Trademark Office of State Administration for Industry and Commerce first refused and ruled that the Trademark EPO with International Registration No. G962222 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 German client's company filed an international registration for the trademark in Germany, 2008. However, during the registration process of this trademark in China, the Office found it similar to registered mark No.1546858 and No. 4831793, and thus believed that the registration of our client's mark, similar to this prior trademark would make confusion to the public.

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 pointed out that the our client has filed the name and address change application for the cited trademark No.1546858 due to both of the trademarks DEPO have the same owner DEPO GMBH & CO.KG. Once the change application is approved, the conflict of the trademark right will no longer exist. Moreover, the designated goods of the captioned trademark DEFO are machine and machine tools, while the designated goods of the No.4831793 cited mark are air filters. Since the use of these two similar trademarks is for in non-similar goods, it will not cause any likelihood of confusion in consumers. Therefore, our client trademark does not constitute a similar mark with respect to the prior trademarks on intClass 7.

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

Attorney's comments:

When extending the international trademark registration in China, the applicant may encounter various reasons that result in the rejection to its trademark application in China. In this case, although the refusal was due to that the existence of some similar prior trademarks applied to register or registered, the decision is made by the combination of different grounds according to different cited marks. In such cases, the applicant could file one review request but listed arguments separately in response to all the refusal reasons.

The designated product / service is one of the key elements to consider when apply a trademark application. In general, only where a trademark is similar, on both its appearance and its designated goods, to a previous one, it will be considered lack of distinctiveness and to cause public confusion. Therefore, evidences proving the recognition of a trademark through widely use and exposure will be very helpful.

In addition, applicants should also pay attention to its own negligence in an application, for example in this case the change to the address of the applicant itself, to avoid extra costs of time and money.