Trademark Office of State Administration for Industry and Commerce first refused and ruled that the trademark OTEL FITNESS CLUB with registration No.7055152 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 US client's company tried to file a registration for its international trademark OTEL FITNESS CLUB in China. However, during the examination, the Office found two prior applications with the same element of ITNESS on the similar goods, and the Office 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 request for the trademark refusal before the Trademark Review and Adjudication Board. In the review, we emphasized that in addition to the differences in appearances, pronunciations and meanings between our client mark and the cited trademarks, the designated services covered by the captioned mark are also not similar with that of the cited marks with respect to the purpose, mode and targeted customers, and the differentiations. Moreover, the captioned trademark is consistent with the trade name of the applicant, which conforms to the commercial customs and indicates the tight relationship between the applicant and the services the applicant provided. Thus, the obvious differences will not create confusion within the public and the captioned trademark is related to the trade name of the applicant. It has been used for a long time worldwide and made all-round promotion. The distinctiveness and public recognition has been strengthened.

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

Attorney's comments:

In this case, when extending the international trademark registration in China, the applicant may have a chance to get a refusal due to that there might has been a similar prior trademark applied to registered or registered. In such cases, it is a good strategy for the applicants to lay stress on the trademark design as a whole, rather than just the similar/same element, like ITNESS in this case. The purpose, mode and targeted customers of the service or product, the appearance, pronunciation and meanings of the mark all can be considered a key factor in stressing distinctiveness.

As an aside, in general, different Chinese characters embedded in the trademark will increase the possibility of a successful registration. Becasue Chinese characters are more recognizable and easily remembered by most Chinese consumers. Therefore, we always recommend that the applicant not only file the registration application for its trade name in English but also file the application for the Chinese Characters of the trade name.

In this review, we also recommended the client to collect the use evidence referring Chinese market or Chinese customers as much as possible to the distinctiveness of the mark by widely using in its designated services.