Following an internal meeting on October 16 2007, the Trade Mark Review and Adjudication Board (TRAB) concluded that they would consider the following when dealing with a letter of consent:

• Similarity of marks and goods – a letter of consent cannot overcome a citation if the respective marks and goods are identical or very similar. The situation is different if the trade marks and goods are only moderately similar (even though such similarity would result in rejection of the application under normal circumstances).
• Reputation – reputation of the applied for mark is in favour of accepting a letter of consent, whereas reputation of the cited mark is against.

For sometime TRAB has been accepting letters of consent on a case by case basis even though Chinese trade mark law makes no provisions for this. It is most welcoming that TRAB have stated their position.

In arriving at this conclusion, TRAB has taken into consideration the function of a trade mark in protecting private and public interest. With mutual consent of the parties, private interest is no longer an issue and thus the remaining duty of TRAB is to protect public interest. As long as coexistence of the marks would not cause confusion amongst the public, a letter of consent can overcome a citation.

Howard Tsang

Wilkinson & Grist
6/F, Prince's Building, 10 Chater Rd
Central, Hong Kong
Tel: +852 2524 6011
Fax: +852 2520 2090
iprop@wilgrist.com
www.wilgrist.com