Short answer: A trademark application refused for conflicting with another FDI company’s trade name is an ‘unregistered right versus application’ clash: a trade name is protected through lawful use in business, with no registration, but the company bearing it must show it used the name first and that the business fields overlap. The handling options are threefold: prove there is no field overlap, negotiate consent or a name change, or redesign the mark to distance it from that trade name.
Legal basis
Article 78 of the IP Law establishes trade name rights on the basis of lawful use, not registration; a trade name is the name an organisation or individual uses in business to distinguish itself from others in the same business field and area. Article 74 bars trademarks identical or confusingly similar to a trade name already in use by another. Registering a company name with the business registry does not by itself create trademark rights for an FDI company — and conversely, a trademark certificate does not replace trade name rights.
How this applies in practice
When answering the refusal, the hinge is ‘same field and area of business’: if the cited trade name belongs to an FDI company in a wholly different industry (a logistics firm sharing a name with a cosmetics brand), the no-confusion argument has real prospects. Same industry and same territory, and the odds invert. Evidence to prepare: the other side’s enterprise registration and actual trade name use (to test its real scope), plus your own brand-use file showing two separate customer ecosystems.
The negotiated route is often overlooked to everyone’s cost: the trade name company may issue a letter of consent where the fields genuinely differ, or the two sides can sign a coexistence agreement dividing the fields. If no agreement is possible and the mark is mission-critical, the last route is adding a strong distinctive element (a different coined name, a dominant device) and refiling — renaming your company to dodge the conflict is rarely wise, as it drags the entire corporate and tax apparatus with it.
Action checklist
- Read the refusal to identify the cited trade name and the legal basis invoked.
- Research the company bearing that name: real business lines, territory, and when it started using the name.
- Score the overlap of industries and customers between the two sides to choose the route.
- Open a negotiation for a letter of consent or a field-dividing coexistence agreement.
- If no agreement is reachable, strengthen the mark with a powerful distinctive element and refile early.
Risks and practical notes
A common mistake is assuming that registering your company name makes that name ‘yours’ in every context — the other side’s use-based trade name right may predate it and prevail on the trademark field. The opposite error is abandoning the mark unverified: sometimes the cited trade name belongs to a company that has ceased trading or works in an unrelated field, and a complaint with evidence reverses the outcome.
Frequently asked questions
The brand matches another company’s registered name — what can be done?
First verify that company’s real scope: a different industry and customer base supports a no-confusion argument; the same industry points to negotiating consent or clearly differentiating the mark.
Rename or add distinctive elements?
Adding a strong distinctive element to the mark is usually far cheaper than renaming the company (which drags corporate, tax and contract procedures); rename only where the company name itself clashes in the market.
Can it be negotiated?
Yes — a letter of consent from the trade name company, or a coexistence agreement dividing the fields, is a standard tool, and the IP Office treats it as important evidence in examination.
This article has been quality-reviewed by the FLAW AI Legal Council