Which remedy for a trademark application refusal is better: non-use cancellation action against cited trademark or appeal against the China Trademark Office’s refusal of protection with argument of no likelihood of confusion?

Email to: vinh@bross.vn

Amount of trademark applications filed in China between 2015 and 2018 (Source: CNIPA)

Recently, successful registration of a brand name or trademark in China has become much more difficult because of the huge amount of earlier filed trademarks available in China. The whole year of 2018 had a total of 7.370.000 trademark applications filed with the Chinese Trademark Office (CNIPA[1]) increasing by 28.2% compared to 5,750,000 trademark applications filed in 2017[2]. One of the most common causes of unsuccessful trademark registrations that is, an-applied mark is often rejected since it is similar to another person’s previous trademark. For example, see the rejected trademark “Dielac & device” by Vinamilk as below:

Applied-for Trademark

Earlier Trademark

Class 29: Milk; cream [dairy products]; yogurt; cheese; milk products; soya milk [milk substitute].

Class 30: Nutritional flour made of cereal; tea; cocoa.

International registration no. 1251247 dated 10/02/2015

Reg. No 1987916 (Cited mark 1)

Class 29: Powered milk, milk products, milk, cream (dairy products), milk beverages (milk predominating), protein in foods.

Reg. No. 10321360 (Cited mark 2)

Class 29: Milk, milk products, powered milk, egg, soya milk (milk substitute), protein foods, jelles for foods, edible fats.

On February 2, 2016, the CNIPA sent the WIPO’s International Bureau a notice no. GJZCG1251247BHYW01 refusing partial protection of the applied-for mark Dielac, specifically the entire class 29 by reason of a likelihood of confusion with the earlier trademarks Dulac in violation of Article 30 of the Chinese Trademark Law of 2013. Also according to this notice, Vinamilk has the right to appeal to the CNIPA (formerly as China Trademark Appeal Board, TRAB) within 15 days[3] from the date of its receipt of this notice.

Which measure overcoming refusal: review with argument of no likelihood of confusion or non-use cancellation against the trademarks Dulac?

Previously, Vinamilk had registered international trademark "Dielac" (standard character) under international registration no. 985221 but was rejected by the CNIPA because it resembled the earlier registered trademark "Dielac" / Reg. No. 6429320 designating class 29 including milk. However, at the time of examining an international application no. 1251247 (this time Dielac is put on a device), the CNIPA surprised us since it utilized a different trademark DULAC to reject Dielac (Reg. No. 6924320 has expired without renewal) – that the CNIPA in the past did not use.

As such, it can be seen that the CNIPA’s viewpoint on likelihood of confusion tends to be more strict than before. Bross & Partners and local lawyers believe that the trademark Dielac has undisputed distinctiveness and capable of distinguishing the earlier trademark Dulac in consideration of structure, pronunciation and overall impression. However, because CTMO tends to examine more strictly, the chance of reversal is not really high where an appeal is based on purely dissimilar arguments. For the reason, we decided to cancel the validity of 2 trademarks Dulac in China for a consecutive period of 3 years.

Hired by Vinamilk, Bross & Partners in collaboration with its local lawyers filed a request to cancel the two marks DULAC due to 3 consecutive years of non-use in China[4] and concurrently appealed against the rejection by the CNIPA.

Successful removal of cited trademark and successful review

In accordance with the Chinese Trademark Law and its practice, the owner of trademarks DULAC – International Nutrition Co. Ltd. A/S – was required within 2 months to provide with its evidence of use of its registered trademarks in class 29 in China between April 11, 2013 and April 10, 2016 to counter-act the cancellation action submitted by Vinamilk.

As International Nutrition Co. Ltd. A/S did not provide evidence of use pertaining to the trademarks DULAC in China, the CNIPA issued a decision on invalidation of these two trademarks and in the meantime on October 23, 2017, the CNIPA released decision no. 0000125519 to lift refusal and to issue a statement of grant of protection following a provisional refusal in favor of international registration no. 1251247[5] (see a copy of decision right below)

Should you have any query, please contact us at vinh@bross.vn or 84-903 287 057

Bross & Partners, a renowned and qualified Patent, Design, Trademark and Copyright agent of Vietnam, constantly ranked and recommended by the Managing Intellectual Property (MIP), World Trademark Review (WTR), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia IP and Asian Legal Business, is providing clients all over the world with the reliable, affordable contentious and non-contentious IP services including enforcement, anti-counterfeiting, litigation regarding trademark, trade name, industrial design, patent, copyright and domain name.

[1] Effective as of April 1, 2019, there is no more “CTMO” (China Trademark Office) or “TRAB” (China Trademark Appeal Board). These two entities are now combined with the patent agencies, including China’s Patent Review Board and SIPO, into and under what can only be described as one huge government administration: the China National IP Administration (CNIPA).

[2] China has been the busiest country in the world for more than 10 years in terms of receiving and handling trademark applications. According to the 2018 National Statistical Office of China’s (CNIPA) statistical report, a total of 7,370,000 trademark applications were filed in China in 2018, an increase of 28.2% compared to 5,750. 000 trademark applications filed in 2017 (nearly 20 times more than Vietnam). Because of such a huge source of trademark data, successful trademark registration in China is becoming increasingly difficult because later filed trademarks are very likely to be rejected due to similarity with the previous filed/registered trademarks. In short, we found out three most common types of refusal usually concluded by CNIPA to reject junior trademarks: (a) similar to senior trademarks; (b) the common name or common shape of goods or services; (c) deceiving the public or be contrary to social order. In order to be able to overcome the CNIPA’s refusal the (a)-based most regular, one of the best ways is to file a validity suspension or revocation of senior trademarks as they are not used in commerce. See the statistics report of CNIPA 2018 (in Chinese) at the link:: http://www.sipo.gov.cn/zscqgz/1135326.htm

[3] The time limit for Vinamilk to appeal is only 15 days, a record short period especially for foreign applicants. This is a huge obstacle for Vinamilk because as we mentioned in our article: http://bross.vn/en/international-registrations/HUONG-DAN-DANG-KY-NHAN-HIEU-TAI-TRUNG-QUOC-1389 that CTMO requires the applicant to file a review within 15 days (non-renewable) of the date of receipt of rejection. In addition, the applicant is required to provide an envelope containing a postmark as evidence of the date of receipt of refusal by the applicant or his representative. Otherwise, the appeal will not be accepted. Whereas if the application is filed in the national route, it will not be required as above. Therefore, if a possible refusal may be anticipated in advance, you are recommended to register your trademark in the form of national registration instead of international registration (through the Madrid system) is bettor

[4] In Vietnam, time limit for a third party to terminate the validity of a registered trademark due to non-use is 5 years from the date of registration, except for justified cause

[5] See: Statement of grant of protection following a provisional refusal under Rule 18ter(2)(i) by China: https://www3.wipo.int/madrid/monitor/en/ regarding international registration no. 1251247