One of the most common challenges faced by trademark applicants is the issue of similar marks. Many assume that as long as their mark is slightly different from an existing one, they can still successfully register it. However, trademark laws in most jurisdictions are designed to prevent consumer confusion, and examiners are tasked with rejecting applications that are deemed too similar to existing trademarks.
The case of "Dibe 蒂貝" illustrates this point. The applicant sought to register this mark for sex toys and sexy clothing in Hong Kong. However, the Trademark Registrar rejected the application under Section 12 of the Hong Kong Trademarks Ordinance, citing similarity to an earlier registered mark "貝蒂" (pronounced "BEIDI", which is the reverse of "蒂貝"). The "貝蒂" mark was already registered for clothing products.
While it's common for trademark applications to be rejected due to the likelihood of confusion, the standards for determining similarity can vary significantly across different countries. Even in the same scenario, the outcomes can be quite different due to factors such as local culture, language, social customs, and legal principles applied by examiners.
In the "Dibe 蒂貝" case, the key was to convince the Hong Kong Trade Marks Registry that the reversed Chinese characters "貝蒂" and "蒂貝" would not be read as similar by the local consumers. We, RIGHT IP team, cited relevant common law precedents and provided evidence that the trademark owner of "貝蒂" also owned the "BETTY BOOP" brand, whose official Chinese name is also "貝蒂". This helped demonstrate that the two marks were not likely to be confused in the local context.
Ultimately, the applicant was able to successfully appeal the rejection and obtain registration for the "Dibe 蒂貝" mark. This case highlights the importance of understanding the nuances of trademark examination in different jurisdictions, as well as crafting persuasive arguments based on local cultural and legal factors.
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