To explore China's Court's attitude to trademark coexistence agreement in cases where trademarks are substantially similar, exclusive of identical trademarks, the authors review the Courts' latest binding judgements and summarize the Courts' perspectives in these cases. We hope this article will be helpful for applicants seeking trademark protection in China. The Courts' judgements reflect the following perspectives.
1. Even the marks are substantially similar, the Court accepts coexistence agreement on the precondition that there is no prejudice to public interests. This is full respect for the private-law characteristics of trademarks.
On April 14, 2020, Beijing High People's Court made a final judgment in the administrative litigation for the review of the refusal of "", in which the Letter of Consent issued by the owner of the cited marks "Emerald" and "EMERALD PERFORMANCE MATERIALS" was accepted.1
The judgement of second instance upheld that "China Trademark Law does not only protect legal rights of trademark owners, but also considers the legitimate rights and interests of consumers. However, the Trademark Law mainly focuses on the legal relationship of trademarks. Under current legal framework in China, the protection of consumer rights has been regulated and adjusted by specialized laws. In the application of trademark law, the legal relationship of trademarks should also be the main object. As a civil property right, trademark right is essentially a private right. According to the principle of will autonomy, unless there are major public interests involved, trademark owners can dispose of their trademark rights according to their own will. Trademark authorized administrative agencies or people's Courts should respect this and should not interfere unreasonably. When determining whether the trademarks are similar, the opinions of the previous trademark owners shall be fully considered and respected. In addition to registration of identical trademarks on same goods or services, to prevent the parties from circumventing the trademark ownership system through coexistence agreement under the trademark law, where the trademark coexistence agreement is not considered, for similar trademarks on same or similar goods, coexistence agreement shall be used as an important basis for judging whether the trademarks are similar or not".
In this case, the Court clarified that the Trademark Law mainly focuses on the adjustment of the legal relationship of trademarks, and that the protection of consumer rights has been regulated and adjusted by other specialized laws. Therefore, when determining whether the trademarks are similar, the opinions of the previous trademark owners should be fully considered, and coexistence agreement should be accepted if no major public interests is involved. This is also the mainstream idea for acceptance of coexistence agreement in China.
1. (2019) JING XING ZHONG No. 3317
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