The legal team led by Emma Ma  helped BOSTON CHILDREN'S HEALTH INTERNATIONAL, LLC win the review of refusal case of the mark “BOSTON CHILDREN’S HOSPITAL in Chinese”. The trademark application was eventually approved for registration, Chang Tsi helped the clients secure the core trademark registration rights in China, thereby reducing their risks of trademark usage and protection.

This is a review of refusal case. In this case, the Applied Mark is “BOSTON CHILDREN’S HOSPITAL in Chinese”, while the Applicant’ s name is “BOSTON CHILDREN'S HEALTH INTERNATIONAL, LLC”. The CNIPA refused the application for the reason that “the mark is inconsistent with the name of the Applicant, and it is likely to mislead consumers, the mark cannot be used as a trademark” according to the Article 10.1.7 of China Trademark Law.

The key to overcome this absolute ground is to prove that there is no substantial difference between the Applicant's D/B/A name and the registered name of the company, which is in line with the commercial practice. In view of the fact that refusal on absolute grounds is generally not easy to overcome, after receiving the client’s instruction, Chang Tsi carefully analyzed the case, formulated a detailed strategy, guided and cooperated with the client to collect supporting evidence, and submitted persuasive review grounds with the CNIPA. Through our joint efforts, we finally succeeded in persuading the CNIPA to recognize that: "Although there is a difference between the Applied Mark and the Applicant’ s name, in view of the affiliation and consistency of interests between 'BOSTON CHILDREN’S HOSPITAL' and the Applicant, and as supported by Exhibit 4 (Trademark Ownership Agreement), the registration of the Applied Mark will not deceive or mislead the relevant public, and does not violate the provisions of Article 10.1.7 of China Trademark Law." The Applied Mark was finally approved for registration. We successfully helped the client obtain the registration of its core trademark in China, lowering the client’s risks of trademark use and protection.

Our client, BOSTON CHILDREN'S HEALTH INTERNATIONAL, LLC ("the Applicant"), previously registered the mark “BOSTON CHILDREN’S HOSPITAL in Chinese” in Class 44 and this mark was challenged by a non-use cancellation action in 2022 filed by a third party. As a U.S. hospital, the client was unable to operate directly in China, and thus had no direct evidence of use to prove its actual use in China. The client can only provide some media articles about its cooperation with Chinese hospitals and reports on the authority and popularity of BOSTON CHILDREN’S HOSPITAL. To lower the risks of being cancelled, we advised the client to file a backup application and the client accepted our advice. Per the client’s instruction, we filed a new application on July 1, 2022 for the mark “BOSTON CHILDREN’S HOSPITAL in Chinese” under App. No. 65682513 in Class 44 (“The Applied Mark”), designating on the services “Hospitals; health care; health centers; midwife services; nursing, medical; Dispensing advice; therapy services; Telemedicine services (or remote medical services); Genetic testing for medical purposes; Rest homes; food nutrition guidance; Massage; Veterinary assistance; Gardening; Opticians' services; Rental of sanitation facilities; providing service animals for people with disabilities.”

On February 20, 2023, we received an Official Notification of Refusal issued by the CNIPA. The Applied Mark was refused for the reason that “The Applied Mark is inconsistent with the company name of the Applicant, which can easily mislead the consumers. The Applied Mark cannot be used as a trademark.” according to Article 10.1.7 of China Trademark Law. Considering “BOSTON CHILDREN’S HOSPITAL in Chinese” is the client's core mark and it has been globally used and has a high reputation, the client is not likely to change the actual used form of the mark. Therefore, it is vital for the client to obtain registration of Applied Mark in order to lower the risk of cancellation of its trademark and to maintain the global consistency of trademarks. 

The difficulties of this case includes: firstly, generally it is not easy to overcome refusal based on absolute grounds; secondly, form arguments and collect evidence to prove the consistency of interests in spite of the difference between the Applicant's D/B/A name and the registered name of the company. 

In view of the difficulties of this case, we formulated the following strategy:

Firstly, we emphasize that "BOSTON CHILDREN'S HOSPITAL" is a D/B/A name, not the registered name of the company. The Applicant is responsible for the application and management of the intellectual property rights of "BOSTON CHILDREN'S HOSPITAL" in China. According to arrangement of the company, the Applicant manages the intellectual property rights of the trademark "BOSTON CHILDREN'S HOSPITAL" around the world including China. Therefore, the Applicant has the legitimate rights to register the Applied Mark. 

Secondly, we list the Applicant's prior registrations of the mark "BOSTON CHILDREN'S HOSPITAL" and its corresponding English mark "BOSTON CHILDREN'S HOSPITAL". The Applied Mark as a continuous registration should also be approved for registration pursuant to consistent examination criteria.

Thirdly, we refer that in some specific fields such as the medical field, it is a common phenomenon and business practice that the D/B/A name and the registered name of the owner are different. The D/B/A name is only used to provide external services, while the actual operator will be registered as a limited company or joint-stock company. This kind of situation is consistent with commercial practice and should not be recognized as nominal inconsistency, but should be judged on the basis of the specific factual circumstances of the trademark and the Applicant's intrinsic unity.

Fourth, we argue that the Applied Mark has obtained high reputation and formed a one-to-one correspondence relationship with the Applicant through the Applicant’s extensive use and publication in China. No confusion and misidentification had been caused among the consumers due to the inconsistency of the Applied Mark and the Applicant’s name.

To support the above arguments, we conducted a lot of inquiries and guided the client to collect substantive and effective evidence, including photocopy of registration certification of BOSTON CHILDREN’S HOSPITAL’s D/B/A name , company registration certificate of BOSTON CHILDREN'S HEALTH INTERNATIONAL, LLC, notarized Trademark Ownership Agreement and the corresponding Chinese translation, trademark profiles of D/B/A name registrations in the U.S.A and China, trademark archives of the Applicant’ s prior registrations of “BOSTON CHILDREN’S HOSPITAL in Chinese” , introduction and related media reports about BOSTON CHILDREN’S HOSPITAL .

This case has great reference value for the review cases based on the absolute grounds of inconsistency of D/B/A name and the Applicant’s registered name. The key point of such cases lies in submitting evidence, including the registration certification of D/B/A name and company registration certificate of the Applicant. In this case, we also submitted a crucial piece of evidence, namely "notarized Trademark Ownership Agreement and the corresponding Chinese translation". This piece of evidence was issued by the Applicant, explaining the basic situation of the Applicant's company, the relationship between the D/B/A name and the registered name of the company, and the use arrangements in business. Moreover, this agreement has been notarized and has a high degree of probative force. It is based on this evidence that the CNIPA recognized the relationship and consistency of interests between “BOSTON CHILDREN’S HOSPITAL ” and the Applicant and preliminarily approved the application for registration of the Applied Mark. Besides, if the D/B/A name has been widely used and has reputation, it is helpful to submit evidence of use to make the examiners have a better understanding of the Applied Mark and influence examiners’ discretion. In the future review cases which are refused due to inconsistency of D/B/A name and the Applicant’s registered name, the review grounds and evidence submitted in this case can be used for easy reference.