Letter of Consent: Is it a viable tool to overcome a refusal based on similarity with an identical trademark?

Alyona Chernoknyzhnaya
Trademark Attorney for IPR GROUP

(in collaboration with Tatiana Lipovaya)

Trademark legislation protects both manufacturers and consumers. Trademark registration grants a manufacturer the exclusive right to use a mark for specific goods and services, as well as the right to prevent others from using it. For consumers, this protection ensures they can identify goods and services from a specific source, preventing confusion and unfair competitive advantages. Trademark legislation therefore seeks to register marks that are distinctive and unlikely to cause confusion among consumers or create market conflict.

During examination, it is essential that the PTO expert carefully evaluates all circumstances of each trademark case and does not block a manufacturer’s entry into the market, when there is no real likelihood of consumer confusion.

 Coexistence Agreements and Letters of Consent are important market regulation tools, specifically used to regulate trademark use and resolve potential disputes when two companies hold similar or identical trademarks. Among these tools, Letters of Consent remain one of the most persuasive and effective ways to overcome refusals based on a citation of the earlier applied/registered marks.

In general, the acceptability of a Letter of Consent by the PTO is influenced by the degree of similarity between the trademarks and the designated goods and/or services, as shown in the table below:

When we talk about the identical marks with the identical goods and/or services, it is obvious that the Letter of Consent will not be accepted by the Examination. However, when we talk about identical marks with homogeneous goods and/or services, the answer is not so obvious, and many factors must be taken into consideration.

According to the Law of Ukraine “On Protection of Rights to Marks for Goods and Services”, identical and confusingly similar marks may be registered as trademarks if there is consent of the owner of the certificate of a previously registered trademark or the owner of another previously acquired right, and there is no possibility of misleading consumers.

Taking into consideration the above-mentioned provision, we would like to share our recent cases in Ukraine:

IR 1394423 TM DISCOVERY, UA

IR 1394423 TM DISCOVERY, owned by Jaguar Land Rover Limited (GB), was provisionally refused in Ukraine for all applied goods in class 09 because it was considered by the Examination that the applied mark is confusingly similar to the following trademarks:

– TM  Certificate № 336684, earlier registered in Ukraine for goods and services in classes 09, 38, 41, owned by Discovery Communications, LLC (US);

– TM DISCOVERY IR 846849, earlier registered in Ukraine for goods in classes 07 and 09, owned by Lely Patent N.V. (NL).

Bearing in mind that JLR is a world-renowned manufacturer of luxury vehicles, Discovery Communications, LLC provides entertainment services, while Lely Patent N.V. is the agricultural machine and robot manufacturer. Despite the fact that the marks in question have identical verbal element “DISCOVERY”, we recommended that the client approach the owners of the opposed marks to seek Letters of Consent.

Per client’s instructions, we successfully obtained the Letter of Consent from Lely Patent N.V., while the LoC from Discovery Communications, LLC was provided by JLR, as the companies have an agreement to provide Letters of Consent to each other when necessary.

Both Letters of Consent were filed with the UPTO, along with our grounded explanation as to the difference between the goods of the parties, their targeted consumers, and distribution channels. As a result, the grant of protection decision was issued for IR 1394423 TM DISCOVERY in class 09 in Ukraine.

IR 1728082 TM , UA

IR 1728082 TM , owned by SOLARIS BUS & COACH spółka z ograniczoną odpowiedzialnością (PL), was partially refused in Ukraine for all applied goods and services in classes 11 and 42, as well as for some goods in class 09, because it was considered by the Examination that the applied mark is confusingly similar to the following trademarks:

– TM  Certificate № 11024, earlier registered in Ukraine for goods in class 09, owned by Oracle America Inc. (US);

– TM Certificate № 333224, earlier registered in Ukraine for services in class 42, owned by LLC “Muzeo Tiket” (UA);

– TM IR 944778, earlier registered in Ukraine for goods in class 11, owned by BSH Hausgeräte GmbH (DE).

We conducted a search in open sources and found that the applied mark is used for buses, electric buses, trams, trolleybuses, their spare parts, etc. In contrast, TM  is used for a proprietary Unix operating system offered by Oracle; TM  is related to providing booking services; while TM  was earlier used for home appliances, such as vacuum cleaners.

Given the disparate business focus of the parties, we advised the client to try and obtain Letters of Consent from the owners of the opposed marks.

We succeeded in obtaining Letters of Consent from LLC “Muzeo Tiket” and BSH Hausgeräte GmbH. The LoC from Oracle America Inc. was provided by the applicant, as companies had executed a co-existence agreement.

The Letters of Consent, together with arguments demonstrating the disparate nature of the parties’ business activities, were accepted by the UPTO, and a grant of protection decision was issued for IR 1728082 TM  in Ukraine.

IR 1509013 TM , UA

In Ukraine we may also point out on the case of DRiV IP LLC (US): TM IR 1509013 was refused for goods in class 07.  Nexus Automotive International SA (CH), the holder of the opposed TM IR 1280140, registered in Ukraine in classes 07 and 12, initially filed an opposition against registration of the IR 1509013 in Ukraine. The major issue was that the parties have similar businesses related to automotive spare parts. However, the parties negotiated and signed the co-existence agreement, and as a result, the Letter of Consent was provided at the stage of appeal of the decision before the Board of Appeal.  The Letter of Consent and arguments regarding co-existence of the marks on the market without the possibility of a conflict were accepted by the Board. Despite the similarity of the marks and their goods, the final positive decision was issued.

Obtaining the Letter of Consent from the holder of the opposed trademark is also a reliable option to overcome provisional refusals in other countries of our jurisdiction, such as Kyrgyzstan, Uzbekistan, Kazakhstan and Georgia.

IR 1715382 TM , UZ

TM of HYUNDAI ELEVATOR CO., LTD (KR) was provisionally refused in Uzbekistan in respect of all applied goods in class 07, namely “escalators; elevators; moving sidewalks; automatic parking installations; machines for parking management; conveyors” and related services in class 37, due to the presence of earlier registered marks containing the identical verbal element “Hyundai”:

 –  TM IR 1699552 and TM IR 1703200, both owned by HYUNDAI MOTOR COMPANY (KR);

–  TM  HYUNDAI CONSTRUCTION EQUIPMENT IR 1432014 and TM Certificate №  MGU 28495, owned by НYUNDАI НЕАVY INDUSТRIЕS СО., LТD. (KR);

 – TM IR 1555847 , TM  Certificate №  MGU 14063, TM   Certificate №  MGU 34222, all owned by HD HYUNDAI CO., LTD (KR).

As was learned from the history of the company in the past, the applicant and the holders of the opposed registrations belonged to one industrial holding – Hyundai Group. Due to historical and economic reasons, the management decided to divide the applicant into a separate company specializing only in elevators, sidewalks, and related equipment. However, the applicant has preserved business relations with the parent group. The holders of the opposed marks have provided the Letters of Consent, and the applicant’s trademark was successfully registered in Uzbekistan.

We faced the same situation with TM IR 1715382 in Kyrgyzstan and Kazakhstan, where in both countries the trademarks of the Hyundai companies were opposed to the subject mark at the stage of the substantive examination. However, with the grounded explanation of business connection between them and based on the obtained Letters of Consent, the protection was also granted in those territories.

Until recently, in Georgia, submission of a Letter of Consent, even from business-related or affiliated companies, was not taken into consideration by the Examination. However, office practice has developed together with examination approaches, and currently a Letter of Consent is a considerable reason for granting protection.

IR 1347096A TM MAN and IR 1346555A TM , GE

TM MAN IR 1347096A and TM IR 1346555A of MAN Marken GmbH (DE) in classes 01 and 04 were provisionally refused in Georgia based on the earlier registered trademarks, owned by MANN+HUMMEL GmbH (DE), namely: IR 922631 TM MANN FILTER in classes 04, 07, 11, 12; IR 909597 TM in classes 04, 07, 11; and IR 585706 TM in classes 01, 06, 07, 09, 11, 12, 16, 17, 19, 20, 24.

Since the owner MANN+HUMMEL GmbH has a different business sphere than MAN Marken GmbH, focusing mostly on filters and filter modules for motors or engines, while the applicant uses the mark for fuels and lubricants, the consents for registration of the subject trademarks were obtained. Based on the Letters of Consent and the arguments explaining differences in business spheres of the parties’ activities, the GPTO has issued the grant of protection decisions for both marks.

 Summing up the aforementioned, we would like to note that in such cases, the trademark examination procedure must be comprehensive and take into account the following factors, among others, in an evaluation of likelihood of confusion among the consumers: nature of the goods and/or services, intended purpose and method of use of the goods and/or services, complementarity of the goods and/or services, channels of distribution, relevant public and consumers of the goods and/or services, degree of attention that is usually exercised by the relevant consumers of the goods and/or services, specific market regulations, etc.

Consequently, Letters of Consent, even for identical marks, must be accepted by the PTOs if the marks are used for different goods and/or services, have different targeted consumers and/or distribution channels, or a holder and an applicant have business connection and therefore do not mislead consumers.

Routinely trademark attorneys of the IPR Group evaluate number of cases across our jurisdictions and advise on best strategies for overcoming provisional refusals issued by national Trademark Offices. Our accumulated experience in negotiating the Letters of Consent and co-existence agreements, as well as previous successful cases handled on behalf of right owners from various industries allows us to provide comprehensive evaluation of how to obtain right protection for the applied trademark and avoid potential conflicts on the markets.

We hope our brief observation might be useful for internationally operating trademark professionals.