Imagine yourself wearing a designer suit, strolling through a bustling street, when suddenly another person wearing the exact same suit as you appears. Not only are the clothes identical, but even the appearance is indistinguishable from yours. You can't help but think, "Is this a mistake? I didn't know I had a 'twin'." But the truth is, you are real, and he may be a "clone". This is not a movie plot, but a real scene that happens in the world of trademarks.

    The protagonist of the story is an Italian company, ABC COMPANY, who owns a series of well-designed "ABC" trademarks. However, a "doppelganger" of such trademark suddenly appears, with a registered address in the United States, but with the same name and trademark as him. This confusion leaves ABC COMPANY perplexed, and after much consideration and practical business needs, he ultimately decides to submit application to the National Intellectual Property Administration, PRC ("CNIPA") for a change of the applicant's name, in an attempt to shake off this "clone" entanglement.

    But things were not as simple as he had imagined. In response to his application to change the applicant's name of the trademark, the CNIPA further issued a "Amendment Notification Regarding Name Change Application," requiring ABC COMPANY to also change the names of other 23 valid trademarks which were under the same company's name but were actually owned by the American company.  Here, the key to the problem is detail of the "address."

    Article 41 of the Trademark Law stipulates that: if it is necessary to change the name, address or other registered matters of the registered trademark, an application for change should be submitted.

    Article 30. 2 of the Implementing Regulations of the Trademark Law of the People's Republic of China further specifies that: if the name or address of the registered trademark owner needs to be changed, the trademark owner should change all its registered valid trademarks together.

    The amendment notification issued by the CNIPA is based on the above-mentioned legal provisions.

    But the dramatic twist in this story lies in the fact that even the CNIPA was confused by this "wardrobe malfunction."  The names of the two subjects and their trademarks were completely identical, the only difference being the registration location of their trademark owners: one is in Italy, the other is in the United States. This situation led the CNIPA to mistakenly assume that these two entities were one and the same.

    Finally, we successfully submitted a detailed explanation to the CNIPA through response, and managed to change the name of this Italian company, separating him from this pair of "twin" brothers.

    This case has also led us to further contemplate:

    Upon inquiry, it was found that as early as 1995, ABC COMPANY had submitted trademark application for mark "ABC" over the goods "can openers, etc.," in Class 8 to the CNIPA, this trademark was successfully registered in 1997.  ABC COMPANY-USA (we added "USA" here to differentiate between the two subjects), submitted a trademark application for same mark "ABC" to the CNIPA in 2020, covering the similar goods "blades (hand tools), etc.," in Class 8.  This trademark was also successfully registered in 2021.

    These two trademarks undoubtedly constitute "same/similar trademarks over the same/similar goods", which is completely contrary to Article 30 of the Trademark Law, "Where an application for the registration of a trademark does not conform to the relevant provisions of this Law or where it is same with or similar to a trademark already registered or preliminarily approved for use on the same goods or similar goods by another party, the Trademark Office shall reject the application and shall not publish it".

    In this article, we will not delve into why this later filed same trademark could be registered over the similar goods.  Based on the background information mentioned above, we can easily see that the CNIPA mistakenly identified these two highly similar trademarks as belonging to the same entity in this process. It is clear that such so-called "wardrobe malfunctions" can bring great risks to trademark owners, as once they are exploited by malicious "trademark traffickers", they may even cause significant losses to the true trademark rights holders.

    Here, we kindly remind the applicants to regularly review and optimize their trademark layout. In order to better maintain and protect their brand rights, applicants are advised to periodically monitor their brands closely.  If they discover that a trademark same or similar to their own brand is later applied for and published, they should take effective countermeasures immediately, such as filing an opposition action, to ensure that their legitimate rights are not infringed in any form.

    Next, when the name or address of the applicants actually changes, we recommend that the applicants should promptly submit the application to the CNIPA to record such change in order to avoid unnecessary risks and troubles.

    Lastly, if you have encountered the same trademark issue as this Italian company, do not panic.  Communicating with the CNIPA in a timely manner and submitting correction materials according to the regulations can resolve the issue.  Just like encountering a "wardrobe malfunction" on the street, remain calm and handle it gracefully, as that is the wisest choice.