AFD China Case Study - Unfinished Recordal of Address Change Blocks Registration of Identical or Similar Trademarks of the Same Holder
A Dutch company of starch products is the applicant of Chinese trademarks “Avebe”. In June, 2016, the company requested to record the change of address of the applicant for its Chinese trademarks “Avebe” with the Chinese Trademark Office (hereinafter refer to “the Office”) according to the law. The company is also the owner of the international registration “Avebe” which is recorded with the company’s new address. Later in September 2016, the company received a notification from WIPO notifying that the Office had refused the extension of protection afforded to the international registration “Avebe” to China.
The reason for the Office to refuse such territory extension is that the international registration “Avebe” is similar to three prior registered Chinese trademarks on similar category of products.
To be specific, the Office holds that entities with the same name but different address shall be deemed as two different entities. Therefore, although the name of the applicant of those three prior registered Chinese trademarks is the same as that of the international registration, they are deemed as owned by an entity differed from the owner of the international registration due to that address of their registrant is different from that of the registrant of the international registration. The applicant filed review request before the Trademark Review and Appeal Board (hereinafter refer to “the Board”) to request approval on the extension of the international registration “Avebe” to China on the grounds that the applicant of the marks cited by the Office is the same as that of the international registration “Avebe” and there is no conflict of rights. The applicant has filed the requests for recording the changed address for those 3 marks and requested the Board to examine the review request on the extension of international registration “Avebe” to China after the address change requests are approved.
The review decision made by the Board is that the applicant of those 3 marks cited by the Office is the same as that of the international registration and there is no conflict of rights. According to Article 28 of the Trademark Law of China, the extension of the international registration to China is approved.
AFD China, as the trademark attorney for the company, participated in both the review and the address change matters.
The applicant explained to the Board that they have filed the request for changing the applicant’s address for the cited marks with the Office so as to maintain an identical address of the applicant for all its trademarks. Therefore, the mark under review and the cited marks are owned by the same entity and there is no conflict of rights.
The key point in this case is that the address of the applicant as shown in the prior Chinese trademarks is the old address, whereas the address of the applicant shown in the international registration is the new address. In the view of the Office, registrants or applicants whose name and address are not exactly the same are different entities. Therefore the Office refused the extension of the international registration to China according to provisions in Article 30 of the Trademark Law of China that where a trademark registration request is not in compliance with the relevant provisions of this Law, or the trademark to be registered is identical with or similar to a registered or preliminarily approved trademark on the same goods or goods of similar category of another person=, the Office shall refuse such registration request and such registration request shall not be published
In the review on refusal case, AFD China expound to the Board that the applicant of those cited marks is indeed the applicant of the international registration “Avebe”. The request for recording the change of the address t was submitted before the Board as a proof to add weight to the statement that there is no conflict on rights. As a result, the Board asked the Office to approve the extension of international registration “Avebe” to China after the address change request was approved. According to Article 17 of the Regulations for the Implementation of the Trademark Law, where a registrant change its address, it shall record such change with the Trademark Office. Due to certain time is needed to complete the recordal of a changed address, there is still the possible that a similar or identical mark registration request is rejected. To avoid such situation, the registrant shall record the change of address with the Office in time.