Reference is made to the subject application, which was refused to be registered due to the prior mark “smartist” in Class 16 in the name of Double A Holdings Limited.
As an attempt to over the refusal, the arguments (review) explaining that two companies are in the same group were filed while the assignment documents for Chinese Trademark Application No. 12807409 from Double A (1991) Public Company Limited into Double A Holdings Limited were prepared, but not submitted due to the reasons given in our email dated September 4, 2014.
We are sorry to inform you that the China Trademark Review and Adjudication Board (TRAB) issued an unfavorable decision to our submitted arguments, upholding the China Trademark Office’s refusal. Attached please find a copy of the TRAB’s review decision for your record.
The TRAB’s decision was made based on the following grounds:
1. When the case was examined, the applicant did not submit the complete set of assignment application documents.
[You may refer to our below advice as to the probable rejection of the assignment documents and the recommended submission of an additional document.]
2. The designated goods “Copying paper, Note books, and etc.” of the applied mark is the same/similar to those of the cited mark. Moreover, the dominant letters “smartist” between Trademark Application No. 12807409 and the cited mark Reg. No.11684212 are identical. The co-existence of the two marks on the same/similar goods will cause confusion to and mislead the consumers as to the origin of goods. Thus, the applied mark and the cited mark constitute similar marks on the same/similar goods.
The TRAB decides that the applied trademark should be rejected for registration on the rejected goods “Writing or drawing books; Stationery; Notebooks; Cardboard; Booklets; Paper; Carbon paper; Office requisites, except furniture” in China.
If you are not satisfied with this decision, you have the right to file an appeal with the Beijing Intellectual Property Court within 30 days from the date of receipt of the decision, i.e. before June 15, 2015. If no appeal is filed within the specified period, the TRAB’s decision will take effect.
Comments and suggestions
Although in the review, it was argued that the subject mark will be transferred to the owner of the cited mark and requested to the examiner to suspend the consideration of the review until the completion of the assignment. However, since the TRAB is speeding up the examination of the review case, the examiner made the decision without waiting for the assignment documents.
In this case, in our opinions, it would be more cost-effective to allow Trademark Application No. 12807409 to lapse and instead refile a new application for the mark “Smartist and design” but in the name of Double A Holdings Limited. By this way, the new application and the prior Reg. No.11684212 “smartist” would be in the same proprietor name and there should be no problem like in this case.
However, in case you wish to file an appeal to the Court in order to keep the original filing date (June 25, 2013) of Trademark Application No. 12807409 and to maintain the validity of the said application, you will have to file an appeal simultaneously with file all required assignment documents in order to change the ownership of Trademark Application No. 12807409 to Double A Holdings Limited.