Previously, we have introduced various cases where trademark applications were refused due to similarity with prior marks. However, each case is unique, and the same written arguments may not be persuasive across all cases. The Hong Kong trademark case presented by Right IP differs from the typical scenarios, as it does not focus on the differences between the marks, but rather on the inherent issues with the prior registered mark itself.
The trademark in question is "東山堂 (East Mountain Tang/Hall)" (with stylized font) for food and beverage products. The Trade Marks Registry refused registration on the basis that the mark is similar to the prior registered mark "東山馳名燒臘 (Dongshan Famous Roast Meat)" for catering services. After receiving the official refusal, the applicant sought preliminary consultation with Right IP through a referral.
Generally, the term "東山 (Dongshan/ East Mountain)" is the most distinctive element common to both marks, and the registered goods and services are clearly identified as similar in the official examination guidelines. Thus, the general public or even trademark practitioners may have assessed the case as having a low chance of success for the applicant.
However, upon investigation, Right IP found that there was a district in Guangzhou city called "東山區 (Dongshan District)", which was a renowned historic area of the city (one of the "old four districts"), now part of Yuexiu District. In the area of Dongshan, there are numerous well-known and long-established roast meat shops. Additionally, the owner of the prior registration is from Guangzhou, indicating that "東山馳名燒臘" is likely a geographically descriptive trademark, similar to cases such as "香港仔魚旦粉 (Hong Kong Aberdeen Fish Noodles)" and "深井燒鵝 (Sham Tseng Roast Goose)".
As stated earlier, Section 11(1)(c) of the Trademark Ordinance stipulates that a mark consisting "solely of signs or indications which may serve in trade or business to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services" is unregistrable.
Furthermore, any mark failing the above requirement would also be considered "devoid of distinctive character" under Section 11(1)(b) of the Trademark Ordinance, meaning it cannot be perceived as a trademark by the general public.
Therefore, when presenting the case to the examiner, it is essential to have a thorough understanding of the legal principles and precedents related to these provisions, in order to explain that the prior registered mark is descriptive, and the term "東山 (Dongshan)" in the prior mark does not possess distinctive character. The applicant should also demonstrate that the applied mark "東山堂 (East Mountain Tang)" should not be considered confusingly similar to the prior registration, and the examiner should reconsider the application for registration.
In conclusion, even when faced with a refusal based on a prior registration, the prior mark may inherently or inherently contain deficiencies. Through experience, it is possible to find the right approach by identifying the weaknesses of the prior mark and considering the local social and cultural context, in order to devise the best strategy to persuade the examiner to accept the registration application. The extensive professional knowledge and deep understanding of trademark laws in different regions by Right IP can help applicants assess their cases and secure the best possible outcomes.
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