Newsletter
Letter of Consent Not Definitely Accepted for Trademark Coexistent Registration
Trademark coexistence agreement refers to the permission for different entities or individuals to use the same or similar trademarks on the same or similar goods or services. However, this does not mean that trademark coexistence agreement is a panacea that can solve all trademark conflict issues. Whether a trademark coexistent registration agreement is accepted by the trademark authorities or courts at all levels when handling trademark conflict cases is an important issue frequently faced in the practice of trademark registration applications.
The three most commonly cited provisions in Article 30, Paragraph 1 of the Trademark Act of Taiwan that prohibit the registration of trademarks are as follows:
1. Prior registration or application: A trademark that is identical or similar to another person’s registered trademark or earlier filed trademark for the same or similar goods or services, and is likely to cause confusion among relevant consumers.
2. Famous trademark: A trademark that is identical or similar to another well-known trademark or logo, and is likely to cause confusion among the public or diminish the distinctiveness or reputation of the well-known trademark or logo.
3. Prior use: A trademark that is identical or similar to another trademark that has been used earlier for the same or similar goods or services, and the applicant is aware of the existence of the other trademark due to contractual, geographical, business, or other relationships, and intends to imitate it and apply for registration.
If the applicant for trademark registration wants to overcome the obstacles set forth in Article 30, Paragraph 1, Subparagraphs 10, 11, or 12 of the Trademark Act, one of the relatively simple ways is to submit a letter of consent or an agreement for trademark coexistent registration based on the provisions of the said subparagraphs, which is proposed by the applicant or the trademark owner of the cited the trademark in order to overcome the obstacles.
However, a letter of consent or an agreement for trademark coexistent registration is not a panacea and will be accepted based on the certain limitations and conditions, such as below:
1. According to Article 30, Paragraph 1, Subparagraph 10 of the Trademark Act, the prerequisite for coexistent registration of a trademark is that it must be "not obviously improper". As for what constitutes "obviously improper", according to Article 30 of the Enforcement Rules of the Trademark Act, it refers to the following three situations:
a. the trademark is identical with another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical with those for which the registered trademark is protected or the earlier filed trademark is designate;
b. the court grants an injunction prohibiting disposal of the registered trademark;
c. the Registrar Office holds that the consent is obviously improper.
2. The possible solutions the trademark examiner suggests in the notice of preliminary objection to avoid registration conflicts is only for the applicant's reference in accordance with applicable laws. Therefore, it does not mean the submission of a letter of consent or agreement for trademark coexistence issued by the cited trademark owner will be definitely acceptable. The trademark examiner still has to further examine whether there are any circumstances that will be deemed "clearly improper".
3. If the applicant or related party of a trademark application is a domestic company, and the representatives of both parties are the same person, in order to avoid violating the provisions of the Company Act, in addition to affixing the company's official seal on the consent letter, it should also be signed by a shareholder (for limited companies) or a supervisor (for joint stock limited companies) who does not engage in business operations. Furthermore, a copy of the front and back of the Ministry of Economic Affairs' company registration card or a copy of the shareholder roster with the shareholder's seal affixed should be attached.
4. According to the current requirements and standard examples announced by the Intellectual Property Office, the consent letter or agreement must include the following similar terms: The party issuing the consent for coexistence of trademarks acknowledges that, after issuing a consent for co-registration, any future trademark applications that are identical or similar to the co-registered trademark and designated for use on the same or similar goods or services, must obtain the consent of the trademark owner of the co-registered trademark before the trademark application can be approved for registration.