Relative ground of rejection, namely, there exist prior similar trademarks over similar goods or services, is one of the common reasons of rejections of trademark registration applications. Based on different situations of the cited trademarks, there are following ways to overcome them:
The first thing to do is to compare the similarity between the cited marks and the applied marks; the ways to overcome the obstacle of the cited marks vary with the degree of similarity:
1) When the similarity degree is not very high: usually, the
cited marks are indeed similar to the applied mark. When we say the
similarity degree is not very high, the situation may be that some
parts of both marks are similar, but there are other distinctive
parts that can help to distinguish the two marks. Because the CNIPA
examines the device, English and Chinese parts separately. In this
case, it is generally possible to overcome the obstacle by arguing
the dissimilarity of the marks, and there are many precedents in
this aspect, for example, 
, 
. If the applicants can additionally take the
measures mentioned in the following, to remove the cited marks, it
will undoubtedly increase the chances of winning the rejection
review.
2) The degree of similarity is very high: this situation is more common. If the success rate is low by only arguing trademark dissimilarity, we need to consider whether the obstacles posed by the prior marks can be removed or not. The following measures will be options depending on the specific situation of the cited marks:
A. Coexistence agreement: prior trademarks' owners issue coexistence agreements allowing both trademarks to coexist. It is more feasible among entities outside of China while it is not widely accepted by Chinese owners according to our experience. However, since 2021, the CNIPA tends not to accept coexistence agreements, on the grounds that the co-existence agreement between the owners is not a reason that consumers in the market will not be confused or misled, therefore at this stage, seeking coexistence agreement is not a recommended measure to take.
B. Non-use cancellation: non-use cancellation is a relatively effective way for removing obstacles of cited marks. China Trademark Law gives anyone the right to file a cancellation against a trademark that has not been used for three consecutive years. The applicant just need to simply file the application and then the burden to provide evidence of use go to the trademark registrants. Furthermore, the good news is that the previous vexing issue of the examination period of review on refusal is shorter than that of the non-use cancellation has been effectively resolved through the new policy of "suspension examination of review cases" issued by the CNIPA in 2023. This undoubtedly improves substantive fairness and saves unnecessary costs and time for applicants.
C. Invalidation: filing an invalidation against a cited trademark which has been approved for registration is also a measure, but it often occurs in cases where the cited mark is maliciously registered against the applied trademark. The cost of invalidation is relatively high, the requirement of evidence is high, and the success rate mainly depends on the sufficiency of the evidence. The examination period of an invalidation is also long, but given the implementation of the "suspension of examination of review cases" policy, the examination period is not an issue any longer. Therefore, if it is assessed that there is a high chance of invalidating the cited trademark, then this method can be tried.
D. Trademark assignment: the cost of purchasing a trademark is generally high, and the entire process of negotiation and recording of assignment application take much time. If the cited mark is not used and the price is acceptable, ad thanks to the "suspension of examination of review cases" policy, the applicant can try it.
In addition to the above situations, discrepancies in the names and addresses of the applicant may also lead to rejection. Simply unifying the names and addresses can resolve this problem.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
