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Fighting for Trademark: appeal against Preliminary Rejection!
As anticipated last week, in this article we are providing a brief explanation on what to do in case a trademark application is subject to a preliminary refusal.
In this regard, let's assume that the trademark application has been rejected by the CTMO because a similar (or identical) mark was detected in the same class and therefore for identical/similar goods or services. The reasons for a refusal might also be different, but in this article we focus on the refusal issued due to a prior identical/similar mark for identical/similar goods.
According to the Trademark Law the applicant, if dissatisfied with the preliminary refusal, may file an appeal with the Trademark Review and Adjudication Board (“TRAB”). The deadline to file the appeal - according to the circumstances - might be 15 or 30 days from the receipt of the refusal notification. It is very short, mind the time!
When deciding whether to proceed with an appeal the applicant shall always keep focus on the chances of success, the cost and – in general – alternative solutions.
The first point we wish to touch and clarify is that we have seen -in few occasions- an application firstly refused from the CTMO but, on a later stage, approved by the TRAB.
Indeed, according to our experience the TRAB not only conducts a more detailed and deeper exam on the conflictual trademarks in word components, design, colors, overall appearance and so on, but will be even possible for us to highlight such differences and explain some background of the trademarks (such as when it was created, who is the owner and how did he come up with that specific logo/name, history of the company etc.).
Another important aspect of the appeal procedure is that, differently from the application procedure, allows the appellant to submit materials to the examiners. And in this regard a very important role is played by the evidence of use of the trademark in mainland China.
If the applicant has already used the applied mark in mainland China, the relevant use evidences can be supplied for proving the applied mark has already enjoyed a certain reputation through use and therefore, the confusion between the applied mark and previous marks will not be easily made.
For what concern the timeline of this procedure, the time limit for TRAB to examine and rule on rejection appeal is around 9 months from the filing date (extended by 3 months under special situations).
In case the appeal will be favorable to the applicant the trademark application will be published on the trademark gazette for a period or three months. During these three months, it will be possible for any third party to file an opposition against the applied trademark in case they deem this application would interfere or create confusion among the public.
In case no opposition is filed during this time frame, the trademark will be finally granted.
Next week we will see what happens in case the decision on our appeal will not be favorable to the applicant.
Shall we keep fighting or give up?
HFG Law&Intellectual Property
