Trademark Office of State Administration for Industry and Commerce first refused and ruled that the No. 7593261 "汇" trademark is not approved to register in China. However, our client has successfully got the approval of the protection of this international registration for the trademark through a review examination by the Trademark Review and Adjudication Board and is able to get its trademark exclusive rights in China.

Brief information about the case:

Our Chinese client's company filed a trademark registration for the new design of its previous trademark. The new design contains some miner modifications, such as the little hook at the right bottom "匚" bends up instead of bending down. However, the Chinese Trademark Office rejected the said trademark application on the ground that the mark is similar to prior trademark.

Then we represented our client and filed a review application for the trademark refusal before the Trademark Review and Adjudication Board. In the review, we emphasized that the new trademark is not similar with the cited trademark in their appearances, pronunciations; and meanings. Especially they are in difference language. The captioned trademarks are the transformed from the Chinese character "汇" and its English trade name "ZTE", while the cited trademark "3C" adapts a combination of digit and letter in a different language.

The Trademark Review and Adjudication Board decided that our grounds were tenable and approved the examination of the trademark. Thereby, our Chinese client has cleared the obstacle of trademark registration in China.

Attorney's comments:

It is common for a company to create new brands or modify its trademark to cater its market. However, China follows first-to-file rule for trademark registration applications, so the first to file the application will obtain the trademark exclusive rights. Generally if others pre-emptively apply and obtain the registration of the mark and domain name, it would be very hard for the true right-holder to get back the mark and domain name. However, in this case since during the careful investigation the evidence for bad faith is found and collected and the domain name arbitrations and trademark opposition are filed timely and properly, so our client can get back the domain names and oppose the mark registration successfully. Thus it is crucial to register marks and domain names in China as earlier as possible in order to protect the IP rights here. Of course, it is very important to closely watch the market, monitor any possible infringement, and then take actions when necessary.