KIPI Trademark Rulings
In Re Trademark Application Number (T.M.A) No 111471 in the name of Dingtalk Holdinhg (Cayman) Limited, 30th May 2024
Facts
On 18 March 2202 Dingtalk Holding (Cayman) Limited (the Applicant) filed an application to register the mark below T.M.A No 111471. The application was filed in respect of goods in classes 9, 35, 38, 41, 42, 44 and 45 of the International Classification of Goods and Services
On 7th Octber 2020, the trdaemark examiner issued a refusal notice rejecting the Applicant’s application because it was similar to another trademark that existed on the Trade Marks Regsiter T.M.A No 99308 below, The proprietor of the mark Shenzhen First Element Technology Co Ltd registered the mark in respect to class 9 (Smartphones; Tablet computers; Satellite navigational apparatus; Encoded identification bracelets, magnetic; phone straps; navigational instruments; mobile phones; Telephone apparatus; Laptop computers; Notebook computers)
On 11th December 2020, the Applicant filed a written submission in response to the Trade Mark Examiner’s refusal notice arguing that the proposed trademark was already accepted in several jurisdictions around the world — The E.U, Morocco, The Philippines and Costa Rica. Furthermore, they argued that there was ‘a significant difference because the cited mark is a word and device while the Applicant’s trade mark is a word in Chinese characters.
The examiners refusal was based on the grounds that the Applicant’s mark when translated is Ding Ding which means Nail in english. Which is similar to the cited mark which has ‘DING DING’ and an image.
Issue
Whether the proposed trademark by the Applicnat was identical or similar in appearnce to the cited Trade Mark?
Whether there was similarity in the goods?
Rule
Section 15 of the Trade Marks Act - Subject to subsection (2) no trade mark shall be registered in respect of any goods or description of goods that is identical with or nearly resembles a mark belonging to a different proprietor and already on the register in respect of the same goods or description goods, o rinrespect of services is identical or nearly resembles a mark belonging proprietor and already on the register in respect of the same services or description of services’
Analysis
Similarity of appearance
In determining the similarity of appearance of the marks, the Assistant Registrar of Trade Marks reasoned and emphasised that from the perspective of the average Kenyan consumer the marks would not be visually similar. The average Kenayn cosnumer is likely to recognise the Applicant’s mark as characters of a foreign script, and may not be capable of pronouncing nor understanding the meaning of said mark. Which makes the marks conceptually dissimilar.
Similarity of the goods
The Assistnat Registrar noted that the Applicant’s application speed across seven classes (9, 35, 38, 41, 42 44 and 45) while the cited mark was registered only in class 9. Though there was conflict for class 9 there was no conflict for the other classes. Due to the limited overlap in product categories, and the fucntional differences in most classes, the Assistnat Regsitrara held it was unlikely that consumers would be confused or misled as to the origin of goods, a key function and objective of Trade Marks.
Conclusion
The Trade Mark’s examiner’s refusal notice dated 7th October 2020 was revoked; an dthe Applicants registration of T.M.A No 111471 was allowed to proceed to publication in the Industrial Property Journal.
Ruling available here.