Trade Marks Committee Country Report – Hong … · 2014-01-26 · Trade Marks Committee Country Report – Hong Kong ... scouring and abrasive preparations” in Class 3, but not

P:\Temp\Peggy Cheung\APAA Trademarks Report 2013.docx 1

Trade Marks Committee Country Report – Hong Kong

By

Peggy Cheung, Chloe Lee and Barry Yen

I. Legislative Change and Trade Marks Registry Practice

There was no significant legislative change or proposed legislative change affecting trade marks and the practice of the Trade Marks Registry during the last 12 months.

The most significant changes to the practice of Trade Marks Registry is the adoption of the 10th Edition of the Nice Classification, including the new classification and its impact on the Trade Marks Registry’s cross-search list of identical or similar earlier registered trademarks and applications, which were already reported in the last APAA Trade Mark Committee.

II. 2013 Cases

Many decisions have been rendered in the last 12 months on different trade mark issues. Brief summaries of the more notable cases, as grouped by the nature of the findings, are stated below:-

1. Registrability of trademarks

i. “i-Lash” Applicant: Allergan, Inc. Classes: 16, 44 The applicant filed an application to register the mark “i-Lash” in classes 16 and 44, but was rejected by the Trade Marks on the basis that the mark is descriptive and indistinctive when used in relation to the applied-for goods which include printed materials


with coverage on eyelash growth formula in Class 16 and the applied-for services relating to the provision of information concerning facial aesthetics, including eyelash aesthetics in Class 44.

ii. “TRAVELLER”, ,“Traveller”, “traveller” Applicant: Societe Parisienne de Parfums et Cosmetiques Classes: 3 The applicant applied to register a series of three marks “TRAVELLER”, ,“Traveller” and “traveller” in class 3, but was (partially) rejected by the Trade Marks Registry on the basis that they are devoid of any distinctive character and that the subject marks consist exclusively of signs which may serve, in trade or business, to designate the characteristics of the goods applied for. The Registry considered that the subject marks are acceptable in respect of “bleaching preparations and other substances for laundry use; polishing, scouring and abrasive preparations” in Class 3, but not for “cleaning preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; body lotions and creams; shower gels” in the same class.

iii. Applicant: World Trade Centers Association, Inc. Classes: 35, 38, 41, 42, 43 The applicant applied to register the mark above in class 35, 38, 41, 42 and 43, but was rejected by the Trade Marks Registry on the basis that the mark is merely a representation of a world map. The relevant consumers are likely to perceive the Subject Mark as indicating that the applied-for services relate to or are provided by a global service provider engaging in international trade or worldwide business. It is devoid of any distinctive character and cannot serve as an indicator of trade origin.

iv. “WORLD TRADE CENTER” Applicant: World Trade Centers Association, Inc. Classes: 35, 38, 41, 42, 43


The applicant applied to register the mark above in class 35, 38, 41, 42 and 43. The mark was rejected on the basis that it conveys the message of a place where activities and services relating to international trade are concentrated. The mark is made up of three ordinary English words “WORLD”, “TRADE” and “CENTER” in plain font. The words are presented in capital letters of the same size. The word “WORLD” carries the meaning of the earth or public in general; whereas the word “TRADE” refers to the act or process of buying, selling or exchanging commodities and the word “CENTER” means the place at which some specified activity is concentrated or a platform which facilitates some specified activity. There are no other added elements or stylization.

v. “BLACK CARD EXCLUSIVE REWARDS” Applicant: Black Card, LLC Classes: 35, 36, 39 and 45 The application was rejected on the basis that the mark consists of four ordinary English words, namely, “BLACK CARD EXCLUSIVE REWARDS” which can be taken to mean the exclusive rewards offered by a card in black colour. Upon seeing the mark “BLACK CARD EXCLUSIVE REWARDS” used on the applied-for services, the relevant consumers would have the instantaneous impression that the services provided relate to rewards offered to a particular individual or group by a customer card or credit card in black colour.

vi. “BLACK CARD BUSINESS” Applicant: Black Card, LLC Classes: 35, 36, 43 and 45

vii. “BLACK CARD BENEFITS” Applicant: Black Card, LLC Classes: 35 and 36

viii. “BLACKCARD REPORT” Applicant: Black Card, LLC Classes: 16 and 41


ix. Applicant: Black Card, LLC Classes: 35, 36 and 45

x. Applicant: Black Card, LLC Classes: 35, 36, 43 and 45 Black Card, LLC (“the applicant”) also applied to the Trade Marks Registry for the registration of the trademarks in (vi)-(x) above. However, these applications were rejected for the similar reasons given in the case of “BLACK CARD EXCLUSIVE REWARDS” (i.e., (v) above).


2. Revocation

i. “ ” Owner: Lafayette Company Limited Applicant: Societe Anonyme des Galeries Lafayette Registration No.: 199703862 Class: 18 On 7 July 2008, the Applicant applied to the Registrar of Trade Marks to revoke the registration of the trade mark in class 18 under the Trade Marks Ordinance (Cap. 559) on the ground of non-use. The trade mark is registered in the name of Lafayette Company Limited. The Registrar was satisfied that between 5 November 2003 and 6 July 2008, the owner or Life Power Limited had not resumed use of the suit mark in relation to ladies’ handbags in Hong Kong so that the suit mark cannot be saved from being revoked. The evidence considered by the Registrar included the followings: - The owner ceased its business activities under the name “Lafayette” on or about 26

February 2004 and became a dormant company as from 11 May 2004;

- The owner alleged that the trademark had been assigned to another company, Life Power Limited. Although the printout of the website of Life Power Limited downloaded on 31 October 2007 describes that Life Power Limited’s retail arm is “Lafayette”, the business history column on the website ended with 2002, and the copyright notice in this website is marked with the year 2003;

- From the website and records evidence provided, the Registrar is of the view that Life Power Limited is a trading company;

- Some calendar cards of Lafayette Co Ltd were produced at the hearing. The calendar cards for 2007 and 2008 only show an address in Guangzhou without any Hong Kong address at all;


- There were also cash sales memos and photographs of the products produced at the

hearing. However, not all the submitted cash sales memos have product descriptions. For those with product descriptions, some are related to socks, wallets, key bags, shoes, bags, bracelet and belt, not all related to ladies’ handbags. The addressees of all the cash sales memos are left in blank and thus unknown. On a balance of probabilities, the Registrar was not convinced that the products mentioned in the cash sales memos were ladies’ handbags bearing the suit mark.

ii. Owner: Lafayette Company Limited Applicant: Societe Anonyme des Galeries Lafayette Registration No.: 199703861 Class: 25 The applicant in the above case (i) also applied to the Registrar to revoke the registration of the trade mark in class 25. The Registrar found in favour of the applicant and revoked the trademark based on the same reasons given in the case above.

iii. Owner: HealthCorp Trading Limited Applicant: Laboratoire Nuxe Registration No.: 300219951 Class: 3 The applicant applied to the Registrar of Trade Marks on 22 September 2009 to revoke the registration of the trade mark “Bio-Beauty” in class 3 under the Trade Marks Ordinance (Cap. 559) (“the Ordinance”) on the ground of non-use. The Registrar was of the view that the evidence contains nothing which can show that the subject mark had, since the date of registration, been used on or in relation to any goods listed in the specification other than face care preparations. The use by the registered proprietor on face care preparations partly saves the registration. The registration of the subject mark is to be revoked


for all goods save for face care preparations.

3. Application for Declaration of Invalidity of Trade Mark

i. “ ” Owner: Pigeon Corporation Applicant: Pigeon Kabushiki Kaisha (Pigeon Corporation) Registration No.: 300121346 Class: 3 The Applicant filed an application under section 53 of the Trade Marks Ordinance (Cap. 559) for a declaration of invalidity of the registration of the above trade mark on various grounds including: - the registration of the trade mark was made in bad faith (section 11(5)(b)); - the use of the trade mark is likely to cause confusion on the part of the public

(section 12(3)); - the trade mark is identical or similar to an earlier trade mark, but for different

goods or services (section 12(4)), and - passing off (section 12(5)(a)). The Applicant claims use of the following as its house mark (“Applicant’s House Mark”):

The Applicant’s House Mark has been registered in over 60 countries. The Applicant also had ten trade mark registrations in Hong Kong covering goods in Classes 3, 8, 9, 10, 16, 20, 21 and 28, two of which are for the word “PIGEON” and the rest for the Applicant’s House Mark. Among these, the earliest registration relates to the word “PIGEON” that is registered in respect of nursing appliances, nursing bottles and teats in Class 10, the application for which was filed in 1973. The Heart Device is disclaimed in all the registrations for the Applicant’s House Mark. For the purpose of section 12(3) of the Ordinance, the


registration of the Applicant’s House Mark in relation to goods in Class 3 is the most relevant (“Earlier Mark”). The Registrar held that the word “pigeon” does not describe any characteristic of the Class 3 goods for which the Earlier Mark is registered. It is therefore inherently distinctive. On top of this, the Applicant’s evidence demonstrates that there has been extensive use of the Earlier Mark on the goods it is registered for a very long period of time (for example, the Earlier Mark was used in Hong Kong since the late 1960s, advertisement in newspaper was made in 1975). Distinctiveness of the Earlier Mark is thus significantly enhanced by such use. According to the law, there is a greater likelihood of confusion where the earlier trade mark has a highly distinctive character either per se or because of the use that has been made of it. In light of the high degree of similarity between the two marks, and the identity or high similarity shared by the goods of the respective marks, there is a great likelihood that the relevant consumers will be confused if both marks are used on the market. The Registrar thus concluded that the ground of invalidation under sections 53(5) and 12(3) of the Ordinance has been made out on the basis of the Earlier Mark.

ii. Owner: United Kingdom Kent & Giever International Fashion Company Ltd. Applicant: LiFung Trinity Management (Singapore) Ptd. Ltd. Registration No.: 300953550 Class: 25 The Applicant filed an application under section 53 of the Trade Marks Ordinance (Cap. 559) for a declaration of invalidity of the registration of the above trade mark on the following grounds: - the registration of the trade mark is likely to deceive the public (section 11(4)(b)); - the use of the trade mark is prohibited in Hong Kong (section 11(5)(a)); - the registration of the trade mark was made in bad faith (section 11(5)(b)); and - the use of the trade mark is likely to cause confusion on the part of the public

(section 12(3)). The Applicant has a number of registered trademarks in Hong Kong including the followings:


According to the records, the trademark, “Kent & Curwen” was registered in Hong Kong in 1991. The Applicant has also registered these trademarks in various countries including, Australia, China, Europe, Taiwan, the United Kingdom and the United States. The Applicant has also shown that these trademarks have been in use during 2005 and 2009. In addition, the Applicant has expended substantial amounts to advertise the trademarks in Hong Kong. The Applicant also submitted that it had succeeded in lodging a complaint to the Administration for Industry and Commerce of the People's Republic of China (“the AIC”) in relation to the infringing activity of the Owner. The AIC then conducted raid action against the Owner and confiscated a large amount of garment products bearing the “K&G”, “KENT & GIEVER” and the Three Lions pattern.


The Registrar held that the existence of the Applicant’s trademarks were known to the Owner at the date of filing its trademark application. By submitting a trademark application that is similar to the Applicant’s, it intended to benefit from the Applicant’s reputation. In addition, the Owner had deliberately imitated KENT&CURWEN in a number of ways, for example, their goods, packaging and store design with an attempt to mislead the consumers to think that their goods are associated with the Applicant’s. There is no doubt that such acts would be regarded as bad faith. On this basis, the Registrar held that the registration of the trademark is contrary to section 11(5)(b). The Registrar thus declared that the trademark is invalid in accordance with sections 53(2) and 11(5)(b) of the Ordinance.

4. Trademark Opposition

i. Mark: “ ” Applicant: MIP Metro Group Intellectual Property Gmbh & Co. Kg Opponent: Watson Enterprises Limted Classes: 9 and 11 The Applicant sought to register the mark “WATSON” in classes 9 and 11. The Opponent is A.S. Watson & Co., Limited which is a main corporate entity of the retail and manufacturing business of Hutchison Whampoa Limited, holding a group of wholly owned or associated companies (of which the Opponent is one) for its global operations and business, including the business in Hong Kong (“A.S. Watson Group”). The Opponent has various trademarks in Hong Kong including “WATSON’S” and “WATSONS”. The Opponent opposed the registration of the applied for mark on the following grounds: - the use of the trade mark is likely to cause confusion on the part of the public

(section 12(3));

- the trade mark is identical or similar to an earlier trade mark, but for different goods or services (section 12(4)), and

- passing off (section 12(5)(a)). The Registrar held that there has been no prior use of the applied for mark in Hong Kong. Therefore, honest concurrent use is out


of reach of the Applicant. On the facts, there does not appear to be any special circumstances that would render it proper for the applied for mark to be registered. Further, since the Opponent has established all three elements of a passing off action and the Applicant cannot rely on honest concurrent use, the opposition under section 12(5)(a) of the Trade Marks Ordinance is successful.

ii. Mark: Applicant: Wang Quan Meng Opponent: Gado S.R.L. Classes: 18 and 25

Opponent’s Marks: and The Registrar did not accept the Applicant’s allegations that the applied for mark was prepared and designed by him and that he did not copy or imitate the Opponent’s trade mark. The Registrar was of the view that the Applicant had copied the Opponent’s trademarks. The reasons why the Applicant applied for registration of the applied for mark was to take advantage of the Opponent’s reputation thereby increasing the sale of his own products. The Applicant may intend to deceive or mislead the consumers into believing that the Applicant’s goods belong to or associate with the Opponent. Based on the evidence, the Registrar considered that the application was made in bad faith. The Registrar held that the opposition under section 11(5)(b) of the Trade Marks Ordinance has been made out.

iii. Mark: Applicant: Pang Hao Opponent: (1) Toyo Boseki Kabushiki Kaisha; (2) Itochu Shoji Kabushiki Kaisha and (3) Kabushiki Kaisha Desanto


Class: 25 Opponent’s Marks:

(1)

(2)

(3)

(4)

The Registrar held that there is a high degree of similarity between the applied for mark and the Opponent’s Mark (3). In addition, since both parties’ goods are completely identical, the Registrar was of the view that when the applied for mark is used on the Applicant’s goods in normal and fair circumstances, the general consumer or the public would be very likely confused with the source of goods and would be misunderstood that the goods are provided by the Opponent or provided by an entity that is associated with the Opponent. In light of the likelihood of confusion by the general consumers or the public caused by the use of the suit mark, the Registrar held that the opposition under section 12(3) of the Ordinance has been made out.

iv. Mark: Applicant: Xiang En Fu Opponent: Giorgio Armani S.p.A., Milan, Swiss Brach Mendrisio Classes: 18 and 25

Opponent’s Marks:

(1)

(2)


(3)

(4)

The Registrar held that the opposition under section 12(3) of the Ordinance was made out because when the Applicant use the applied for mark on his goods, it is likely to cause confusion to the general consumers or mislead the public into believing that the goods belonged to or are associated with the Opponent, particularly where the Applicant’s goods are substantially identical to those of the Opponent.

v. Mark: Applicant: Guangzhou Hua Du District A Di Ma Ni Leather Factory Opponent: Giorgio Armani S.p.A., Milan, Swiss Brach Mendrisio Class: 18

Opponent’s Marks:

(1) (2)

(3)

Similar to the case in (iv) above, the Registrar held that the opposition under section 12(3) of the Ordinance was made out.

vi. Mark: Applicant: Zhu Hua Jun Opponent: Guccio Gucci S.P.A.


Classes: 3, 8, 9, 14, 18, 25, 35 Opponent’s Marks:

The Registrar held that the opposition under section 11(5)(5) of the Ordinance was established. In particular, the Registrar was of the view that the application was made in bad faith. The Opponent is an international renowned brand and has carried out its business in Hong Kong for over 35 years. There is an overlap between the business of the Applicant and the Opponent. Therefore, the Applicant should have been aware of the Opponent’s trademarks and business. In addition, there is a high degree of similarity between the applied for mark and the Applicant’s trademarks. Such a degree of similarity cannot be regarded as a coincidence, particularly when the Opponent failed to explain how he came up with the design. Therefore, it is believed that the Applicant intended to copy the Opponent’s trademarks with the aim of benefiting from the reputation of the Opponent or to cause confusion to the normal consumers into believing that his goods are from the Applicant or are associated with the Applicant thereby increasing the sale of his products.

vii. Mark: Applicant: Wang Zhen Xuan Opponent: The Polo/Lauren Company, L.P. Classes: 25 Opponent’s Marks:

The Opponent opposed to the present trademark application according to sections 11(1)(a), 11(5)(b) and 12(3) of the Trade Marks Ordinance (“the Ordinance”).


The Registrar considered that the application to register the applied for mark was made in bad faith for the following reasons. Firstly, the Applicant did not provide any explanations as to why there is the word “POLO” in the central of the trademark and why such a word is in a larger size than those surrounding it. Apparently, the Applicant intended the word “POLO” to be a dominant and obvious element of the trademark. However, the Applicant was not able to explain why he had chosen the word “POLO” as the dominant element but not “SUEN” or “1962”. In addition, the pattern of the polo player and the horse in the applied for mark clearly resemble that of the Opponent’s mark. Furthermore, the class that the Applicant applied as class 25 which was identical to those of the Opponent’s mark. Based on the above, the Registrar concluded that the only reasonable explanation that can be given is that by applying for the registration, the Applicant intended to benefit from the reputation of the Opponent. Therefore, such an application was made in bad faith.

viii. Mark: Applicant: Chen Yu Bao Opponent: The Polo/Lauren Company, L.P. Classes: 18, 25 Similar to the opposition in case (vii) above, the Registrar held that the opposition under section 11(5)(b) of the Ordinance was made out. In particular, the Registrar was of the view that the application was made in bad faith.

ix. Mark: Applicant: Li Min Lian Opponent: Guangdong Midea Electric Appliances Co., Ltd. Class: 5

Opponent’s Marks: 美的

Midea


(1) (2) (3) The Opponent, established in 1968, has been in the business of home appliance, real estate, logistics and other areas. The Opponent has two listed companies and four major companies. It is also the largest home appliance production company in China. At present, it has nearly 80,000 employees and is in possession of more than 10 different brands including Midea which is the subject of the current opposition proceedings. Other than China, the Opponent has 21 branches, around the world including the United States, and Germany, and Canada and the United Kingdom, and France, and Japan, and Korea and Hong Kong. The Opponent is the registered owner of the trademarks shown above. The Opponent opposed to the trademark application according to sections 11(5)(b), 12(4) and 12(5)(a) of the Trade Marks Ordinance (“the Ordinance”). The Registrar held that there is only a limited degree of similarity between the Opponent’s mark and the applied for mark and found that the bad faith ground has not been made out. Although the Opponent has a good reputation, since it fails to adduce any evidence on how the use of the applied for mark will constitute an unfair use of the reputation of the Opponent’s marks, the Registrar held that relative ground of opposition must also fail. Although under the law of passing off, there is not any requirement that the business or the products of the Applicant and the Opponent must be similar, this is certainly a factor that needs to be considered. If the parties’ business are not related to each other, the Opponent must show that the consumers or the public are likely to be deceived or misled by the applied for mark. In the present case, since the parties’ business are totally different, the normal consumers would not consider the goods that bear the suit mark are from or associated with the Opponent. On this basis, the Opponent fails to establish the ground of passing off. In light of the above, the Registrar held that the opposition proceedings must fail.

x. Mark: Applicant: Li Min Lian Opponent: Guangdong Midea Electric Appliances Co., Ltd.


Class: 14, 30, 32, 33 Similar to the opposition made in case (ix) above, again the Registrar held that the opposition was not made out.

5. Court Cases

i 蓮香茶樓及餅家 (a firm) v 廣州飲食服務企業集團有限公司 [2013] HKCFI 1393; CMP133/2008 (transliterated as “Lian Xiang Tea House and Bakery (a firm) v Guangzhou Food and Beverage Service Co. Ltd.)

Background The applicants’ grandfather (“CFN”) was one of the founders of GZ Lianxiang, which was founded in 1910 in Guangzhou. GZ Lianxiang was founded to take over a bakery business originally called 連香樓 (transliterated as “Lian Xiang Lou”), the name of which was changed to 蓮香樓 (also transliterated as “Lian Xiang Lou”, but the first word of the name is changed to “蓮” meaning Lotus) due to the excellence of its cakes and pastries made of lotus seed paste. GZ Lianxiang marketed in Guangzhou its mooncakes with lotus seed paste filling in a square packaging box. The box has a distinct presentation of a mark, “蓮香” (transliterated as “Lian Xiang) (Note: this mark was registered in 1996 in Hong Kong under the Trade Mark Registry No. 1997 B10376 (“the suit mark”) upon the application of Guangzhou Lianxiang Lou (“GZ Lianxiang”) which was the predecessor of the respondent) and the Guangzhou addresses of GZ Lianxiang on the cover. There are also descriptions on two of the sides of the box indicating that the mooncakes are of GZ Lianxiang. CFN together with 70 other shareholders of GZ Lianxiang founded the applicants’ tea house business under the trade name of 蓮香茶樓 (transliterated as “Lian Xiang Tea House”) in Hong Kong on 27 October 1928. GZ Lianxiang was nationalized in 1957 and became a state-owned company. Since then, GZ Lianxiang and the applicants have no common partner, connection or interflow. The applicants have sold their mooncakes in Hong Kong under and by reference to the trade name of 蓮香 (transliterated as “Lian Xiang”) and a mark which is the same the suit mark. Throughout the years they use a packaging to sell their mooncakes which is almost identical to the packaging used by GZ Lianxiang. The difference is that the applicants’ box cover clearly states its Hong Kong address. The sides of the applicants’ box are also very similar to the GZ Lianxiang box except that they state the applicants as the maker of the mooncakes. Between 1995 and 1996, GZ Lianxiang applied for registration of the suit mark in various countries including the United States, the United Kingdom, France, Germany and Hong Kong and the application was subsequently granted. In 2005, Guangzhou Lianxiang Lou Company Limited (“GZ Lianxiang Ltd”) was incorporated to take over the business of GZ Lianxiang. GZ Lianxiang Ltd was later privatized and a private entity acquired 99% of its shares. The registration of the suit mark was assigned to the respondent in September 2006. In the same year, the applicants applied for registration for two of their trade marks (both bearing the suit mark “蓮香”), but was turned down by the Trade Marks Registry with the citation of the suit mark. Both of the applicants’ trademarks bore the suit mark. The applicants instituted these proceedings in 2008 for a declaration of invalidity of the suit mark


or alternatively an order to revoke it. These proceedings mainly concern the use of the suit mark in the sale of mooncakes in Hong Kong. The applicants rely on three grounds for invalidation and two grounds for revocation. They are :

(i) the respondent registered the suit mark in bad faith under sections 11(5)(b) and 53(3) of the TMO (“Bad Faith”);

(ii) the use of the suit mark by the respondent as at the deemed date of registration of 12 June 1996 was liable to be prevented by the law of passing off under sections 12(5)(a) and 53(5)(b) of the TMO (“Passing Off”); and

(iii) the applicants’ marks were entitled to protection as at the deemed date of registration of 12 June 1996 under the Paris Convention and the respondent’s suit mark was registered contrary to sections 12(4) and 53(5)(b) of the TMO (“Earlier Right”).

The applicants also rely on two grounds for revocation of the registration of the suit mark. They are:

(i) the suit mark has not been genuinely used in Hong Kong for three years prior to the institution of these proceedings on 23 January 2008 and the registration should be revoked under section 52(2)(a) of the TMO (“Non-use”); and

(ii) the suit mark and the goodwill have been separated since October 2006 in that the owner of the suit mark ceased to conduct the business so that the public would be misled about the trade origin of the goods bearing the suit mark. The registration should thus be revoked under section 52(2)(c) of the TMO (“Separation of the suit mark and the goodwill”)

The respondent relies on the defences of statutory acquiescence by the applicants under the TMO (“Statutory Acquiescence”) and honest concurrent use by the respondent from 1984 to the deemed date of registration of the suit mark on 12 June 1996 (“Honest Concurrent Use”). It is not disputed that the applicants do have goodwill in their trade marks and that the trade marks of the applicants are well-known trade marks in Hong Kong within the meaning of the TMO. Although the respondent is prepared to consent to the applicants’ applications to


register their trade marks, the applicants do not seem to be contented with such an arrangement. Honest Current Use, Passing Off and Earlier Right The court accepted that GZ Lianxiang mooncakes had been sold in Hong Kong under the suit mark since 1984. When the respondent used the suit mark, it made it clear that the cakes were of GZ Lianxiang from Guangzhou and not from the applicants which were made in Hong Kong. The price lists and packaging of GZ Lianxiang mooncakes all said prominently that the cakes were of GZ Lianxiang from Guangzhou which can be regarded as an effective means for distinguishing the mooncakes of GZ Lianxiang from those of the applicants. On this basis, the court accepted that consumers who bought GZ Lianxiang mooncakes knew that they were buying Guangzhou mooncakes made by GZ Lianxiang and not mooncakes of the applicants. However, the court accepted the applicants’s submission that if GZ Lianxiang had built up a reputation, it is not a reputation in the suit mark, but in the suit mark in conjunction with the geographical designation of 廣州 (Guangzhou) or the name of GZ Lianxiang 廣州蓮香樓 (Guangzhou Lianxiang Lou). The court stated that if the respondent has been selling mooncakes in Hong Kong from 1982 to 1996 in the cake box pattern or get up as produced, it might only have acquired the goodwill by prolong use of the mark with an identification of the place of making of the mooncakes being Guangzhou. However, the suit mark did not have such identification and hence could result in confusion. It was the identification to Guangzhou that avoided confusion. This was in fact supported by the respondent’s evidence that the packaging box clearly stated that the cakes were from Guangzhou and had the addresses of Guangzhou Lianxiang printed on it which was an effective means for distinguishing GZ Lianxiang mooncakes from the applicants. This amounts to a concession that but for the distinguishing addresses of GZ Lianxiang printed on the box, there would have been confusion. Since the respondent has accepted that the applicants do have goodwill in their trade marks for the purpose of passing off, this concession is inevitable. On this basis, the court held that the mere use by GZ Lianxiang on 12 June 1996 of the suit mark for sale of mooncakes in Hong Kong would have led to confusion of whether such mooncakes were of the applicants. Therefore, there was no honest concurrent use of the suit mark by the respondent under section 13(1)(a) of the TMO. The court declared that the registration of the suit mark is invalid under sections 53(5)(b) and 12(5) of the TMO for the reason of passing off. The court further held that the respondent has not shown any due cause for using the suit mark. Its use of the suit mark will certainly cause confusion to the public and is detrimental to the distinctive character and repute of the applicants. It would also enjoy an unfair advantage of the goodwill of the applicants. Therefore, the court further declared that the registration of the suit mark is invalid under sections 53(5)(b) and 12(4) of the TMO.

ii. Tsit Wing (Hong Kong) Co Ltd v. TWG Tea Co Pte Ltd [2013] HKCFI 1179; HCA2210/2011 (24 July 2013) In these actions, the plaintiffs ( Tsit Wing ) claim against the defendants (TWG Tea) in respect of an alleged trade mark infringement contrary


to s 18(3) Trade Marks Ordinance Cap 559 (TMO), and the tort of passing off. The registered marks relied upon by Tsit Wing are shown below

These marks individually or collectively are refered to as “Tsit Wing’s marks". The signs sought to be used by TWG Tea are:

Tsit Wing, originated as a family business in 1932, is a trader, wholesaler, coffee roaster and tea blender. In 2011, the total gross sales by Tsit Wing were HK$393 million. The acronym TWG was introduced into Tsit Wing’s trade marks in 2006, in the form of the logos seen above. The acronym, TWG, derives from the first letters of Tsit Wing Group. It is Tsit Wing’s case that the acronym has been used extensively and


continuously in various styles of mark since 2006. The whole of the sales of tea and coffee referred to in the previous paragraph carried a logo containing the acronym TWG. In addition, it was said that the trademarks have been used by Tsit Wing in numerous occasions including all the invoices and documents. The defendant was incorporated in Singapore in 2001 and was part of a group known as “The Wellness Group” which had developed business interests in Singapore, Shanghai, Mumbai and Dubai in the lifestyle industry, particularly, tea. In 2008, the company changed its name to TWG TEA COMPANY PTE Ltd, the name being an acronym of the expression “The Wellness Group”. TWG Tea established tea shops in Singapore, London, New York, Tokyo, and in Abu Dhabi airport terminal. In 2011, TWG Tea decided to expand its business into Hong Kong. The Trademark History By November 2007, Tsit Wing had succeeded in registering its mark, in class 30 (which includes both coffee and tea), in Australia, the PRC, Hong Kong, Taiwan, Singapore, and the US. Between March 2010 and November 2010 registration was achieved in South Korea and the Philippines. In 2009, TWG-Tea applied to register its sign as a trade mark in the US, but was unsuccessful because of the likelihood of confusion with Tsit Wing's trademark comprising the acronym “TWG” that had been registered on 28 October 2008. The existence of Tsit Wing's mark as a bar to the registration of TWG Tea's sign was reinforced in June 2010, when TWG Tea sought to obtain registration of its sign in Australia. In March 2010, Tsit Wing had succeeded in obtaining registration of its mark in South Korea. In June 2010, TWG Tea applied to register its sign in South Korea. Once again, Tsit Wing's prior registration was cited against TWG Tea's application. At that time, TWG Tea wished to enter the South Korean market, so TWG Tea sought to have a coexistence agreement in respect of the marks in South Korea. After some negotiation, terms of a coexistence agreement, limited to South Korea, were reached and a formal document signed. However, unknown to the plaintiff, TWG Tea was planning to expand its business into Hong Kong. TWG's infringment In June 2011, TWG Tea set up a company in Hong Kong. In July 2011, TWG Tea entered into a confirmation of sublease with the IFC Mall. TWG Tea operated the tea salon in its name. When Tsit Wing found out about this, it issued a cease-and-desist letter to TWG Tea (and hence these proceedings) alleging that TWG Tea infringed Tsit Wing's mark by using signs which were similar to the registered TWG mark, in relation to goods and services which were identical or similar to the goods and services for which the mark was registered. In particular, Tsit Wing sued TWG Tea for trademark infringment and passing off.


The Court's Ruling On the issue of evidence of confusion, the court relied on, inter alia, the evidence from the trademark registries in various jurisdictions and held that the dominant feature of the mark and the sign, the acronym TWG, are, in the present context, similar. As for the likelihood of confusion, the court also held in favour of Tsit Wing. In particular, it is stated: “Viewing the matter globally, as I am required to do, I am satisfied that the essence of the registered mark is the acronym TWG, and that the use by TWG Tea of that very same acronym as the dominant feature of its sign will inevitably lead to confusion.” As the court is satisfied that TWG Tea has used, in the course of trade or business, a sign which is similar to Tsit Wing’s trademark in relation to goods or services which are similar to those for which it is registered and that TWG Tea’s use of the sign in relation to those goods or services is likely to cause confusion on the part of the public, the court held that TWG Tea has infringed Tsit Wing’s registered trade marks. Further, the court held that the tort of passing off, that of a likelihood of deception, has also been established.

III. Statistics and Performance

The following are the statistics for trademarks applications filed and registered in Hong Kong between 1 July 2012 and 30 June 2013 (“the relevant period”) as released by the Intellectual Property Department:-

Statistics of trademark applications filed and registered in Hong Kong during the relevant period:-

1 July 2012 to 30 June 2013

No. of trademark applications filed 35,433 No. of trademark applications registered

28,689


A monthly breakdown of the trademark applications filed and registered in Hong Kong during the relevant period:-

No. of trademark applications

filed No. of trademark registered

July 2012 3113 1977 August 2012 3221 2092 September 2012 2968 2099 October 2012 2735 2131 November 2012 3171 2686 December 2012 3064 2424 January 2013 2933 2597 February 2013 2163 2009 March 2013 2013 2445 April 2013 3073 2526 May 2013 3154 2874 June 2013 2925 2829

Total 35,433 28,689

3113

1977

3221

2092

2968

2099

2735

2131

3171

2686

3064

2424

2933

2597

21632009

2913

2445

3073

2526

3154

2874 29252829

0

500

1000

1500

2000

2500

3000

3500

Jul-12 Aug-12 Sep-12 Oct-12 Nov-12 Dec-12 Jan-13 Feb-13 Mar-13 Apr-13 May-13 Jun-13

Trade Mark applicationsTrade Mark registered


The number of trademark applications received each month has remained relatively stable during the relevant period.

Based on the number of classes of the applications received since the commencement of the Trade Marks Ordinance Cap. 559 which came into force on 4 April 2003, the average monthly intake of applications has increased from about 1,716 per month under Trade Marks Ordinance Cap. 43 to about 3,970 per month under Trade Marks Ordinance Cap. 559.

Time required for the Trade Marks Registry to issue a response:

99.83% of first responses were issued within two months in June 2013 87.5% of second responses were issued within 3 months in June 2013

Electronic filing in Hong Kong

55,629 online searches conducted in June 2013; 217 registered e-filers 345,738 e-forms filed since the launch of e-filing services (since December 2003).


Documents

Trade Marks Committee Country Report – Hong … · 2014-01-26 · Trade Marks Committee Country Report – Hong Kong ... scouring and abrasive preparations” in Class 3, but not