The text of a trademark is always the most distinctive elements and the key of judging whether two marks are similar or not. No matter how different of fonts or unique designs are applied, if the spelling of text is identical to earlier trademark, it is futile in most of situations when appeal in argument. In this situation, the background of the applicant and the history of use of the trademark and previous registration of the mark will become the last hope. Accordingly, we (Right IP) will conduct a background check and request the applicant to provide background information, including usage of this mark and any registration in past to assist in finding the best strategy to argue for every rejection of trademark application.
The case we would like to introduce is trademark application for "POLAR" in classes 9, 11 and 18. The Trade Mark Registrar had preliminary rejected to grant registration in classes 9 and 11 according to Section 12 of the Hong Kong Trade Marks Ordinance, in view that there is three earlier trademarks, "POLARPRO" and "POLAR PRO" in class 9 and "POLAR AIR" in class 11.
Once likelihood of confusion is found during the examination, a trademark application is basically bound to be rejected by the official. In this situation, we need to look into the local legal principles, the background of applicant, the history of use and registration of the mark. Especially in common law jurisdictions, owner of an unregistered mark may claim the rights under certain conditions through prior commercial use.
In this case, the applicant had registered "POLAR 寶樂" in respect of printer ink cartridges in 2000 and "iPolar" in respect of computer hardware and software development services in 2011, and has used of the mark "POLAR" on computer peripheral accessories since year 1999. Therefore, we claimed that the applicant has owned a prior right to the word "POLAR" in respect of computer products in argument. Finally, we successfully fight for this applicant and obtained registration for the case.
In a nutshell, when facing to a rejection on the ground of likelihood of confusion, we need cooperative applicant to provide all the information and evidence related to the history of use of the trademark and any other registrations of its mark. We could only formulate strategies and persuade the official with best possibility if all the information and evidence are collected... We are keen to deliver suitable advice and maximize the interests for applicant with our extensive expertise in the field of trademarks and in-depth understanding of trademark laws in different jurisdictions.
If you have any questions relating to rejected trademark applications or facing a rejection, you can contact our specialists in the following ways:
Email: [email protected]
Tel/Whatsapp: +852 5327 3854 / +852 5336 1214
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