The China Trademark Office of State Administration for Industry and Commerce first refused, with respect to our Dutch client, the trademark registration application No. 6208529 " 拓纳 & Device". However, our client has successfully got the registration approved through a review examination by the China Trademark Appeal Board.

Brief information about the case:

Our Dutch client is a company using the trademark "TANATEX" represented with an atom on its logo. When it entered into the Chinese market, it decided to use the Chinese characters " 拓纳 " (tana), and the atom logo for its mark. In the refusal notice, the Trademark Office had cited a mark; " 金森 " (jinsen) that uses a similar atom logo. And, the Office believed that the registration of our client's mark, similar to that cited mark would cause confusion among the public.

Then we represented our client and filed a review application for the trademark refusal within the Trademark Appeal Board of China. In the review, we specified the two marks were not similar in their appearances, pronunciations; and meanings. Also, the designated goods were different in functions, uses, sales channels, etc. In addition, we also mentioned the mark uses the trade name of the clients, which will help for distinguish the client's trademark among the others. Further, we added that our client has won a high reputation worldwide through a long time use. Thus, no confusion could be created among the consumers

Later, the Trademark Appeal Board of China decided that our grounds were tenable and approved the registration of the trademark. Thereby, our Dutch client has cleared the obstacle for its trademark registration in China.

Attorney's comments:

In that case, two trademarks have been applied with a similar logo. China follows the Nice Classification for goods and services which means that the registrant's exclusive rights are generally limited to the goods or services designated in the trademark application and approved for the registration by the Trademark Office.

In this case, besides the atom which is just a part of the trademark, the two marks have also different portions respectively, especially the Chinese characters. According to our experience, Chinese characters are very important for Chinese consumers because when they recognize the trademark, they first read and remember the Chinese characters. Therefore, if a company wants to file a trademark application in China, but found a similar mark using a similar image, it will have to choose relevant Chinese characters to increase the possibility of a successful registration.