Case study 30: Some takeaways on overcoming the provisional refusal against International Registration designating Cambodia
As you know, Cambodia became a member of the Madrid System for the International Registration of Mark on 05 June 5 2015. The system facilitates the filing of applications in multiple countries around the globe. Rather than having to file a trademark application in each country, a trademark owner can file a single application with their national or regional IP office, and then designates protection of their mark in Madrid member countries. This greatly simplifies and reduces the cost of the process, however in case your trademark faced a provisional refusal by the Department of Intellectual Property of Cambodia, what do you have to do to protect your trademark in that case? Our firm, KENFOX IP & LAW OFFICE has succeeded in the event that an IR designing Cambodia faced a provisional, via filing a response to the Provisional Refusal issued by Department of Intellectual Property of Cambodia (“DIP”).
HB Global Co., Ltd. (“HB Group”), a Korea-based legal entity, filed an application for international registration seeking protection for a word mark under IR No. 1393221 designating Cambodia. The DIP issued, after its substantive examination, a Notification of Provisional Refusal against IR No. 1393221. The ground for rejecting International Registration Designating Cambodia (“IRDC”) exists under the provision of Article 12 the Cambodian trademark law and another is the confusing similarity to the cited trademark “” under trademark application No. KH/75275/17.
Details of the cited mark are as follows:
|Proposed trademark under IR. No. 1393221||Cited National Reg. No. KH/75275/17|
Class 03: Cake flavorings [essential oils]; food flavorings [essential oils]; flavorings for beverages [essential oils]; food flavorings prepared from essential oils; color-brightening chemicals for household purposes [laundry]; antistatic preparations for household purposes; laundry glaze; fabric softeners for laundry use; washing soda for cleaning; bleaching preparations for laundry use; stain removers; color-removing preparations; bleaching soda; bleaching salts; bleaching preparations; leather bleaching preparations; soap powder; descaling preparations for household purposes; soaps; detergents prepared from petroleum [for household purposes]; cleaning preparations for household purposes; cakes of soap; soaps (not for personal use); detergents prepared from petroleum; soap for brightening textile; oils for cleaning purposes; detergents (not for use in manufacturing operations and for medical purposes); cleaning preparations; cleansers for use as detergents; laundry soap; laundry soaking preparations; cosmetics; eyebrow cosmetics; rouge; loose face powders; lip liner; lipsticks; mascara; nail polish; varnish-removing preparations; make-up foundations; make-up; cosmetic preparations for baths; body lotions; body milk; badian essence; body oils; body creams; blusher; blush; bath and shower gels; shower creams; shower and bath foam; cosmetic preparations against sunburn; sun-block lotions; sunscreen lotion; sunscreen cream; suntan lotions; suntan creams; shaving lotions; shaving creams; shaving foam; cosmetic preparations for eyelashes; nail care preparations; toilet water; beauty gels; cosmetic nourishing creams; lotions for cosmetic purposes; cosmetic rouges; mask pack for cosmetic purposes; nail varnish for cosmetic purposes; bath powder [cosmetics]; bath oils for cosmetic purposes; cosmetic white face powder; cosmetic sun milk lotions; cosmetic sun oils; sun-tanning preparations [cosmetics]; astringents for cosmetic purposes; skin milk lotions for cosmetic purposes; cosmetic skin fresheners; cosmetic foundation; cosmetic face powder; cosmetic pencils; cosmetic dyes; oils for cosmetic purposes; cosmetic bath salts; cleansing creams [cosmetic]; cosmetic creams; make-up powder; cosmetic hand creams; perfume oil for cosmetic purposes; make-up removing preparations; cosmetic kits; incense; perfumery; bases for flower perfumes; vanilla perfumery; peppermint oil [perfumery]; aromatics for use in automobiles; oils for perfumes and scents; perfume; liquid perfumes; deodorant for personal use; fragrances for personal use; cakes of toilet soap; shaving soap; bath soaps; liquid soap; beauty soap; body cream soap; soaps for personal use; perfumed soap; cosmetic soaps; shampoos; liquid bath soaps; shampoos for pets; baby shampoo; hand cleansers; hair rinses; cosmetic skin lotions; essences (beauty concentrates); depilatories (cosmetics); hair conditioners; hair tonic for cosmetic use; hair colorants; hair creams; hair spray; cleansing milk for toilet purposes; complex perfumery; amber [perfume]; blended perfumery; natural perfumery.
Class 05: Deodorants for clothing and textiles; fabric deodorising preparations; deodorants for interior decoration; deodorants for carpet and sofa; fungicides; pesticides; deodorants other than for human beings or for animals; balms for medical purposes; detergents for medical purposes; medicinal hair growth preparations; air purifying preparations; breath freshener for medical purposes; medicinal preparations for the mouth; air deodorising preparations; hair growth stimulants; medicated soap (other than for medical purposes).
Class 03: Cosmetics; cosmetic creams; eyebrow cosmetics; shampoos; cleansing milk for toilet purposes; cosmetic preparations for baths; soap; beauty masks; cosmetic preparations for sliming purposes; cosmetic preparation for skin care; essential oils; cleaning preparations; toiletries; cosmetic pencils; cosmetic kits; make-up preparations; dentifrices; lotions for cosmetic purposes; doching preparations for personal sanitary or deodorant purposes [toiletries]; collagen preparations for cosmetic purposes; air fragrancing preparations; bath preparations, not for medical purposes; perfumes; herbal extracts for cometic purposes.
Statutorily, the applicant is entitled to file a response to the Cambodia IP Office’s refusal within 60 days (extendable one time only for another 60-day period) upon receipt of the Notification of the refusal thereof from the International Bureau by submitting a petition to the Cambodia IP Office to request this office to revoke its refusal. Generally, the applicant of an IRDC may overcome a provisional refusal based on a prior mark by taking the following options: (i) arguing on the dissimilarity between the mark at issue and the citation, (ii) seeking for a Letter of Consent from the owner of the citation or (ii) taking 5-year non-use cancellation against the citation in case the citation is found non-used in Cambodia for the past 5 years.
Taking the proposed mark and the cited one into consideration, as instructed by HB Group, we filed a response to the Cambodia IP Office, rendering arguments on dissimilarities on trademark structure/representation, trademark pronunciation and trademark meaning made by each mark. In details:
|The applied-for trademark||The cited trademark|
|The word “consensus” has only 9 letters, i.e. /c-o-n-s-e-n-s-u-s/, is pronounced into 3 syllables as follows: /kən´- sen – səs/||The word “CONSCIENTIOUS” has 13 letters, i.e. /C-O-N-S-C-I-E-N-T-I-O-U-S/, is pronounced into /kɔn – ʃi´- en – ʃəs/|
From the above table, it can be seen that the client’s mark is different from the cited mark in (i) trademark structure and presentation; (ii) trademark pronunciation and (iii) trademark meaning. In addition, our further analysis is made on the designated goods in Classes 03 and 05 as compared to the goods bearing the cited mark. In respect of this, it is widely known that, the main purpose of the goods (cosmetic related products) in Class 03 is to make the users becomes more beautiful. Meanwhile, the goods in Class 05 which are mainly “pharmaceutical products” are used to cure, treat, or prevent disease/illness which relates to the “patient health”. Further, our client’s mark comprises the “Korean characters”, making it be more distinctive from the cited mark. Detailed analysis on different structure/representation, trademark pronunciation and trademark meaning given by the two marks in question has been particularly made and stressed in our response. Based on our analysis on dissimilarities of the marks in question, we emphasized that likelihood of confusion on the commercial origin of services bearing the said marks cannot be established.
Having reviewed our response, the Cambodian DIP found that our arguments are rooted and convincing, as such, annulled Provisional Refusal Notification No. 2020/16591 dated 23 July 2020 and approved protection for the mark “” under International Trademark Registration No. 1393221 in the name of HB Global Co., Ltd. in Cambodia.
- The Cambodia IP Office has a propensity to perform a relatively stringent analysis and does not take adequate account of all relevant factors and circumstances in each particular case, resulting in unnecessary and unconvincing refusal of trademarks.
- Generally, to assess the relevance of an earlier trademark right as a ground for refusal, the examiner must take into account both (i) the marks in conflict and (ii) the specifications of goods/ services covered by those marks. In this regard, it is critical to compare the marks and the corresponding goods/services to ascertain whether they are close enough to cause prejudice to the holder of the earlier right and confusion to the buying public. When comparing the similarity of the marks, the question of confusion must be answered by comparing the marks as wholes. This requires that all the relevant circumstances be taken into consideration in a single global assessment, meaning all factors need to be weighed.
- If the goods/services bearing the marks in question are identical or similar, arguments and analysis should center on working out the differences between the applied-for mark and the citation to refute the finding of confusion by the examiner. Comparison should include all the elements (i.e. verbal and figurative elements) in the marks. The likelihood of confusion must therefore be assessed globally, taking into account of all factors applicable to the circumstances of the case. That global assessment of the visual, aural or conceptual similarity of the marks concerned must be predicated on the overall impression provided by the marks, being mindful that the particular distinctive and dominant components contained in this mark may prevail over others, thus making the marks at issue be perceived and memorized in different ways by the consumers.
- While comparing two marks to assess likelihood of confusion, the distinctive strength of the elements (the prominent element) contained in the marks must be taken into account. In assessing a purely figurative mark with a composite mark (including words and device), it is significant that more emphasis should be placed on the word element. Words are naturally more memorable. In such perspective, the word element in a composite mark always plays a key role in helping customers memorize such mark and prevails over the figurative element because consumers will tend to read and retain the word(s) rather than the accompanying visual elements. In this context, despite similarities in certain aspects found in a purely figurative mark and with a composite mark, such similarity cannot sustain a finding of likelihood of confusion.
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