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Combined Trademarks - file Separately or together?

Pony Jianping LI | Dec 18, 2020

 

Combined trademarks are those that consist of multiple elements such as brand names and logos. Many people favour combined trademark applications for saving costs while achieving the same goal in one go. Is that all correct and is there an optimal solution? Let’s explore.

● Separate Applications

Separate applications refer to filing trademark applications for graphic elements and textual elements respectively. The main advantages of doing so are:

1. Reduced risks of rejection
According to Chapter 4 of Part III of the Chinese Trademark Examination Guideline, a trademark application containing graphics and textual elements will be rejected if either element is identical or similar with other trademarks.

We have seen that many applications are rejected for this reason in practice. In most cases, combined applications inherently have a higher risk of rejection compared to single-element application.

2. Freedom of use
It is common in day-to-day business activities to split combined trademarks into graphic and textual trademarks for separate use, or reposition the two elements. However, these are typical non-standard uses which may put the registered rights at risk if any non-use cancellations arise.

This is what could happen: your trademark is above three-year-old and a non-use cancellation is filed against it (which is not an uncommon event), so you need to provide evidence of use to keep the trademark valid, but the trademark in use does not correspond to that of the registration. What will happen? Depending on the circumstances, the examiner may accept the evidence of use, but more likely he/she will not. Speaking plainly, if the way you use your trademark is substantially different from the way it was registered, you may end up with no trademark at all.

How can this be avoided? This is where separate applications come into play. If an appropriate separate filing approach is taken and provided that these separate applications are approved for registration, you could use them separately or in combination, or change their position at will.

3. Stronger protection
Can a registered combined trademark protect the individual elements that make up itself? For example, would it be an infringement for a third party to steal an element of your combined trademark, say a graphic, and then use it in combination with his own brand name? The short answer is NOT NECESSARILY.

In more detail, it all come downs to the degree of similarity of the trademarks as a whole and whether it will cause confusion. This is not a straightforward matter, and this can lead to constraints when it comes to enforcement (for example, e-commerce platforms cannot directly identify this as infringement and disable infringing links).

Separate applications, on the other hand, is a better solution to these problems.


● Combined Applications

Combined Applications refer to filing trademark applications for the combination of elements in a single application. With so many benefits of separate applications, are there advantages for combined applications? The answer is YES.

1. Increased registrability
When separate applications for textual elements or graphic elements are hindered by prior similar trademarks, combined applications may be helpful for non-similar arguments and have a better chance of registration. This is reflected in Chapter 4 of Part III of the Chinese Trademark Examination Guideline.

Here are two examples. The combined trademark applications got refused because their graphic elements were deemed similar to the cited trademarks, but our arguments of dissimilarities that mainly attribute to the textual part were upheld by CNIPA.

Applied-for trademark No.G1474481

Cited trademark

Applied-for trademark No.34973459

Cited trademark

2. Augmented distinctiveness
When distinctiveness of a textual-element or graphic-element application is weak, a combined application may be a solution to this problem.

In the following two examples, the wording "ADAPTIVE HEALTH" in class 44 (mainly refers to medical care services), and “TOOL SOLUTIONS” in class 8 (mainly refers to hand-operated tools and implements for performing tasks) is less distinctive, but with the addition of graphic element, it can hardly be concluded that the trademark as a whole is in lack of distinctiveness and this is how we prosecuted the applications to registration.

Trademark No.G1461535

Trademark No.31711450

● Conclusion

Separate applications and combined applications have their own merits, and the two should be complementary rather than interchangeable in most cases.

If applicants have sufficient budget, it is advisable to file both separate and combined applications. This should be the optimal solution for achieving maximum protection, increasing the success rate of registration and ensuring an early filing date which is particularly important in China where first to file is the norm. If budgets are tight, then the applicants should consult a Chinese trademark attorney to see how it can achieve the most desirable outcome with lesser costs.

Reference

Chapter 4 of Part III of the Chinese Trademark Examination Guideline

1. If the Chinese characters of two trademarks are partly identical or similar, which will easily confuse the relevant public about the source of goods or services, they shall be judged to be similar trademarks.

2. If the foreign characters, letters, and numbers of two trademarks are partly identical or similar, which will easily confuse the relevant public about the source of goods or services, they shall be judged to be similar trademarks. However, if the overall pronunciations, meanings, or appearances of the two trademarks are clearly distinguishable, and they are not easy for the relevant public to confuse the source of the goods or services, they shall not be judged as similar trademarks.

3. If the Chinese characters of a trademark and other characters in different languages of another trademark have the same or basically the same main meaning, which will easily confuse the relevant public about the source of goods or services, they shall be judged to be similar trademarks. However, if the overall compositions, pronunciations, or appearances of the two trademarks are clearly distinguishable, and they are not easy for the relevant public to confuse the source of the goods or services, they shall not be judged as similar trademarks.

4. If the graphics of two trademarks are partly similar, which will easily confuse the relevant public about the source of goods or services, they shall be judged to be similar trademarks. If the distinctiveness of the graphics are weak because they are the common patterns of the goods, or mainly being used for decoration and background, and the overall meanings, pronunciations, or appearances of the two trademarks are clearly distinguishable, which will not easily confuse the relevant public about the source of the goods or services, they shall not be judged as similar trademarks.


Pony Jianping LI



Ms. LI graduated from Guangdong University of Foreign Studies, and she joined Jiaquan in 2018.

Ms. LI is a paralegal of Jiaquan IP Law. She is responsible for the process follow-up and customer communication of trademark and copyright protection issues, such as trademark availability search, registration application, opposition, invalidation, cancellation, administrative litigation, and copyright application. She has accumulated a wealth of professional knowledge and experience.

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