In current trademark
application practice, many trademark applications are rejected due to
the similarity with the cited trademark. When rejection happens, to
safeguard its interest, trademark applicant usually will take remedy
measure as follows:

• Filing appeal to
  Trademark Review and Adjudication Board (the Board) arguing the
  existence of significant differences between the trademark for
  application and the cited trademark, which will not cause public
  confusion.
• Filing opposition or invalidation application against the cited trademark.

In addition to the
above remedies, some of trademark applicants may consider submitting a
letter of consent issued in the name of the owner of the cited
trademark, which allows the registration of the trademark by the
applicant, or a co-existence agreement concluded by the applicant and
the owner of the cited trademark. However, with regard to the legal
effect of such letter of consent or co-existence agreement, the Board
and the court give different opinion.

In a trademark
application involving trademark STELUX (trademark No. 7522204), the
applicant is STELUX Holdings (Group) Limited (“STELUX Group”), the
designated commodities for this trademark include boxes of precious
metal, watches, jewels, etc in class 14.

After examination, the
Trademark Office granted the trademark on boxes of precious metal while
rejected the registration request on other commodities such as watches,
etc. The given reason is the trademark for application is similar with
the cited trademark.

The cited trademark is
STELLUX (trademark No. G984611). The designated commodities for the
cited trademark include watches, watch glasses, jewels, etc, in class
14. The trademark for application and the cited trademark only differ by
a letter L.

After that, the
trademark applicant filed appeal to the Board claiming that the
trademark for application had been used as its trade name and after long
time using, the trademark for application has enjoyed the market
recognition. Meanwhile, the trademark applicant raised opposition
against the cited trademark. However, the result of the appeal and the
first instance administrative lawsuit were not in favor of the trademark
applicant.

It is worth mentioning
that after the first instance of lawsuit was brought, the trademark
applicant submitted to the court a letter of consent issued by the owner
of the cited trademark, as well as a co-existence agreement concluded
by the applicant and the owner of the cited trademark, which were
notarized and legalized. According to the letter of consent, the owner
of the cited trademark agreed that the applicant can register and use
the trademark filed and the commodities allowed for the trademark
include clocks, watches, wrist watches, the works of a clock or watch,
watch glasses etc.

After this case entered
into the second instance in Beijing High People’s Court, the Court is
of the opinion that the letter of consent and the co-existence agreement
shall be deemed as the disposition of the right by the prior trademark
owner. The disposition does not obviously harm the interest of the
public, which shall be accepted by the Court.

On that basis, Beijing
High People’s Court finally cancelled the decision made by the first
instance court and requested the Board to make a new decision.

At present, the trademark file by the applicant has been preliminary examined and put on publication to the public.

Therefore, we conclude
that the letter of consent issued by the owner of the cited trademark
shall have substantial influence to the grant of the trademark filed by
the applicant.