TRAB states position on letters of consent

Following its internal meeting on October 16 2007, the Trademark Review and Adjudication Board (TRAB) has stated that it will consider the following elements when dealing with a letter of consent:

• Similarity of the marks and goods - a letter of consent cannot overcome a citation if the respective marks and goods are identical or very similar. The situation is different if the trademarks and goods are only moderately similar (even though such similarity would result in rejection of the application under normal circumstances).
  
  
• Reputation - the TRAB will be more likely to accept a letter of consent when the mark applied for has a high level of reputation, whereas it will be less likely to accept such a letter if the cited mark is highly reputed.

For some time the TRAB has been accepting letters of consent on a case-by-case basis, even though the Trademark Law makes no provision for this. The fact that the TRAB has outlined its position is a welcome development.

In arriving at this conclusion, the TRAB has taken into consideration the function of a trademark in protecting private and public interests. With mutual consent of the parties, private interest is no longer an issue. Therefore, the remaining duty of the TRAB is to protect public interest. As long as the coexistence of the marks is not likely to cause confusion among the public, a letter of consent can overcome a citation.

Howard Tsang, Wilkinson & Grist, Beijing