When applying to register trademarks in China, it is not uncommon for brands to have their applications denied because of a similar trademark that has a prior right. This prior right may be an existing registration, or a pending application to register that was filed at an earlier date than yours. What to do if your brand finds itself in that situation?
1. Is the Similar Trademark’s Owner a Concern?
How your brand proceeds will depend on the specifics of the case. If the similar trademark is very similar to yours, the inability to register your mark is not the only thing you need to be concerned about. Using the trademark could also get you in trouble with the owner of the prior right, who may consider your use of your mark to be an infringement of their rights. This is what happened to a brand called New Barlun, which was found by a court to have infringed on New Balance’s logo. You don’t want to be in New Barlun’s position, especially if you are a foreign brand and the similar trademark owner’s is Chinese. As such, consider rebranding if your trademark is very similar to one that has a prior right.
On the other hand, if the trademarks are not that similar, the risk of an infringement action by the owner of a prior right is less. In those cases, you may consider using the trademark without a registration. That would leave your brand with limited options in case someone infringes your unregistered trademark. However, that risk may be manageable and/or acceptable given the potential upside of using the mark in China.
Of course, how similar two trademarks are to one another is sometimes a subjective question, and your application’s previous denial by the China Trademark Office (CTMO) indicates that at least one person (that is, the CTMO trademark examiner) thinks the two marks are too similar to coexist in the registry. However, CTMO trademark examiners’ analyses are abstract, and there may be real-world factors that can guide your calculus. For example, it may be the case that your products are sufficiently different to those covered by the similar trademark. It could also be that the similar mark is not in use. This may be an indication that its owner might not be terribly concerned if someone uses a somewhat similar trademark. Along the same lines, not all trademark owners view brand protection in the same way. Using a mark similar to New Balance’s is different than using one similar to that of a small power bank manufacturer. For one, the latter might not even be looking for potential infringements, while New Balance likely has a dedicated team focused on just that. Plus, the importance of branding to New Balance is probably much greater than it is to a power bank maker, whose sales are driven far more by price than by the appearance of their products.
Finally, if the other mark is similar to yours because the owner (perhaps a trademark squatter) wanted it to look like yours, the situation needs to be approached differently. That prior right is a clear and present danger, which may require you to go on the offensive.
2. Alternatives for Protection of Similar Trademarks
Concluding that there is a low likelihood of getting in trouble for using a similar trademark is a good thing. However, your brand may still want some trademark protection for its products. What can you do?
The first thing you should do is look at you existing brand identity to see if there are elements within it that can receive trademark protection, skirting the issue presented by the similar trademark. For example, imagine that you tried to register a mark that incorporates your brand name with a sun logo. CTMO then denied the application citing a similar trademark. Looking at CTMO’s denial, you may find that what makes your trademark similar to the cited one is the sun logo. In that case, CTMO will probably not have any issues if you apply to register your brand name as a “plain” word mark.
It could be the other way around. Perhaps your brand name is similar to another name registered as a trademark, but the sun logo itself is not a problem. In that case, you can consider applying to register the sun logo by itself.
Other approaches to consider are applying to register a Chinese name for your brand, a tagline that you use on your branding, or part of your brand name. You could also considering using old logos, or making China a test bed for a new logo to later be rolled out elsewhere.
Finally, be sure to keep track of what happens to the similar trademark. If it is not used for a period of three years, China’s Trademark Law allows you to apply for the cancellation of the mark. It may also be worthwhile to look at whether the similar trademark owner’s might be willing to dispense with it for a reasonable price.
3. Changing the Branding
If all else fails, you can consider changing your branding, so that it does not create any problems with similar trademarks. This rebranding can be China-specific. For example, if your main brand identifier on products is the brand name, in China you can consider using your Chinese name. Coke does this.
Giving your Chinese name prominence in your branding will also help you shape your brand’s identity in China. If you don’t choose a Chinese name, or if you choose one but don’t make it a part of your identity, consumers will fill that gap. This in turn could complicate brand protection efforts. For instance, a squatter or bad-faith competitor could register the Chinese name most popular with the public before you have a chance to do so.
4. Conclusion
Summing up, don’t fret if your trademark application is denied because of a similar mark. There are options. These will depend on the circumstances at hand, so the first step is to get a clear handle on all relevant facts.
