Coexistence Agreement and Registration of Similar Marks

With a recent Judgment issued in September, 2018, Beijing High Court confirmed the previous trend that similar trademarks on similar goods can co-exist in the registry and on the market if there is an agreement on the coexistence between the interested private parties and consumers are not likely to be misled by such situation (see the case: (2018) Jing-Xing-Zhong No.1617, by Beijing High Court). The trademark favored by this decision is the famous YOUTUBE white and red play button.

The following two trademarks are the opposed trademarks and one of the cited trademarks respectively in this case. Another non-shown cited trademarks was revoked.

This decision is not the first of its kind. Even though Chinese laws and regulations have never stipulated the rules of coexistence agreement (also known as "consent letter"), it's not the first time for Chinese court to allow similar trademarks registered on identical or similar goods or services.

Chinese courts reverted the historical negative approach toward coexistence agreements from 2012 and specifically from the case (2012) Gao-Xing-Zhong-Zi No. 1043 Administrative Judgment of Beijing High Court which is regarded as a milestone. 

In this case, Beijing High Court held that a consent letter was signed by the owner of the cited prior trademark who is subject most closely related with the benefit of trademark and also clarified that the trademark right is a kind of civil property right, so the trademark proprietor can be free to dispose of their property rights. 

The decision also acknowledged that the coexistence of two trademarks shall not in any case cause confusion among consumers, or endanger public health. Previous to this decision, the judges seldom considered the effect of coexistence agreement on the determination of the possibility of confusion.

In the recent two years, a certain number of judges tend to hold absolutely supportive opinion that as long as a trademark agreement is signed between the trademark applicant and the cited trademark owner, it will no longer be a barrier to the registration of the application of the trademark, especially when the applicant of trademark has affiliated relationship with the proprietor of cited trademark (see the case: (2014) Gao-Xing-Zhong-Zi No.1175 Administrative Judgment, by Beijing High Court).

However, in contrast to the judicial organ, Trademark Office (hereinafter referred as to "TMO") and Trademark Review and Adjudication Board (hereinafter referred as to "TRAB”) seems to have conservative approach towards the coexistence agreement in the determination of trademark registration from most of cases. 

After all, the administrative officials make decision strictly pursuant to Trademark Law which doesn't explicitly specify the legal status of coexistence agreement.

Therefore, coexistence agreements is one feasible way to resolve the conflicts between identical or similar on similar goods/ services in China, but it might take the applicant to obtain a decision from a Court rather than from the TMO/ TRAB.

Peggy Wang

HFG Law&Intellectual Property