When it comes to trademark registration, the text of the mark is often the most critical factor in determining similarity with earlier trademarks. Even if an applicant's mark features a unique font or design, if the core text is identical or highly similar to an existing registered mark, the chances of successfully overcoming a refusal on the grounds of likelihood of confusion are slim.
In such cases, the background and history of the applicant's use of the mark, as well as any prior registrations, become crucial evidence to support the application. A thorough examination of these factors can help identify the best legal arguments to overcome the rejection.
Let's consider a case study: the trademark application for "POLAR" in classes 9, 11, and 18. The trademark registrar had preliminarily rejected the application in classes 9 and 11 under Section 12 of the Hong Kong Trade Marks Ordinance, citing the earlier registered marks "POLARPRO" and "POLAR PRO" in class 9, and "POLAR AIR" in class 11.
When the registrar finds a likelihood of confusion, the application is typically doomed to be rejected. However, by delving into the local legal principles, the applicant's background, and the history of the mark's use and registration, it is often possible to overcome such refusals, especially in common law jurisdictions where prior commercial use can establish unregistered trademark rights.
In this case, the applicant had already registered "POLAR 寶樂" for printer ink cartridges in 2000 and "iPolar" for computer hardware and software development services in 2011. Moreover, the applicant had been using the "POLAR" mark on computer peripheral accessories since 1999. Armed with this comprehensive evidence, we were able to argue that the applicant had a prior right to the word "POLAR" for computer-related products, ultimately securing the registration.
The key takeaway is that when facing a refusal based on likelihood of confusion, it is crucial for the applicant to provide thorough information and evidence related to the history of the mark's use and any existing registrations. This allows trademark specialists to formulate the most persuasive legal strategies and maximize the chances of successfully overcoming the rejection.
If you are dealing with a rejected trademark application or have concerns about a potential refusal, our trademark experts at RIGHT IP are ready to provide tailored advice and guidance to protect your interests. Feel free to reach out to us through the contact information provided.
Email: inquiry@rightipa.com
Tel/Whatsapp: +852 5327 3854
Comments