[author: Vera Wei]

In this era of fast development and change, the product structure is constantly innovating. Thus market players inevitably need to upgrade their trademarks from time to time. This will lead to a “continuation trademark application”, which means the trademark owner re-applies for a trademark that is identical with or similar to an already registered trademark on the same or similar goods and services of his own.

In this case, will such subsequent application be approved for registration for sure? According to the general cognition, it should not be difficult for the “continuation application” to obtain registration. However, in practice, the “continuation application” will be examined as a fresh trademark application. It is inevitable that during the period after the registration of the owner’s basic trademark and before application date of the re-applied trademark, some “queue-jumping” trademarks may appear due to objective facts such as changes in examination standards, changes in the meaning of words contained in the mark, and different understanding on trademark similarity from different examiners, which may block the registration of the later “continuation application”. Undoubtedly, it is hard for applicants who owned the basic registered trademark to accept such a result. In this article, with two case studies, the author discusses the “pain” and “tears” of “continuation trademark application” and offers some possible solutions.

Case study 1

The China National Intellectual Property Administration (hereinafter referred to as “the CNIPA”) rejected the trademark application No. 37529494 “Mi Pay ” filed by Xiaomi Technology Co., Ltd. by citing the prior trademark No. 6731303 “MPAY” and the prior trademark No. 13481604 “MOPAY” of others. Xiaomi Technology Co., Ltd. was not satisfied with the rejection and filed a review, which was not supported by the CNIPA and they appealed to the Beijing Intellectual Property Court, claiming that the trademark application No. 37529494 is a “continuation application” based on its registered trademark “MI”, and inherited the goodwill of the basic registered trademark. Beijing Intellectual Property Court ruled in No. (2020) Jing 73 Xing Chu No.13100 that “In this case, the plaintiff claims that the trademark at issue is a “continuation application” of its prior basic trademark registration. This court is of view that the basic registered trademark claimed by the plaintiff differs greatly from the trademark at issue. Therefore, the plaintiff's claim cannot be supported by our court.”

It can be seen from the above case that one of the most important elements in claiming “continuation trademark application” is that the later applied trademark needs to be identical with or closely similar to the basic registered trademark. Similarly, the “continuation application” can only be continued on the same or similar goods or services. It is difficult to extend the goodwill of the basic registered trademark to non-similar goods or services. It is important to note that the degree of similarity of the trademark and the similarity of the goods or services required here shall be high enough to make consumers believe that the goods or services using the two trademarks origin from the trademark owner or who has a specific connection with it.

Case study 2

The CNIPA rejected the trademark application No.34787671 “平安租赁 (translated as Ping An Lease)” filed by China Ping An Insurance (Group) Co., Ltd. by citing the prior trademark No. 7333378 “平安车保 (translated as Ping An Car Insurance)” owned by Shenzhen Ji Tai Da Technology Co., Ltd. China Ping An Insurance (Group) Co., Ltd. filed a review against the refusal, which was not supported by the CNIPA, and then sued to the Beijing Intellectual Property Court claiming that the trademark at issue was a “continuation application” based on its registered trademark “平安”, and that its goodwill could be extended to the subsequent applications.

The Beijing Intellectual Property Court’s decision No. (2020) Jing 73 Xing Chu No. 14297 Judgment clearly stated that “the evidence on file is not sufficient to prove that the trademark at issue can be distinguished from the cited trademark “平安车保” through use. The court is of view that if a “continuation trademark application” is applied for, the following requirements must be met in order to obtain registration by virtue of the prior basic trademark registration:

1. The basic registered trademark should be registered and had obtained certain popularity through use before the application date of the cited trademarks;

2. The re-applied mark has gained a certain popularity through use and constitutes similar trademarks on the same or similar goods/services with the basic registered mark, resulting in the goodwill of the basic trademark being inherited to the re-applied trademark, which will easily make the relevant public associate the two trademarks;

3. The cited trademark(s) has/have not been continuously used and obtained popularity.

In this case, the plaintiff did not provide evidence concerning the popularity of the basic registered trademark. Moreover, the owner of the cited trademark did not participate in the litigation, and it was difficult to consider the popularity of the cited trademark. Therefore, the trademark at issue should not be approved for registration by only having the plaintiff’s claim that the existence of the basic registered trademark of certain popularity.”

We can learn from the above cases that the essence of a “continuation trademark application” is the continuation of the goodwill attached to the trademark. The higher the popularity, the greater the goodwill attached. However, generally speaking, trademark registrant enjoys independent and exclusive rights over their different registered trademarks. There is no continuity among their successively registered trademarks. Only when the basic registered trademark has gained a certain degree of popularity through use, so that the relevant public can easily associate its identical or similar subsequent marks with the basic registered trademark on identical or similar goods/services, and it is possible to continue the goodwill of the basic registered trademark on the later applied trademarks, so as to obtain continuous registration.

The registration of the re-applied trademark is not a matter of course. According to the current Chinese trademark practice, in the cases of review of rejection, the use of cited trademarks being hard to consider becomes a more difficult obstacle for the registration of a re-applied trademark. Here are some suggestions on how to prevent possible troubles for applicants who wish to claim a “continuation trademark application”.

1. Market players should anticipate the reproduction and changes of trademarks and markets more comprehensively at the beginning of designing trademarks, and reserve different forms of trademark registration as early as possible.

2. When applying for a trademark, market players should designate as wide a range of goods and services that have been used or may be used as possible. While specific goods and services are designated, the goods or services with superordinate concept should also be considered, such as “medical devices and instruments” in Class 10,“clothing” in Class 25, and “toy” in Class 28, etc., in order to avoid obstacles in the possible supplementary applications due to business expansion needs.

3. For the important trademarks of companies, after the trademark registration, it should actively do a good job in monitoring and defending the trademark rights. Take timely actions against the identical or similar trademarks filed or registered by others to prevent the emergence of obstacles that are difficult to clear for subsequent continuation applications.

4. Keep the relevant evidence of use and popularity of the trademarks in case of need.

5. Be cautious when other parties request for a trademark coexistence agreement, which may bring potential risks to your future trademark applications. Even if for some reason, it is decided to issue a coexistence agreement for the other party, it is advisable to include a clause that if your later application is rejected by citing the other party’s mark, he should also issue the required coexistence agreement for your subsequent applications.