Beijing Higher People's Court Clarifies Usage of Consent Letters to Overcome Trademark Rejections in the PRC

by Sheppard Mullin Richter & Hampton LLP

While the PRC Trademark Law and Implementing Regulations provide no real guidance on how or whether consent letters can be used to overcome trademark application rejections on relative grounds, in recent years, the TRAB has accepted such letters to support arguments that a rejected trademark should be registered on appeal. There has, however, been very little guidance as to the standards that should be applied by the TRAB, and by the Beijing courts when considering the relevance of consent letters, and because of this, TRAB decisions involving consent letters or co-existence agreements have been inconsistent. This Higher People’s Court decision provides important clarifications as to trademark appeals practice in China as it relates to consent letters and co-existence agreements, and as to how such appeals cases are likely to be handled by the TRAB and the Beijing courts going forward.

Case Background

On November 14, 2007, Deckers Outdoor Corporation (“Deckers”) filed an application for the “” trademark (App. No. 6379162) in Class 35 covering “agent for import and export; product quotation; tender offer; commercial information, etc.” The PRC Trademark Office (“TMO”) rejected the application on the basis of a citation of a prior “” mark (IR No. G951748) held by Unicredit S.P.A. (“Unicredit”) in Class 35 covering “agent for import and export; advertisement; commercial organization management and consultation; marketing research and investigation, etc.” Deckers appealed the CTMO’s rejection to the TRAB. To support its appeal before the TRAB, Deckers submitted a consent letter by Unicredit with a Chinese translation.

On July 4, 2011, the TRAB rejected Deckers’ appeal and upheld the CTMO’s determination that the trademark application was similar to the prior filed trademark for similar services in violation of Article 28 of the PRC Trademark Law. Deckers then appealed the TRAB’s decision to the Beijing No. 1 Intermediate People’s Court (“Intermediate Court”). During the trial proceedings, Deckers submitted a notarized and legalized copy of the same consent letter to the Intermediate Court.

On April 10, 2012, the Intermediate Court upheld the TRAB’s decision. In its ruling, the Intermediate court held that, i) both the trademark application and the cited mark were verbal marks that have a similar appearance and pronunciation, and would thus easily cause confusion among consumers if used on identical and/or similar services; and ii) the consent to co-existence of the two marks by the holder of the cited mark could not exclude the likelihood of confusion among consumers.

Deckers further appealed the Intermediate Court’s decision to the Beijing Higher People’s Court (“Higher Court”). On February 19, 2013, the Higher Court overturned the Intermediate Court’s decision and ruled that the TRAB should re-review the case and issue a new decision properly taking into account Unicredit’s consent to co-existence under the circumstances.

The Higher Court's Considerations

The Higher Court summarized the main issues of the case as follows:

Proceedings Issue

According to the Trademark Review and Adjudication Rules (“Rules”) issued and revised by the State Administration for Industry and Commerce (“SAIC”), a consent letter and its Chinese translation submitted to the TRAB in support of arguments in a trademark rejection appeal should be considered as evidence in the case even if it was not notarized and legalized, and the TRAB should examine and comment on such evidence in its review decision. The fact that the TRAB did not provide any comments on the consent letter in its review decision constitutes a procedural error and an obvious violation of the Rules.

Substantial Issue – the relationship between the consent letter and Article 28

  • When determining that two trademarks constitute identical/similar trademarks on identical/similar goods/services under Article 28, the likelihood of consumer confusion should be considered;
  • A consent letter is issued by a prior trademark holder who’s rights and interests are impacted by the application in question, and because of this, the prior trademark holder’s judgment is more practical and in-tune with market realities than the inference of an administrative authority or court in relation to the likelihood of confusion. A consent letter should thus be considered strong evidence to exclude a likelihood of confusion if there is no other evidence demonstrating otherwise.
  • Trademark rights are civil property rights that are subject to the right owner’s disposal as long as the disposal of such does not harm significant public interests.
  • Unicredit agrees with the registration and use of the trademark application in question for all the designated services by Deckers. Because of this, the influence of the consent letter on the likelihood of confusion should be considered when applying Article 28 of the Trademark Law.
  • Although the two marks are very similar, the verbal differences are sufficient for consumers to differentiate them as a whole. In addition, the difference between the services of the two marks as well as the high level of fame of the "" trademark for Class 25 goods should also be considered.
  • The consent letter per se demonstrates Unicredit’s judgment that the likelihood of confusion in relation to the coexistence of the two marks is modest or can be tolerated. The prior right holder’s disposal of its trademark rights should be respected absent adverse evidence that the consumers’ interests will be harmed.

Based on the above, the Higher Court ruled that the coexistence of the two marks for identical or similar services is not likely to raise confusion among consumers, and the two marks do not constitute similar trademarks under Article 28, and the trademark application in question should be approved for registration.


The PRC Trademark Law and relevant Rules and Regulations do not provide any guidance on the value of consent letters or coexistence letters in supporting arguments presented in the context of trademark rejection appeals. In recent years, the TRAB has accepted consent letters or coexistence letters when the trademarks are not identical, and there are other factors present that would otherwise mitigate the odds of confusion. TRAB decisions in such cases have thus been highly discretionary and inconsistent.

In the last few years, the Beijing courts have reviewed a number of similar cases involving consent letters or co-existence agreements. For example, in the case of Shandong Liang Zi Zi Ran Jian Shen Yan Jiu Yuan You Xian Gong Si (“Shandong Liang Zi”) v. TRAB (2009), the Higher Court overturned the Intermediate Court’s decision supporting a TRAB ruling in an appeal involving a coexistence letter, allowing co-existence of the subject "" trademark (Reg. No. 1551944) and cited "" trademark (Reg. No. 1235891) in respect of similar services in Class 42.

Two years ago, in the case of Hoffimann GmbH Qualitatswerkzeuge (“Hoffimann”) v. TRAB, the Higher Court sustained the Intermediate Court’s judgment upholding a TRAB decision to reject the "" trademark application (App. No. G809516) in Classes 7 and 9 respectively on the basis of a  citation of the prior ""trademark (Reg. No. G668534) for similar goods. In this case, the Higher Court did not support the co-existence letter between Hoffimann and the holder of the cited mark. The Higher Court ruled that the two marks are very similar (only the last letter is different) and the goods are similar, and it concluded that the co-existence agreement would not exclude the likelihood of confusion by relevant consumers. It thus upheld the rejection of the mark on the basis of Article 28 of the PRC Trademark Law.

In the current case, the Higher Court appears to be setting a clear standard for review of a TRAB decision involving a consent letter or co-existence agreement. First, the Higher Court confirmed that a consent letter should be considered when determining the similarity of the marks under Article 28 of the PRC Trademark Law. Second, the consent letter should per se be deemed strong evidence that the likelihood of confusion is modest or should be tolerated in relation to the coexistence of the two marks. Finally, a consent letter should be respected as long as there is no evidence showing that public interests will be harmed.

Although the PRC is not a common law jurisdiction, and does not follow the doctrine of stare decisis, decisions such as this by the Higher Court in Beijing are generally indicative of how cases are and will be handled going forward. This case is thus noteworthy, and should provide helpful guidance for the handling of similar cases in the future.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Sheppard Mullin Richter & Hampton LLP | Attorney Advertising

Written by:

Sheppard Mullin Richter & Hampton LLP

Sheppard Mullin Richter & Hampton LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.