The facts of the above-mentioned cases are similar: a contested mark, which differs from the mark cited only in a few letters, and parties who have submitted a coexistence agreement according to their real intention. Nevertheless, the Beijing High People`s Court issued rulings that ran counter to the parties` intentions. Concluding a coexistence agreement through negotiation requires a lot of effort, resources and time, including notarization and legalization in cases where the party issuing a consent form is a foreign entity. A company that intends to expand into new regions, industries, lines or brand designs should push for a coexistence agreement, not a consent agreement. This allows the company to address the potential risks it expects to see visible in the future and pave the way for more fluid growth. A consent agreement only allows current use without addressing the inevitable development of trademarks. A party who is clearly a junior trademark user (and not the first party to use a trademark) may have no choice but to request a consent agreement from the older trademark user (the first party who uses a trademark in the trade and usually registers it). However, if bargaining power is more equal between the parties, a coexistence agreement that lists issues of importance to both parties is likely to be in the interest of all. Bargaining power with respect to the use of trademarks may be created by the status of an older user, a famous or well-known trademark, or ownership of additional trademarks that the other party may be interested in restricting.
Secondly, the consent form issued by the owner of the cited trademark is one of the means of exercising his legal rights and must be respected. Compared to the uncertain impairment of the public interest, the registration and use of the trademark applied for has a more direct and realistic impact on Shimano`s advantages. It was apparent from the declaration of consent that Shimano had a negative or tolerant attitude towards possible confusion and misunderstanding among the relevant public caused by the mark applied for. In particular, Google and Shimano are well-known companies in related fields. There is no evidence that Google acted in bad faith on the reputation of Shimano and the cited trademark when filing or using the trademark applied for. Nor is there any evidence that the registration of the mark applied for undermines the national interest or the public interest. In the absence of objective evidence, it is not appropriate to simply use the uncertain “harm to consumer interests” to deny consent. Prior to this case, both the courts and the courts did not accept coexistence agreements for marks with a high degree of similarity that covered closely related goods. Although the TRAB still takes a relatively conservative stance on these marks after this case, court acceptance has increased since 2017, which is good news for plaintiffs who wish to use coexistence agreements in litigation. Since 2007, the Trademark Examination and Decision Board (TRAB) has in principle recognised the validity of coexistence agreements and has taken these agreements into account when examining the similarity of marks in review and decision-making cases.
Courts have adopted more tolerant attitudes towards trademark coexistence agreements than TRAB. In 2016, more than 80 trademarks were admitted to registration by courts of first or second instance based on the adoption of trademark coexistence agreements. In 2017, more than 90 trademarks were approved by the courts on the basis of trademark coexistence agreements. In all these jurisdictions, it is necessary to file the original declaration of consent with the Trademark Office. In addition, the declaration of consent must be printed on the company`s letterhead, signed by an authorized person and certified with the company`s stamp. If the company does not use a stamp or if the declaration of consent is given by a person, it is necessary to notarize the document, otherwise it will not be accepted by the Trademark Office. Taking full account of the differences between the two trademarks, the kinship of the designated goods and the consent form issued by Shimano, the Supreme People`s Court decided that the trademark application must be registered by Google. A trademark consent agreement is usually a simple contract in which one party agrees to authorize the use and/or registration of a trademark that overlaps by another party.
The parties also stipulate that their trademarks are not similar to consumers. Often, this type of agreement is used when a company has received or anticipates a registration rejection from the United States Patent and Trademark Office (USPTO). If the mark applied for is linked to the proprietor of the trade mark cited, it is more likely that a declaration of consent to coexistence will be accepted. Therefore, the association (if any) between the parties should be explicitly stated in the declaration of consent in order to increase the chances of its acceptance. Agreements in foreign languages must be translated into Chinese. If the document is created abroad, it must be notarized and legalized. If there is no translation or a certified or certified certification, the validity of the agreement will not be recognized. If the mark subsequently applied for covers public resources that should not be monopolized, such as chemical molecular structures or the names of the raw materials of the product, the coexistence agreement will not be accepted.
If the products designated by the mark relate to public health, e.B. Goods in Class 5 or Class 10, agreements on the coexistence of trade marks should be strictly examined in order to avoid harming the public interest or third parties. We note that examining attorneys in the United States have the prerogative to pursue a refusal, even if a detailed consent form has been submitted; The reality, however, is that they rarely outweigh such consent. The Federal Circuit Court of Appeals has clarified that the consent agreement should be given great importance and that the USPTO should not replace its judgment on the likelihood of confusion with the judgment of the parties actually interested without a valid reason. Amalgamated Bank of New York v. Amalgamated Trust & Sav. Bank, 6 USPQ2d 1305 (Fed. . . .