A letter of consent is a written document signed by the owner of an earlier trademark consenting to the registration and use of an identical or similar mark, later filed by another party for the same or similar goods or services. Many intellectual property offices, including those of the United States and the United Kingdom, accept such letters.
The Chinese Trademark Law contains no express provision on consent agreements. In practice, however, the Trademark Review and Adjudication Board (TRAB) takes a pragmatic approach and recognises their validity in principle when reviewing refusals. In many cases, after considering a letter signed by the owner of the cited mark, TRAB has concluded that the marks’ coexistence would not confuse the public and has preliminarily approved the later application. A letter is not always acceptable, however, and must satisfy certain conditions. Whether it can be used in a particular review and whether it will resolve a conflict permanently depend on the facts.
1. Main contents
The letter should clearly identify the names and addresses of the earlier owner and later applicant, the numbers of both marks, and the goods or services covered by the consent. It must expressly consent to both registration and use of the later mark, not merely registration, and bear the earlier owner’s signature or seal.
2. Notarisation, legalisation and translation
Where the earlier owner is a foreign company, the signed or sealed letter should be notarised locally and legalised by the Chinese embassy or consulate. The originals and complete Chinese translations should then be submitted. Where the cited mark’s owner is a Chinese company, the letter should be notarised.
3. Time for submission
Under the trademark review rules, supplementary evidence must be submitted within three months after the review application, except where it concerns new facts arising after that period or another justified reason exists.
In practice, TRAB allows time for the later applicant to negotiate with the earlier owner and prepare the letter. It will normally consider a letter submitted before substantive examination. In the practice described in this article, this can give an applicant an additional five to six months to arrange the letter; this is an observation about case handling, rather than a separate statutory extension.
4. Conditions for acceptance
If the applied-for mark and cited mark are identical or very similar, the examiner may still refuse registration despite a letter of consent. The examiner may accept the letter where the marks differ sufficiently and their coexistence would not confuse the public.
5. Obtaining consent and weighing the risks
The owner of a cited mark will not always agree to sign. However, differences in the parties’ goods or services, sales territories or customers may mean there is little or no competition, making consent more likely. Parties holding earlier rights in different countries or for different goods or services may also exchange consent letters for their mutual benefit.
There are risks. Seeking consent may bring the later mark to the earlier owner’s attention and prompt enforcement action, or obtaining consent may be expensive. Coexistence may also weaken a mark’s distinctiveness and a brand’s influence. These factors should be weighed carefully.
