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How to effectively register trademarks with a combination of text and graphics Mar 2019
As the number of trademark registrations continues to rise, the difficulty of registering a trademark also increases. The most common form of trademarks is a combination of text and graphics, which involves many trademark elements, and often leads to many reference marks. The difficulty of trademark registration is thus increased significantly. The most important factor in judging whether or not trademarks are similar is whether the coexistence of the trademarks is likely to cause public confusion. For graphic combination trademarks, it is necessary to examine the overall visual appearances of the trademarks, combine with the pronunciation, meaning, popularity and other factors as a whole to comprehensively judge whether the trademarks are likely to cause confusion to the relevant consumers, and then judge they are similar.
So, how to effectively register a combination of text and graphics trademarks?
1. Timely registration of copyright
Trademarks that contain works such as art graphics should be registered for copyright protection in the form of art works in a timely manner. The greatest value of copyright registration is that it recognizes the time of establishing copyright. As a type of prior rights, it is not subject to the limitation of trademark category. The copyright registration certificate serves as a prima facie evidence to prove that the owner enjoys copyright. The design specification is conducive to understanding of the meaning of the work and its originality, thereby enhancing the uniqueness of a trademark.
2. Continuous monitor of trademarks
After the trademark is submitted for registration, it should be continuously monitored. Since there is a certain blind spot in the trademark search, similar trademark may not be completely avoided. If a same or similar trademark is discovered after the application, the relief procedure should be started in time.
3. In-depth analysis of the criteria for the prior ruling and judgment of the graphic combination trademark
If the trademark is completely original, emphasis of search can be put on the components of the trademark, the pronunciation, the font, the composition of the graphic, the colors, and the overall appearance. Graphical combination trademarks have a high degree of complexity in approximation judgments. Generally speaking, in judging whether two graphic combination trademarks are similar, it is necessary to consider factors such as the approximation degree of the constituent elements of the logo, the popularity of the trademark, the distinctiveness of the trademark, and the degree of association with the commodity etc. Finally, it depends on whether the coexistence of the two trademarks will create possibility of confusion.
4. Once a trademark has been rejected, actively provide evidence of use to the Trademark Review and Adjudication Board
According to the second half of Article 1 of the Supreme People's Court's "Opinions on Several Issues Concerning the Trial of Trademark Authorization and Confirmation of Administrative Cases", in order to respect the established market order, a relatively loose review standard should be applied to trademarks that has been widely used, has established a high market reputation, and has formed a relevant public group.
Therefore, active provision of evidence of use to the examination body may not only have a direct impact on the result of application, but it can also help them identify the specific use of the trademark, accurately grasp the creativeness of the trademark, and understand how to distinguish the trademark or the source of the service.