Could Coexistence Agreement Be Accepted in Trademark Application in China?

(By Yue Mengyan) Pursuant to China trademark laws and regulations, if certain trademarks have been already registered for certain goods, applicants cannot apply for such same or similar trademarks for any same or similar products. However, if the trademark coexistence agreement is made by the right holder of prior registered trademark and applicant of an identical or similar trademark without interfering in each other’s interests, then it is possible for the applicant to successfully obtain the approval of such application.

Case Introduction

Plaintiff: Beijing Weimeng Kechuang Network Technology Co., Ltd. (Referred to as “WEIMENG”)

Defendant: Trademark Review and Adjudication Board (Referred to as “TRAB”)

Right holder of Reference Trademark: Sina Technology (China) Co., Ltd. (Referred to as “SINA”)

Court: Beijing Intellectual Property Court  No.: (2016)京73行初818号

In 2014, WEIMENG applied the Disputed Trademark to the China’s Trademark Office (“CTMO”) under Class 39 for services including broadcast and television, wireless radio, information transition and televising. Since SINA has already obtained the registration of the Reference Trademark under Class 38 for the services similar to those of the Disputed Trademark, the CTMO rejected the WEIMENG’s application for the Disputed Trademark on the grounds that the Disputed Trademark is similar to the Reference Trademark.

WEIMENG then applied to the TRAB for trademark review, and submitted a trademark coexistence agreement signed with SINA, which is to prove that SINA acknowledged and agreed WEIMENG to register and use the Disputed Trademark. Upon reviewing the evidences and reasons, the TRAB concluded that, the Disputed Trademark is similar to the Reference Trademark on graphic structures and modes of compositions and also used in the same services, causing confusion of the public. Therefore, the TRAB dismissed the application of review.

Dissatisfied with the decision made by the TRAB, WEIMENG filed a lawsuit to the court. The court determined that, though the Disputed Trademark and the Reference Trademark are similar in the terms of their graphic structures and modes of compositions, there are certain differences in general. To determine whether trademarks are similar, the opinions from the right holder of Reference Trademarks shall be taken into consideration. In this case, WEIMENG and SINA are affiliates and thus share the same interest. As such, the Disputed Trademark will not easily cause the confusion of the relevant public. Therefore, the court adjudicated to rescind the decision of TRAB, and ordered the TRAB to remake the decision concerning the Disputed Trademark.

 Lawyer’s Comments

  1. In special situations, it is possible to apply trademarks identical with or similar to a prior registered trademark owned by another party on identical or similar goods

Generally, with regards to certain trademarks which have been registered on certain goods or services, any latter applications of the same or similar trademarks filed by another applicant will not be registered. But if the applicants want to register a similar trademark, they may reach trademark coexistence agreements with right holders of prior trademarks. Such trademark coexistence agreements show that the right holders of prior trademarks acknowledge and agree the latter applications.

When there are differences between the prior trademarks and the trademarks to be applied on compositions and visual effects, the opinions of right holder of prior trademarks shall be taken into considerations before determining whether such two trademarks are similar. If the right holders of prior trademarks signed coexistence agreements and stated that the trademarks to be applied wouldn’t cause the confusion, or gave the permission of such applications, the TRAB might not determine that such trademarks constitute similarities.

  1. The requirements for approval of such applications with trademark coexistence agreements

The purpose of trademark is to differentiate the origins and sources of the goods or services from different manufacturers. If similar trademarks were registered on same or similar goods, it may cause the public confused or misunderstood. Thus, if applicants want to gain approvals from the CTMO or the TRAB, besides the coexistence agreements issued by right holder of prior trademarks, the applicants shall also submit evidences to prove that such trademarks to be registered will not cause the confusion among the relevant public and won’t bring any damage to consumers.

In this case, WEIMENG explained its affiliated relationship between SINA and itself, and thus the court confirmed that the interests of the applicant and the right holder of the Reference Trademark are consistent. In practice, we suggest that the affiliated companies sign and submit such coexistence agreements as evidence while applying for trademarks similar to prior trademarks. It will significantly improve the possibility of getting registrations of trademark applications.

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