WHAT IS THE RELATIVE GROUNDS?

Article 30 of Trademark Law of the People’s Republic of China “where an application for registration of a trademark is not in conformity with the relevant provisions of this law, or it is identical with or similar to a trademark of another person that has been registered or that has been preliminary approved for the same or similar goods, the Trademark Office shall reject the application and shall not publish it.” 

Article 31 of Trademark Law of the People’s Republic of China “where two or more applicants for trademark registration apply for the registration of identical or similar trademarks for the same or similar goods, the trademark that was first applied for shall be preliminarily approved and announced; Where an application is filed on the same day, the trademark that has been used earlier shall be preliminarily approved and published. Other applications shall be rejected and no announcement shall be made.”

In short, if the application for registration of the trademark with other, 

1. A registered trademark on the same or similar good

2. A trademark on the same or similar goods that has been preliminarily examined and approved

3. Applied for prior trademark

4. The trademark filed on the same day but used earlier.

If the trademark is the same or similar, it shall be rejected by China National Intellectual Property Administration. Usually, the trademark is rejected for the above grounds, it is called relative reasons. 

SUGGESTIONS AND ACTIONS CAN BE TAKEN

When we receive the notice of rejection from the Trademark Office, if the rejection is due to the above relative reasons, we can suggest the customer to increase the success rate of the review from the following points: 

1. The application for a trademark is not the same or similar to the cited trademark. 

Based on the standards of trademark examination and trial, the general attention of the relevant public is taken as the standard, and the whole and main parts of the applied trademark and the cited trademark are compared from the aspects of the sound, shape, meaning and overall expression of the trademark itself, so as to judge whether the trademark is the same and similar at the same time, factors such as the distinctiveness of the trademark application and the popularity of the prior trademark, as well as whether the use of the same or similar goods (services) by both parties is likely to cause non-confusion or misidentification by the relevant public, etc. 

2. Possibility of cancelling prior cited trademark

As per Article 49 of Chinese Trademark Law “where a registered trademark has become the general name of the goods approved for use, or has not been used for three consecutive years without a good reason, any entity or individual may apply to Trademark Office for cancellation of that registered trademark.” Therefore, if the cited trademark has been registered for three years and no evidence of the use of the cited trademark is found after a preliminary search on the Internet, we can suggest that the applicant file and application to revoke the use of the cited trademark for three years. If the owner of the cited trademark fails to provide valid evidence of use, the bureau will revoke the registration of the trademark on its approved use of goods/services according to the law. The cited trademark will not constitute an obstacle to the registration and application of the trademark.

In addition, in order to improve the success rate of withdraw three, in order to better to remove obstacles of application for trademark registration, if the cited trademarks and apply the use the trademarks and apply the use the trademark only in part of goods or services on the same or similar, we can recommend the applicant to cite trademarks part from three, namely to cite only with the application for trademark in the trademark conflict of goods or services in the group for cancellation similarity, after successful revocation, the citation of the trademark will not constitute an obstacle to the registration and application of the trademark.

3. Possibility of transferring the cited trademark

If after comparing the similarity between the trademark application and the cited trademark, the probability of rejection review is not very high, and the cited trademark has not been registered for three years, which cannot be applied to the above two suggestions, we can suggest the applicant to consider negotiating with the owner of the cited trademark for transfer If the cited trademark can be successfully transferred to the applicant, then the cited trademark and the application trademark belong to the same subject, and the cited trademark will no longer constitute an obstacle to the registration of the application trademark. 

4.Coexistence Agreement

It is suggested that the applicant and the cited trademark owner negotiate coexistence, which can also improve the success rate of the rejected review. Considering that the trademark belongs to private rights, the trademark coexistence consent is the subjective expression of the cited trademark owner. If both parties reach coexistence agreement, it will be of great help to the success of the review case It is worth noting that for the same or highly similar trademarks, even if both parties reach coexistence, it is likely not recognized by Intellectual Property Office. Therefore, coexistence agreement is not an absolute protection for the rejection of the review case.

5.Other Situations

In addition to the trademark with clear status, there are other special circumstances in the cited trademark in the rejection notice, for example, the cited trademark has not been renewed upon expiration, the cited trademark is in the process of being rejected or waiting for the review of rejection, or is in the process of invalidation of opposition and other procedures The above procedure makes the final state of the cited trademark has not yet been established, so we can suggest the applicant at the time of submission review rejection request rejected authority bureau suspend the adjudication of the review, in the state of the waiting for the cited trademark, after trial again Once the cited trademark loss of rights in any of these programs will not pose a barrier to the application for trademark.

Conclusions

According to the above suggestions, we can effectively reduce the barrier of prior rights of trademark application in the case of rejection of relative reasons. When a new application case is issued with rejection notice, it does not mean that the chance of successful registration of the trademark is slim We can analyze the cited trademarks one by one and find the most appropriate and effective response for each cited trademark. Meanwhile, we actively advise customers to take actions on the cited trademarks to improve the success rate of trademark review and achieve the goal of successful trademark registration.