Trade Marks in China: Co-existence Agreements

When resolving the conflict between two identical or similar trademarks on the same/similar goods and/or services in the process of registration, one persuasive argument for the CNIPA is to avoid potential consumer confusion if proposed mark and prior mark co-exist in the marketplace. To address this issue, the popular strategy for trademark holders involved is to reach a co-existence agreement in relation to subject marks.

The basic elements of the agreement include the name of parties involved, identification of trademarks, the term and regions/locations agreeable to the other party using and an express for good will. To enhance the possibility for trademark co-existence agreement being admitted by the authority when facing trademark disputes, If there are foreign holders involved, the formality of the agreement should be compliance with evidence requirements, such as being notarized and legalized, and signed by both parties.

However, according to legal practice, the agreements alone could not be convincible as expected especially if the marks are identical. Supplementary evidence is always welcomed to make your stance stronger. From this perspective, the following points are drawn as below to your attention.   

  1. A statement to disclose the relationship between two parties involved, for example, if they are associated companies.
  2. A statement to declare non-overlapping business scope, trade channels and/or customer market between two parties involved.
  3. Any relevant rights such as identical or similar business name liaising with the proposed mark, which help to avoid customer confusion with cited mark.  

Representative cases:

Case 1: WIN

               

 

Appl. No.19088699                        Appl. No.1782199        Appl. No. 9676196

 

In the case, the judge upheld the claimant’s appeal on the grounds of:

  1. The proposed mark is similar but not identical to the two cited marks.
  2. All mark owners are associated companies with respective customer market.
  3. All mark owners have obtained great reputation in the related industry. Additionally, the proposed mark is filed in good faith and also used as the business name of its applicant.

Case 2: LOST

                                                        vs.                                     

 

                            

Appl.  No.26557240                                              

                                                                                                                          Appl. No.G661066         

By contrast, the court dismissed this case on the grounds of:

  1. Two trademarks are defined as similar marks, therefore there is possibility to cause a likelihood of the confusion.
  2. Without further evidence, considering the similarity of these two marks, only the co-existence agreement is not sufficient to avoid consumer confusion.

If you would like to discuss your Chinese application further, please do not hesitate to get in touch

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