Letter of consent is a written document signed by the owner of an earlier trademark consenting to the registration and the use of an identical or similar trademark, later filed by others on the same or similar goods or services. The letter of consent is acceptable to many IP Offices, for example, the USPTO and UKIPO.
There are no express provisions in Chinese Trademark Law for Consent Agreement. However, in practice, the Trademark Review and Adjudication Aboard (hereinafter referred to as TRAB) have been keeping a pragmatic approach to the letter of consent and principally admit the validity of the letter when examining the review case for rejected mark applications. The TRAB had in many cases taken the letter of consent signed by the owner of the cited mark into consideration and concluded that the co-existence of the applicant’s mark and the cited mark shall not lead to any confusion to the public, thereby preliminarily approved the registration of the applicant’s mark. However, the letter of consent is not always acceptable and it shall satisfy certain requirements. Furthermore, whether the letter of consent could be used for all the review cases, whether it could resolve the conflict forever, need to be analyzed depending on the facts.
1. Main contents of the letter of consent
The letter of consent shall clearly indicate the name and address of the earlier owner and later applicant, the number of the earlier and later marks; the scope of goods or services on which the consent is given; the expression of consent to the registration as well as the use of the later mark (not just the registration), and the signature or seal of the earlier owner.
2. Notarization, legalization, translation of letter of consent
If the earlier owner is a foreign company, the signed/ sealed letter of consent shall be notarized by local notary office and legalized by the Chinese embassy or consulate. Then the original documents, together with all the Chinese translations could be filed. If the owner of the cited mark is a Chinese company, it should be notarized.
3. Time limit for submitting the letter of consent
According to the rules for review and adjudication, the supplementary evidences should be filed within 3 months after filing the review application, with the exception that the evidence is based on the new facts that occur after the expiration of the time limit or there is any other justifiable reason.
In practice, the TRAB will give a period of time to the later applicant to negotiate with the earlier owner and to prepare the letter of consent. Normally a letter of consent could be accepted as long as it is filed before the substantial examination of the case. The applicant therefore has additional several months to process the letter of consent.
4. Conditions to the application of the Letter of consent
If the applied mark and the cited mark are identical or very similar, the review examiner may possibly not approve its registration even if a Letter of Consent is submitted. Only when the two marks are not so similar and their co-existence will not absolutely cause confusion to the public, can the letter of consent be accepted by the examiner.
5. Possibility to obtain the letter of consent
In practice, the owner of cited mark does not always consent to sign the letter of consent. But if differences exist on the goods or services, sales regions, consumers of the two parties, which means they have no or not direct competitions, the earlier owner might provide their consent. Or, the parties have respective prior rights of trademarks in different countries or on different goods/ services, for a win-win purpose, they could provide the letter of consent to each other.
In addition, the letter of consent may also bring some risks. For example, it may expose the mark to the earlier owners and alarm their actions of protection, or it may cost a large amount of money. And, the co-existence of the marks may also weaken the distinctiveness of the mark and the influence of the brand, which deserve to be carefully weighed.