The Chinese Supreme People’s Court to Engage in Overruling Lower Courts’ Judgments and CNIPA’s Decisions on Denial of Letter of Consent in Support of Overcoming Trademark Protection Refusal in China

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Can a Letter of Consent Help You Surmount a Rejection of Protection of a Trademark in China?

In order to overcome trademark protection refusal based on confusingly similar to earlier trademark in China, the practice has shown that applicant is regularly advised to attempt and obtain a letter of consent, as one of four solutions[1], signed by the owner of earlier trademark which was cited by the CTMO as a refusal ground.

Letter of Consent (other similar wordings as Consent Letter, Consent Agreement) is in nature a written agreement, whether in the form of a simple statement or a co-existence agreement, according to which the owner/registrant of cited trademark (which is already registered and used by CTMO to reject the applied-for trademark due to a likelihood of confusion) consents to the registration and use of that applied-for trademark.

China is among 58 countries surveyed by the 2010 WIPO questionnaire on the practice of accepting or refusing to protect trademarks based on the Letter of Consent[2]. According to the survey results, presenting a Letter of Consent to overcome the refusal of protection can be approved by China in two legal procedures, including: (a) opposition against applied-for trademark based on an earlier trademark right, or (b) invalidation or cancellation action against a registered trademark based on earlier registered trademark. However, due to lack of statutory provision in the substantive law involved in the Letter of Consent, prediction of likelihood of CNIPA’s grant or denial of an applied-for trademark although having recourse to the letter of consent has become uncertain.

Google Inc. appealed and brought administrative lawsuit as its submission of letter of consent was disallowed

Google Inc. sought to register the trademark " NEXUS" under application no. 11709161 designating "laptops and handheld computers" in class 09 but it was refused protection because of its resemblance to the pre-existing trademark "NEXUS" under registration no. 1465863 used for "computer for bicycle" in class 09 owned by Shimano Inc. During the complaint process, the Trademark Review and Adjudication Department (TRAD)[3] still dismissed a notarized and legalized Letter of Consent granted by Shimano Inc - the registrant of earlier registered trademark "NEXUS” described in the above table.

Both the Beijing IP Court and Beijing Higher People's Court upheld the TRAD's refusal by rejecting the lawsuit including administrative case appeal filed by Google Inc., arguing that even if a cited mark owner had issued a Letter of Consent, grant of protection of the applied-for trademark that is nearly identical with the earlier trademark used for similar product, would disrupt the steady market order and cause confusion to the public.

On the judicial review, the Chinese Supreme People's Court of China declared to revoke lower courts’ judgments and CNIPA’s decisions, contending that:

1. Shimano's Nexus-branded product referred to the sport of bicycles only, while Google's Nexus-branded product is under the sector of consumer electronics. Although both included computers, they differ in function, purpose, sales channel, and mode of use;
2. The Letter of Consent issued by the cited trademark owner demonstrated the act of disposition with respect to Shimano's earlier registered trademark right, so it must be respected. It is clear that the registration and use of the Nexus trademark by Google would have a direct and practical impact on Shimano's interests, but Shimano himself accepted it. There was no evidence that granting Nexus to Google would harm the public interest or the national interests. While there was no evidence of such harm, but refusing the Letter of Consent based solely on the uncertain legal provisions that "causing harm to the consumer’s interests" is inappropriate;
3. Trademark (brand name) is used to distinguish commercial origin of goods or services, but the addition of business name, font size, typeface combined with the packaging and exterior decoration of the product also can help distinguish their commercial origin.

Bross & Partners has extensive experience involved in trademark opposition, counter-opposition and trademark cancellation due to non-use in China. Should you have needs, please contact us at Email: vinh@bross.vn; Mobile: 0903 287 057; WeChat: Vinhbross2603; WhatsApp: +84903287057; Skype: vinh.bross; Zalo: +84903287057.

Bross & Partners, an intellectual property renowned law firm founded in 2008, regularly ranked as top tier by Managing Intellectual Property (MIP), World Trademark Review (WTR1000), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia Leading Lawyers, Asia IP and Asian Legal Business (ALB). With many years of outstanding experience and distinctive expertise, Bross & Partners can help clients effectively protect or defend in complex intellectual property disputes in Vietnam and overseas.