Refusal for similarity to a cited trademark (Article 30 of the Trademark Law) is the most common refusal scenario. The response can be organized around three main lines: arguing head-on that there is no similarity, clearing the citation obstacle from the flanks, and running a dual-track filing as a fallback.
Line One: Argue the Marks Are Not Similar and the Goods Are Not Similar
Core argumentation directions for the review statement of grounds:
- Comparison of the marks: compare pronunciation, appearance, meaning, and overall impression one by one. Pure word marks with a different first character, and marks with large phonetic and semantic differences, usually have room for argument;
- Comparison of the goods: based on the Classification of Similar Goods and Services and market reality, argue that the two parties' goods are not similar in function, purpose, sales channels, or consumer groups;
- Reputation and use evidence: your trademark has formed stable market recognition through extensive use, so consumers will not be confused — this can serve as a supporting argument;
- The cited trademark's own coexistence landscape: multiple marks containing the same element are already registered side by side in the same class, showing that examination practice permits such coexistence.
Line Two: Clear the Cited-Trademark Obstacle
- Non-use cancellation: where the cited trademark has been registered for three full years and is suspected of non-use, file an application for cancellation for three consecutive years of non-use, and at the same time request suspension of the review pending the cancellation outcome;
- Invalidation: where grounds for invalidation exist within five years of the cited trademark's registration, file an invalidation;
- Negotiated assignment or coexistence: contact the owner of the cited trademark to acquire the mark or sign a coexistence agreement, submitting it in the review as evidence of consent to coexistence;
- Watch for natural lapse: where the cited trademark expires without renewal or is cancelled, the obstacle disappears automatically.
Line Three: Dual-Track in Parallel
While filing a review of the core trademark, submit an adjusted new application (slightly modified representation or trimmed goods) as a backup. This way, even if the review fails, the brand layout does not suffer a protection gap.
Decision Advice
Conduct a success-rate assessment first: where the cited trademark's status is stable and the marks are highly similar, a review offers poor value; where the cited trademark is vulnerable to non-use cancellation or the similarity is moderate, a review is worth the investment.
If you are facing the issues above, you can first run a refusal review assessment on MyTMBee to confirm feasibility before deciding whether to file, avoiding wasted official fees from blind filings.