AFD China Case Study - Unfinished Recordal of Assignment Blocks Registration of Identical or Similar Trademarks of the Same Holder
A Norwegian company of adhesives designated their international registration DYNEA (see Figure 1) to China in 2015. In 2016, they received a notification from WIPO notifying that the Chinese Trademark Office (herein after refer to “the Office”) rejected the request of extending the protection afforded to international registration DYNEA to China on the grounds that international registration DYNEA is similar to 3 trademarks prior registered by another one.
Mark “dynea & device” (see Figure 2) is the most similar one among those 3 trademarks cited by the Office in terms of composition of letters, pronunciation and overall shape. The company found that “dynea & device” is a trademark under process of being assigned to themselves since 2015. Once the assignment procedure is done, the mark would be in the name of the company and would not hinder the extension of protection afforded to the international registration DYNEA to China.
Figure 1 Figure 2
The company requested review before the Trademark Review and Appeal Board (hereinafter refer to “the Board”) with the following reasons:
(1) Mark “dynea & device” has been assigned to the applicant, the corresponding procedure has been undergoing, so the applicant requested the Board to proceed with the review case after the assignment procedure is done;
(2) Mark DYNEA is distinctively different from the other two cited marks in terms of overall composition, design, meaning and pronunciation, thus would not mislead the relevant public and should not be considered as a similar mark;
(3) Mark DYNEA reflects the exact trade name of the applicant, thus the distinctiveness of the mark is increased;
(4) Mark DYNEA is familiar to the public after practical publicity and use, and the public know that the goods are provided by the applicant, so the registration of mark DYNEA will not result in misrecognition and confusion in the relevant public.
The Board found that when the case is examined, the mark “dynea & device” cited by the Office has been assigned to the applicant. Therefore, the cited mark will no longer hinder the preliminary approval of the registration of the mark under review. The mark under review as a whole is distinguishable from the other two cited marks, so it is not similar to those two cited marks. According to Article 28 of the Trademark Law, the Board asked the Office to complete the preliminary approval of the extension of the protection afforded to the international registration DYNEA used on the designated goods to China after the review.
AFD China participated in the review case and assignment recordal as the trademark attorney of the company of adhesives.
The applicant explained to the Board that the mark cited by the Chinese Trademark Office has been assigned to the applicant and requested the Board to proceed with the review after the assignment is recorded with the Office. In the end, similar marks did not hinder the extension of the protection afforded to the international registration to China.
For trademarks assignment, it takes about 1 year to complete the assignment recordal with the Office. In this case, the assignment was not finished when the applicant received the refusal decision. The mark “dynea & pattern” was recorded under the name of the assigner and appeared as a prior right to the registration of DYNEA in China. The applicant illustrated to the Board that the conflict of rights would not exist once the assignment is completed. As to the other two cited marks, since they could co-exist with the mark “dynea & pattern” there should be no problem for them to co-exist with mark “DYNEA” in China. Therefore, the statement that DYNEA is not similar to the other 2 cited marks is easily to be accepted.