Trademark Office of State Administration for Industry and Commerce first refused and ruled that the No. 6235032 "ICC logo + Chinese characters" 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 French client's company filed an international registration for the trademark with the International Registration No. G956666. However, before our client extended the registration in China, a Chinese has filed an application for registering a trademark with the same element of CC 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 the captioned trademarks are not similar with the cited trademarks in their appearances, pronunciations; and meanings respectively. Especially they were composed by different Chinese characters, which represent its own product/service and could strengthen the distinctiveness of the marks. Further, we added that our client trademark is consistent with the organization name of the applicant. It has been used for a long time and it will not lead to the confusion of public.

The Trademark Review and Adjudication Board decided that our grounds were tenable and approved the examination of the trademark. Thereby, our French 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 China already. In such cases, Chinese characters incorporated in the trademark will increase the possibility of a successful registration. In addition, according to our experience, 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.

To conclude, it is recommended to use a mark with distinctive logos and characters, which help stress the distinctiveness. In addition, evidence stressed the trademark has got a great influence in the daily external trade and the client抯 genuine use of the mark would be consider a strong proof of the distinctiveness for such a case.