and the rights of third parties are not harmed, the parties involved may reach a settlement in writing by themselves or through mediation.

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