Trademark co-existence can be divided into statutory co-existence and agreed co-existence. This article discusses agreed co-existence during a trademark granting procedure. In China, a co-existence consent serves as only one of the factors considered when determining whether trademarks are confusingly similar, and does not have absolute validity.
Section 714.05(d) of the US Trademark Manual of Examining Procedure states that, “If an applicant files a consent agreement in response to a non-final refusal under section 2(d) of the Trademark Act, and the examining attorney finds the consent agreement insufficient to overcome the refusal, the examining attorney should issue a final refusal, assuming the application is otherwise in condition for final refusal”. Based on this, the US likewise also treats a co-existence consent as a factor to consider in determining whether a trademark should be refused, and it is not absolutely admissible.
Legislative situation. Neither China’s Trademark Law nor the Implementing Regulations for the Trademark Law expressly address co-existence. In April 2019, the Beijing Higher People’s Court issued the Guidelines for Trying Administrative Trademark Right Granting and Confirmation Cases, paragraphs 10 to 12 of section 15, which specify the properties, formal requirements and legal effect of co-existence agreements, and can serve as a useful reference. The trademark examination and review criteria prepared by China’s trademark examination authority do not contain any express provisions addressing trademark co-existence.
The United States code similarly lacks provisions on trademark co-existence agreements. Section 2(d) of the Lanham Act treats “concurrent use” as one of the factors in overcoming refusal, but section 1207.01(d)(viii) of the Trademark Manual expressly states that a “consent agreement is not the same as a ‘concurrent use’ agreement. The term ‘concurrent use’ is a term of art that refers to a geographical restriction on the registration.”
However, section 1207.01(d)(viii) of the Trademark Manual contains specific provisions on trademark co-existence consents: the term “consent agreement” generally refers to an agreement between parties in which one party (e.g., a prior registrant) consents to the registration of a mark by the other party (e.g., an applicant for registration of the same mark or a similar mark), or in which each party consents to the registration of an identical or similar mark by the other party.
Time of submission of the agreement. In China, a trademark applicant may submit a trademark co-existence letter of consent or trademark co-existence agreement after the issuance of a refusal notice, at the refusal reexamination stage, or at the subsequent administrative procedure stage.
In the US, a trademark applicant may seek to overcome a refusal to register rendered, or about to be rendered, pursuant to section 2(d) of the Trademark Act, by submitting a consent agreement. That is to say that a trademark consent agreement may be submitted prior to the refusal notice being given.
Formal requirements. In China, a co-existence agreement executed by the two parties and a letter of consent unilaterally executed by the holder of the rights in the cited mark are equally valid. In practice, as a letter of consent only requires execution by one party, it is much more convenient; but if a co-existence agreement is submitted, the examiner should conduct a validity review of its terms, increasing the examination burden of the authority. Accordingly, the submission of a unilaterally executed letter of consent is the more common practice.
In the US, pursuant to the Trademark Manual, a co-existence agreement executed by the two parties is the preferred option. However, under certain circumstances, a consent document may be executed solely by the reference mark registrant, but its persuasiveness will mainly be determined based on all other evidence in the case record. For example, in the Palm Beach case, the evidence showed that there had never been actual confusion in the more than 45 years that the two parties’ trademarks had co-existed, so the examining attorney, based on the differing natures of the two parties’ goods, found that the two parties’ trademarks would also be unlikely to cause confusion in future. Considering multiple factors, the examining attorney accepted the consent document signed solely by the reference mark registrant.
Content requirements. In China, the provision of such key information as the trademark, the classes and goods/services that the registration consented to, the registration in China of the consented trademark, etc., is required. If the number of the trademark, the registration of which is consented to and provided, is inconsistent with the trademark number that is applied for, the letter of consent or co-existence agreement will not be accepted.
For example, in the administrative lawsuit of review of refusal for the trademark “惠佳乐Huijiale and Device”, the Beijing Higher Court did not accept the co-existence letter of consent in the appeal procedure because the number of the trademark applied for and the number of the trademark the registration of which was consented to, stated in the co-existence letter of consent, were inconsistent.
In the US, the reason that the relevant party believes there is no possibility of confusion and the measures that the parties have taken to avoid causing confusion among the public must be set out in detail. In the Bay State Brewing case, the trademark consent agreement submitted by the applicant was found to be unable to preclude the possibility of confusion because the agreement did “not comprise the type of agreement that is properly designed to avoid confusion”, nor did it “fully contemplate all reasonable circumstances in which the marks may be used by consumers calling for the goods”.
The US co-existence agreement recordal system. There is no trademark co-existence agreement recordal system in China. However, in the US, pursuant to section 503.02 of the Trademark Manual, when a trademark applicant submits to the US Patent and Trademark Office a co-existence agreement to overcome an obstacle to registration, such a document becomes a part of the application record and is available for search by the public (in trademark status and document retrieval) on the US Patent and Trademark Office’s official website at any time. Of course, parts of an agreement that contain trade secrets may be omitted from the scope of disclosure.
Claire Zhao is the deputy head of the trademark department and a trademark agent/attorney at Sanyou Intellectual Property Agency
Sanyou Intellectual Property Agency
16/F, Block A, Corporate Square
No.35 Jinrong Street, Beijing 100033, China
Tel: +86 10 8809 1921 / 8809 1922
Fax: +86 10 8809 1920