Too tight to file?
The China Trademark Office receives over 7 million applications annually. For this reason, obtaining trademark protection in China has already become a challenge in the most popular classes. And exactly therefore conducting proper brand audit and drafting of registration strategy in particular classes became even more important. It is to equip the client with knowledge about actual situation in trademarks' data base, which provides him the comfort of knowingly making decisions about further actions.
We are pleased to work for a customer which has decided to submit a word and graphic mark in China in three classes. A characteristic feature of this mark is one dominant letter, which due to its size is the distinguishing mark of the sign.
The audit we have done did not provided us an unequivocal answer as to the chances of obtaining registration. In relation to the brand text transcription - we did not find previously submitted mark with identical wording. However situation was more complicated considering graphic design. It turned out that the aforementioned dominant one letter was also a popular distinguishing feature of thousands of other trademarks in a given classes. Obviously we concluded a risk of rejection of the application, precisely because of the huge number of others, similar previously filed trademarks.
Nevertheless, we have a certain paradox here. While thousands of other trademarks containing a similar distinguishing element have been protected at the China Trademark Office over the years, we know from practice that there is a considerable risk of rejection of an application for protection of a customer mark due to the similarity of the distinguishing element.
In fact, these situations give rise to numerous questions about the guidelines the examiner at the China Trademark Office is driven by. Chinese Trademark Authority, like everyone similar to it from a different country, is guided by numerous criteria when considering a given application. Based on the conclusions of the projects we have done for clients in China, it appears that the examiner often refers to the principle of preventing confusion of clients in its verdicts. On the other hand, it also grants a registration to relatively similar marks in the same time. In such circumstances, often the only solution is simply to try to register according to the old rule that without trying more you can lose than gain.
Our customer is determined to get protection for his brand. We will probably know the decision of the Chinese Trademark Office at the turn of 2020/2021.