Hong Kong Trademarks Registry Work Manual revised
In a new section entitled Scope of searches - relative grounds for refusal, the manual provides that in determining whether an applicant's mark is confusingly similar to an earlier trademark, marks will not be compared side by side but considered as a whole: "similarity is assessed on first impressions of look, sound and idea."
The search for similarities involves (i) searching the database for similarities in word elements, Chinese characters and numerals, and (ii) a separate search for any device that is part of the application. For example, the Chinese character 'ma', meaning 'horse', is not to be regarded as similar to the English 'horse' or the French 'cheval'. However, if the word mark appears with an identical device, where the words in different languages have the same meaning, then the overall impression may make them similar. On the other hand, marks in Chinese characters "are unlikely to be regarded as similar to their transliteration in Roman letters because the immediate impression of the marks is likely to be different". However, where a transliteration obviously stands for a particular Chinese character, the examiner will conduct a search for the Chinese character that the transliteration represents.
Word marks will not be considered as similar to devices. Thus, the Chinese character 'ma' will not be considered similar to a horse device since the immediate impression is different. Device searches include both two and three-dimensional marks.
If similarity is determined, the examiner's next step is to consider likelihood of confusion.
In the section of the manual entitled Absolute grounds for refusal, some materials on Chinese characters have been added. For example, the manual provides that Chinese characters are to be read in their usual way, from left to right in examining them as
trademarks. If, however, it is immediately apparent that characters are to be read from right to left, from the context or grammatical structure, then they will be read in that manner.
This section also considers whether a sign can be represented graphically and thus classified as an ordinary trademark. The next question is whether the sign is capable of distinguishing the goods of the applicant from those of other parties.
The test applied here has "a very low threshold", which makes the following signs most likely to be excluded:
- single colours;
- the shape of goods or their containers;
- ordinary names for goods or services; and
- highly descriptive or laudatory words.
Distinctiveness, namely the ability to distinguish the goods or services of the applicant without any risk of confusion with other parties' marks, is the primary test. If the sign satisfies this criterion, then it does not matter if the mark is slightly descriptive or laudatory.
David C Buxbaum, Anderson & Anderson LLP, Hong Kong
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