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TRADE MARKS ORDINANCE (CAP. 559)
OPPOSITION TO TRADE MARK APPLICATION NO. 301417806
MARK :
CLASS :
5
APPLICANT :
CHAINEX LIMITED
OPPONENT : KIMBERLY-CLARK WORLDWIDE, INC.
______________________________________________________________________
STATEMENT OF REASONS FOR DECISION
Background
1. On 1 September 2009 (“Application Date”), CHAINEX LIMITED
(“Applicant”) filed an application (“subject application”) under the Trade Marks
Ordinance (Cap. 559) (“Ordinance”) for registration of the following series of two
marks (collectively, the “subject marks”):
(“subject mark A”)
(“subject mark B”)
Registration of the subject marks is sought in respect of the following goods in Class 5
(“subject goods”):
“Articles for the feminine hygiene made of paper and/or cellulose; Sanitary
napkins; sanitary pads; sanitary towels; sanitary panties; sanitary tampons;
menstruation pads; feminine hygiene antiseptic washes; products for feminine
hygiene; all included in class 5.”
The Applicant claims the colours pink (Pantone no. 213U) and grey as elements of
subject mark B.
2
2. Particulars of the subject application were published on 4 December 2009.
KIMBERLY-CLARK WORLDWIDE, INC. (“Opponent”) filed a notice of opposition
on 2 March 2010 (“Notice of Opposition”) with grounds of opposition (“Grounds of
Opposition”). In response to the Notice of Opposition, the Applicant filed a
counter-statement on 4 June 2010 (“Counter-statement”) with grounds in support of its
application (Grounds for Counter-statement).
3. The Opponent’s evidence consists of a statutory declaration of Lee Hau Yee,
Marketing Manager, Family Care Marketing, of the Opponent, filed on 1 December
2010 (“Lee’s Declaration”).
4. The Applicant’s evidence consists of a statutory declaration of Kuzmicheva
Olga, Manager – Business Development, of the Applicant (“Olga’s Declaration”) filed
on 1 June 2012.
5. The opposition was fixed to be heard before me on 10 September 2014.
Mr. John Chue Choi Cheung of Messrs. JCC Cheung & Co. appeared for the Applicant
at the hearing. The Opponent did not appear at the hearing.
Grounds
6. The Opponent relies on the grounds under the following sections of the
Ordinance:
(a) section 11(1)(a);
(b) section 11(1)(b);
(c) section 11(4)(b);
(d) section 12(2);
(e) section 12(3);
(f) section 12(4);
(g) section 11(5)(a); and
(h) section 11(5)(b).
Relevant date
7. The relevant date for considering this opposition is the Application Date, i.e.
1 September 2009.
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Evidence of the Opponent
8. According to Lee’s Declaration, the Opponent is a wholly owned subsidiary of
Kimberly-Clark Corporation (“Corporation”). The Corporation was initially founded
under the name Kimberly, Clark & Co. in 1872, and was incorporated in Delaware in
1928. According to the Opponent, the Corporation and its predecessors in title,
assignors, assignees, subsidiary companies, affiliate companies and licensees
(collectively, the “Opponent’s Group”) is a manufacturer of tissue, personal care and
health care products with manufacturing facilities in 35 countries and product sales in
more than 150 countries in the world.1
9. The Opponent’s Group is organized into four operating segments, two of
which are (i) the Personal Care segment, which manufactures disposable diapers, baby
wipes, feminine products and incontinence products, including products under the brand
names HUGGIES and KOTEX; and (ii) the Consumer Tissue segment, which
manufactures facial and bathroom tissue, paper towels, napkins and related products for
household use, including products under the brand names KLEENEX, SCOTT,
ANDREX and COTTONELLE.2
10. The Opponent is the owner of the Hong Kong registered trade marks listed in
the Schedule. The Opponent relies in particular on the following marks (collectively,
the “Opponent’s Marks”) in this opposition :
(a) (“Opponent’s Mark A”) registered in Hong Kong as
of 15 September 1976 under Trade Mark No. 19771709 in respect of
“toilet paper having a surface and texture resembling cotton” in Class
16 (“Opponent’s Class 16 goods”); and
(b) (“Opponent’s Mark B”) registered in Hong Kong as of
10 December 1948 under Trade Mark No. 19490752 in respect of
“sanitary napkins, and sanitary belts” in Class 5 (“Opponent’s Class 5
goods”).
11. According to Lee’s Declaration, the Opponent’s Mark A was first used in the
USA in 1972 by the Opponent’s predecessor in title, Scott Paper Company.3 It was
1 Lee’s Declaration, paras 3-4. 2 Lee’s Declaration, paras 6-7. 3 Lee’s Declaration, paras 9-10.
4
first used in relation to dry toilet tissue but was later extended to flushable moist wipes.4
The Opponent claims that the Opponent’s Mark A was first used in Hong Kong in the
early 1970’s.5
12. Included at Exhibit LHY6 to Lee’s Declaration is a copy of the current
packaging used for the COTTONELLE brand in Hong Kong. The packaging is for 12
rolls of toilet tissue, and the mark “ ” in smaller print appears above the
Opponent’s Mark A. Exhibit LHY7 to Lee’s Declaration includes copies of packaging
of products bearing the Opponent’s Mark A used in Australia, the USA and South
America.
13. Exhibit LHY9 to Lee’s Declaration includes a list of territories where the
Opponent’s Mark A is registered. Exhibit LHY10 includes copies of registration
certificates showing registration of the Opponent’s Mark A in Australia, Panama,
Malaysia, Honduras, China, Philippines, Bermuda, Costa Rica, Taiwan, Bolivia, Canada,
Singapore, the USA, Thailand and New Zealand.
14. According to Lee’s Declaration, the Opponent’s Mark A is promoted via the
websites www.cottonelle.com, www.cottonellerollpoll.com and
www.cottonelleinstitute.com as well as via social networking websites such as
www.facebook.com/cottonelle and www.twitter.com/CottonelleBrand.6 Although it is
claimed that the Opponent’s Mark A is heavily promoted in conjunction with the image
of a Labrador retriever puppy in the Opponent’s television advertisements,7 there is no
evidence that these advertisements have been shown in Hong Kong. Paragraphs 19 to
24 of Lee’s Declaration provide details of efforts made by the Opponent’s Group in
promoting and advertising products bearing the Opponent’s Mark A mainly in North
America and Europe. The Opponent states that no advertising figures are available for
the local market in Hong Kong as the Opponent considers that the Opponent’s Mark A
benefits from the marketing and goodwill built up in other territories over the years
(such as in the USA) and there is no need to invest in the brand at a local level.8
15. Set out in paragraph 25 of Lee’s Declaration are annual turnover figures for
products bearing the Opponent’s Mark A in Hong Kong for the years 2005 to 2009.
4 Lee’s Declaration, para.12. 5 Lee’s Declaration, para.10. 6 Lee’s Declaration, para.18. 7 Lee’s Declaration, para.19. 8 Lee’s Declaration, para.26.
5
According to these figures, the average turnover of such products during those years
was around US$30,000 per annum.
16. The Opponent claims that since its launch in the early 1920’s, the Opponent’s
Mark B has acquired extensive reputation and goodwill worldwide for sanitary and
feminine hygiene products.9 An article in 2003 by Advertising Age appearing at
Exhibit LHY11 to Lee’s Declaration described the history of the Opponent’s Mark B
(as a by-product of World War I) which was first used in relation to sanitary napkins in
1920. Printouts from the website http://www.hk.kotex.com/ appearing at Exhibit
LHY12 to Lee’s Declaration show the mark and the Chinese mark
appearing with sanitary napkins products. No sales turnover and no advertising
expenditure figures in respect of products marketed under the Opponent’s Mark B are
given in Lee’s Declaration.
17. The Opponent claims that there is strong visual and phonetic similarity
between each of the subject marks and the Opponent’s Mark A; that there is an overlap
between the subject goods and the Opponent’s Class 16 goods to the extent that the
subject goods are made of paper; that the three letters at the beginning of each of the
subject marks “Kotonella” have a strong resonance with the Opponent’s Mark B; and
that the subject goods are the same as those used and protected under the Opponent’s
Mark B.10
Evidence of the Applicant
18. According to Olga’s Declaration, the Applicant is the proprietor of the subject
marks, which were coined by one of the two directors of the Applicant, Ms Jurgita
Navalinskaite, in or about 2008. According to the Applicant, the idea of the subject
marks was from ‘a “play” of the Spanish/Mexican word “ella”, which has a Spanish
dictionary meaning as personal pronoun meaning “she”’, and the invented word
“koton”, which had no dictionary meaning whether in English, Spanish or Mexican and
which was ‘a “play” of the Spanish word “cotón” meaning printed cotton, as a fabric
or material’.11
19. According to the Applicant, the subject marks have been designed for branding
9 Lee’s Declaration, para.17. 10 Lee’s Declaration, paras 30-32. 11 Olga’s Declaration, para.4.
6
purposes, and have been used in respect of the subject goods, especially sanitary
napkins, which are exclusively for women.
Opposition under section 11(1)(a) and (b) of the Ordinance
20. Section 11(1) of the Ordinance provides, inter alia, as follows :
‘Subject to subsection (2), the following shall not be registered-
(a) signs which do not satisfy the requirements of section 3(1) (meaning of "trade
mark");
(b) trade marks which are devoid of any distinctive character; ….’.
21. Section 11(2) of the Ordinance provides as follows :
‘A trade mark shall not be refused registration by virtue of subsection (1)(b), (c) or
(d) if, before the date of application for registration, it has in fact acquired a
distinctive character as a result of the use made of it.’
22. Section 3(1) of the Ordinance provides as follows :
‘In this Ordinance, a "trade mark" (商標) means any sign which is capable of
distinguishing the goods or services of one undertaking from those of other
undertakings and which is capable of being represented graphically.’
23. The Opponent claims that:
(a) registration of the subject marks would be contrary to section 11(1)(a) of
the Ordinance because each of the subject marks is a sign not capable of
distinguishing the Applicant’s goods from the goods of others, namely, it is
not capable of distinguishing the Applicant’s goods from the goods of the
Opponent; it therefore does not satisfy the requirements of section 3(1) of
the Ordinance;12 and
(b) registration of the subject marks would be contrary to section 11(1)(b) of
the Ordinance because each of the subject marks is devoid of any
distinctive character.13
12 Grounds of Opposition, para. 13(a). 13 Grounds of Opposition, para. 13(b).
7
24. I first consider the ground of opposition under section 11(1)(b) of the
Ordinance.
25. The relevant principles have been referred to in the case of Host Hotels &
Resorts, L.P. v. Registrar of Trade Marks [2010] 1 HKLRD 541:
‘17. In British Sugar Plc v James Robertson & Sons Ltd [1996] R.P.C. 281
Jacob J (as he then was) said at page 306:
“What does devoid of any distinctive character mean? I think the phrase
requires consideration of the mark on its own, assuming no use. Is it the
sort of word (or other sign) which cannot do the job of distinguishing
without first educating the public that it is a trade mark?”
18. In Nestle SA’s Trade Mark Application (Have A Break) [2004] F.S.R. 2
Sir Andrew Morritt VC (as he then was) said at paragraph 23:
“The distinctiveness to be considered is that which identifies a product as
originating from a particular undertaking. Such distinctiveness is to be
considered by reference to goods of the class for which registration is
sought and consumers of those goods. In relation to the consumers of
those goods the court is required to consider the presumed expectations
of reasonably well informed, and circumspect consumers. For my part I
would particularly emphasise that the relevant distinctiveness is that
which identifies a product as originating from a particular
undertaking……”’
26. Each of the subject marks consists of the word “Kotonella” which has no
dictionary meaning. It does not have any meaning in relation to the subject goods
other than as a badge of trade origin. When used in relation to the subject goods, the
average consumer would perceive each of the subject marks as indicating that those
goods originate from a particular undertaking, thereby distinguishing them from the
goods of other undertakings. Each of the subject marks is therefore not devoid of any
distinctive character within the meaning of section 11(1)(b) of the Ordinance. The
ground of opposition under section 11(1)(b) is not made out.
27. I turn to consider the ground of opposition under section 11(1)(a) of the
Ordinance.
8
28. To be free from objection under section 11(1)(a), a sign must come within the
meaning of “trade mark” under section 3(1) of the Ordinance,14 i.e. it must be
(i) capable of distinguishing the goods or services of one undertaking from those of
other undertakings and (ii) capable of being represented graphically.
29. Whereas section 11(1)(a) of the Ordinance15 is an overriding provision which
prevents registration of a mark which is so descriptive or so lacking in content capable
of performing the function of a trade mark that it cannot be registered, from section
11(2), it is apparent that section 11(1)(b) prevents from registration, without proof of
distinctiveness, trade marks which are not so wholly lacking in trade mark content as to
be registrable at all but which, without evidence of use, do not display a sufficiently
distinctive content.16
30. Each of the subject marks is represented graphically. I have already found that
each of the subject marks is not objectionable under section 11(1)(b) of the Ordinance.
Each of them can, without use, do the job of distinguishing the Applicant’s subject
goods from those of other undertakings. The subject marks therefore satisfy the
requirements of section 3(1) of the Ordinance (see paragraph 28 above). The ground
of opposition under section 11(1)(a) of the Ordinance is not made out.
Opposition under section 11(4)(b) of the Ordinance
31. Section 11(4) of the Ordinance provides, inter alia, that :
“A trade mark shall not be registered if it is –
… (b) likely to deceive the public.”
32. The Opponent alleges that because the subject marks copy the Opponent’s and
would be perceived as a trade mark of the Opponent, the goods covered by the subject
application would be perceived to originate from the Opponent when in fact they do not;
registration of the subject marks would be contrary to section 11(4)(b) because they are
likely to deceive the public into thinking that the goods sold under the subject marks
emanate from the Opponent when in fact they do not.17
33. Section 11(4)(b) of the Ordinance is intended to apply where the deception
14 See para. 22 above. 15 Similar to section 3(1)(a) of the UK Trade Marks Act 1994. 16 MESSIAH FROM SCRATCH Trade Mark [2000] R.P.C. 44, para. 13. 17 Grounds of Opposition, paras 12 & 13(c).
9
alleged arises from the nature of the mark itself. This is consistent with the heading of
section 11 of the Ordinance which is entitled “Absolute grounds for refusal of
registration” and is to be contrasted with section 12 of the Ordinance which deals with
the relative rights of an applicant and other parties.18 Consequently, the Opponent
cannot succeed under section 11(4)(b) of the Ordinance based upon its allegedly similar
mark(s).
34. The ground of opposition under section 11(4)(b) of the Ordinance is not made
out.
Opposition under section 12(2) of the Ordinance
35. Section 12(2) of the Ordinance provides that:
“A trade mark shall not be registered if-
(a) the trade mark is identical to an earlier trade mark;
(b) the goods or services for which the application for registration is made are
similar to those for which the earlier trade mark is protected; and
(c) the use of the trade mark in relation to those goods or services is likely to cause
confusion on the part of the public.
36. The Opponent claims that registration of the subject marks would be contrary
to section 12(2) of the Ordinance because each of the subject marks is identical to an
earlier trade mark, the goods for which the application for registration is made are
similar to those for which the earlier trade mark is protected and the use of the subject
marks in relation to those goods is likely to cause confusion on the part of the public.19
37. I refer to the requirement under section 12(2)(a) of the Ordinance. To succeed
under section 12(2) of the Ordinance, the Opponent must establish that the subject
marks are identical to an earlier trade mark.
38. The two marks relied on by the Opponent in this opposition are set out in
paragraph 10 above. The subject marks are identical to neither of them. The ground of
opposition under section 12(2) of the Ordinance is not made out.
18 QS by S. Oliver Trade Mark [1999] R.P.C. 520 at 524; Kerly’s Law of Trade Marks and Trade Names
(15th Edn.) para. 8-201. 19 Grounds of Opposition, para. 13(g).
10
Opposition under section 12(3) of the Ordinance
39. Section 12(3) of the Ordinance provides that:
“A trade mark shall not be registered if-
(a) the trade mark is similar to an earlier trade mark;
(b) the goods or services for which the application for registration is made are
identical or similar to those for which the earlier trade mark is protected; and
(c) the use of the trade mark in relation to those goods or services is likely to cause
confusion on the part of the public.”
40. The Opponent claims that the subject marks are visually and phonetically
similar and identical to the Opponent’s “COTTONELLE” trade mark;20 and that
registration of the subject marks would be contrary to section 12(3) of the Ordinance
because each of the subject marks is similar to an earlier trade mark, the goods for
which the application for registration is made are identical or similar to those for which
the earlier trade mark is protected and the use of the subject marks in relation to those
goods is likely to cause confusion on the part of the public.21
41. Section 12(3) of the Ordinance essentially prohibits the registration of a trade
mark which would be likely to cause confusion on the part of the public as a result of its
being similar to an earlier trade mark and because it is to be registered in respect of
goods or services the same as or similar to those the subject of the earlier trade mark.
42. According to section 7(1) of the Ordinance, in determining whether the use of
a trade mark is likely to cause confusion on the part of the public, the Registrar may
take into account all factors relevant in the circumstances, including whether the use is
likely to be associated with an earlier trade mark.
43. The basic principles regarding the assessment of similarity between signs and
the likelihood of confusion between them are set out in the cases of Sabel BV v Puma
AG [1998] R.P.C. 199, Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV
[2000] F.S.R. 77 and Canon Kabushiki Kaisha v Metro Goldwyn Mayer Inc. [1999]
R.P.C. 117 and adopted in Guccio Gucci SpA v Gucci [2009] 5 HKLRD 28. They are
as follows:
20 Grounds of Opposition, para.9. 21 Grounds of Opposition, para.13(h).
11
(a) The likelihood of confusion must be appreciated globally, taking
account of all the relevant factors.
(b) The matter must be judged through the eyes of the average consumer of
the goods in issue, who is deemed to be reasonably well informed and
reasonably observant and circumspect.
(c) In order to assess the degree of similarity between the marks concerned
one must determine the degree of visual, aural or conceptual similarity
between them and, where appropriate, evaluate the importance to be
attached to those different elements taking into account the nature of the
goods in question and the circumstances in which they are marketed.
(d) The visual, aural and conceptual similarities of the marks must
therefore be assessed by reference to the overall impressions created by
the marks bearing in mind their distinctive and dominant components.
The perception of the marks in the mind of the average consumer plays
a decisive role in the overall appreciation of the likelihood of confusion.
(e) The average consumer normally perceives a mark as a whole and does
not proceed to analyze its various details.
(f) 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.
(g) The average consumer rarely has the chance to make direct
comparisons between marks and must instead rely upon the imperfect
picture of them he has kept in his mind; further the average consumer’s
level of attention is likely to vary according to the category of goods in
question.
(h) Appreciation of the likelihood of confusion also depends upon the
degree of similarity between the goods. A lesser degree of similarity
between the marks may be offset by a greater degree of similarity
between the goods, and vice versa.
(i) Mere association, in the sense that the later mark brings the earlier mark
12
to mind, is not sufficient for the purpose of the assessment.
(j) But the risk that the public might believe that the respective goods
come from the same or economically linked undertakings does
constitute a likelihood of confusion within the meaning of the section.
Earlier trade mark
44. Section 5(1) of the Ordinance provides, inter alia, that:
‘In this Ordinance, "earlier trade mark" (在先商標), in relation to another trade
mark, means-
(a) a registered trade mark which has a date of the application for registration
earlier than that of the other trade mark, taking into account the priorities
claimed in respect of each trade mark, if any;…’.
45. Each of the Opponent’s Marks is a registered trade mark with a date of
application for registration which is earlier than that of the subject marks. According
to section 5(1)(a) of the Ordinance, each of the Opponent’s Marks is an earlier trade
mark in relation to the subject marks.
Relevant public
46. The average consumer of the category of goods concerned is deemed to be
reasonably well informed and reasonably observant and circumspect. The average
consumer’s level of attention is likely to vary according to the category of goods in
question.
47. In the present case, the subject goods and the Opponent’s Class 5 goods
consist of sanitary napkins and other products for feminine hygiene, whereas the
Opponent’s Class 16 goods consist of toilet paper. These goods are directed at the
general public and, in the case of the subject goods and the Opponent’s Class 5 goods,
at females amongst the general public in particular. They are common purchases for
consumers and their level of attention when making purchase for such goods would be
normal to low.
13
Comparison of goods
48. The well known tests for assessing similarity in goods and services are found
in Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. (supra) and British Sugar Plc
v James Robertson & Sons Ltd. (supra). These require considerations of all relevant
factors relating to the goods and services including, inter alia, their nature, intended
purpose, method of use, whether the goods and services are in competition with each
other or are complementary, as well as their users and the channels through which they
reach the market.
Opponent’s Mark A
49. The specifications of goods in respect of the Opponent’s Mark A and the
subject marks are as follows:
Opponent’s Mark A:
Opponent’s Class 16 goods
subject marks:
subject goods
toilet paper having a surface and texture
resembling cotton in Class 16
Articles for the feminine hygiene made of
paper and/or cellulose; Sanitary napkins;
sanitary pads; sanitary towels; sanitary
panties; sanitary tampons; menstruation
pads; feminine hygiene antiseptic washes;
products for feminine hygiene; all
included in class 5
50. Although goods such as “sanitary napkins” and “sanitary pads” in the subject
goods on the one hand and “toilet paper” covered by the Opponent’s Class 16 goods on
the other may all have a surface and texture resembling cotton, the nature of the two
groups of goods are not entirely the same. The former serves a much more specific
purpose (i.e. for feminine hygiene), and the intended users are females only, whereas
toilet paper is used to by all for personal cleaning. Although they may all be sold in
supermarkets, they are likely to be found in different sections and are neither
complementary nor in competition. I find that the subject goods and the Opponent’s
Class 16 goods are similar only to a low degree.
Opponent’s Mark B
51. The specifications of goods in respect of the Opponent’s Mark B and the
14
subject marks are as follows:
Opponent’s Mark B:
Opponent’s Class 5 goods
subject marks:
subject goods
sanitary napkins, and sanitary belts in
Class 5.
Articles for the feminine hygiene made of
paper and/or cellulose; Sanitary napkins;
sanitary pads; sanitary towels; sanitary
panties; sanitary tampons; menstruation
pads; feminine hygiene antiseptic washes;
products for feminine hygiene; all
included in class 5
52. The Opponent’s Class 5 goods are covered by the subject goods. Identical
goods are involved.
Comparison of marks
53. The average consumer normally perceives a mark as a whole and does not
proceed to analyze its various details.
54. Each of the subject marks consists of the word “Kotonella” which has no
meaning in relation to the subject goods. The Applicant claims the colours pink
(Pantone no. 213U) and grey as elements of subject mark B, whereas there is no colour
claim in respect of subject mark A.
Comparison with the Opponent’s Mark A
55. The Opponent’s Mark A consists of the word “COTTONELLE” in block
capitals. The average consumer would see the word “cotton” in the first part of the word
as it is a dictionary word with known meaning. This would particularly be so when the
mark is used in relation to the Opponent’s Class 16 goods which are “toilet paper
having a surface and texture resembling cotton”. Consumers may or may not realize
that “elle” means “she” in French, and may not attribute any meaning to that part of the
word.
56. Visually, each of the subject marks consists of nine letters whilst the
Opponent’s Mark A consists of ten letters. Although the two words “Kotonella” and
“COTTONELLE” have seven letters in common, namely “-o-t-o-n-e-l-l-”, generally the
15
beginning of a mark is what primarily catches the consumer’s attention. Due to the
difference in the first and last letters of the marks and the presence of the double “t” in
the Opponent’s Mark A as opposed to the single “t” in the subject marks, the overall
visual impression created by the Opponent’s Mark A is different from that created by
each of the subject marks. I find them to be visually similar to a very low degree.
57. Aurally, the Opponent’s Mark A would be pronounced as “ko-ton-nell” or
“ko-ton-nel-le”, whereas the each of the subject marks would be pronounced as
“ko-ton-nel-la”. The Opponent’s Mark A and the subject marks are phonetically
similar.
58. Conceptually, the average consumer would see the dictionary word “cotton” in
the Opponent’s Mark A. Each of the subject marks would be viewed as a whole and
would have no meaning to the average consumer of the relevant goods in Hong Kong. I
find the two marks to be conceptually dissimilar.
Comparison with the Opponent’s Mark B
59. The Opponent’s Mark B consists of five letters whilst each of the subject
marks consists of nine letters.
60. Visually, although the Opponent’s Mark B and each of the subject marks have
the same first three letters, namely “kot”, the Opponent’s Mark B is much shorter than
each of the subject marks. The average consumer would perceive a mark as a whole,
and would not dissect the letters “kot” from the word “Kotex” and then compare it with
the subject marks. The overall visual impression created by the Opponent’s Mark B is
very different that created by each of the subject marks. I find them to be visually
dissimilar.
61. Aurally, the Opponent’s Mark B consists of two syllables (“ko-tex”) whereas
each of the subject marks consists of four syllables (“ko-ton-nel-la”). Although they
have the same first syllable “kot”, they differ in respect of the rest of the syllables, and
the Opponent’s Mark B is much shorter. I find the Opponent’s Mark B and the subject
marks to be aurally dissimilar.
62. Conceptually, as neither the word “kotonella” nor the word “kotex” has any
meaning, no conceptual comparison is possible.
16
Distinctiveness of the Opponent’s Marks
63. The distinctive character of the earlier trade mark is a factor to be taken into
account in the assessment of the likelihood of confusion. It is well established that there
is a greater likelihood of confusion where the earlier mark has a highly distinctive
character either because of its inherent qualities or because of the use that has been
made of it (Sabel v Puma (supra)).
64. In determining the distinctive character of an earlier trade mark, I must make
an overall assessment of the greater or lesser capacity of the mark to identify the goods
or services for which it has been registered as coming from a particular undertaking, and
thus to distinguish those goods or services from those of other undertakings. In
making that assessment, account should be taken, in particular, of the inherent
characteristics of the mark, including the fact that it does or does not contain an element
descriptive of the goods or services for which it has been registered; the market share
held by the mark; how intensive, geographically widespread and long-standing use of
the mark has been; the amount invested by the undertaking in promoting the mark; the
proportion of the relevant section of the public which, because of the mark, identifies
the goods or services as originating from a particular undertaking; and statements from
chambers of commerce and industry or other trade and professional associations
(Windsurfing Chiemsee v Huber and Attenberger [1999] E.T.M.R. 585; Lloyd
Schuhfabrik Meyer & Co. GmbH v Klijsen Handel B.V. (supra)).
Distinctiveness of the Opponent’s Mark A
65. The Opponent’s Mark A consists of the word “COTTONELLE”. Although
the word as a whole has no meaning in relation to the Opponent’s Class 16 goods, the
average consumer would recognize the dictionary word “cotton” in the first part of the
word, which is descriptive of the characteristics of the Opponent’s Class 16 goods,
namely, “toilet paper having a surface and texture resembling cotton”.
66. I have also considered the evidence of use of the Opponent’s Mark A in Hong
Kong. The average turnover for products bearing the Opponent’s Mark A in Hong Kong
for the years 2005 to 2009 was around US$30,000 per annum, which was modest. No
advertising figures in respect of promotion of the Opponent’s Mark A in Hong Kong are
provided.
67. Overall, I find the distinctiveness of the Opponent’s Mark A to be just above
17
average.
Distinctiveness of the Opponent’s Mark B
68. The Opponent’s Mark B consists of the word “kotex” which is an invented
word with no meaning in relation to the Opponent’s Class 5 goods.
69. Although the Opponent claims that the Opponent’s Mark B has acquired
extensive reputation and goodwill for sanitary and feminine hygiene products, hardly
any evidence of use and promotion of the Opponent’s Mark B in Hong Kong has been
filed in this case. No sales turnover and no advertising expenditure figures in respect
of products marketed under the Opponent’s Mark B in Hong Kong are provided.
70. Overall, given that the word “kotex” is an invented word, the Opponent’s
Mark B has a reasonably high degree of distinctiveness.
Likelihood of confusion
71. The likelihood of confusion must be appreciated globally, taking account of all
relevant factors. The matter must be judged through the eyes of the average consumer
of the goods and services in issue who is deemed to be reasonably well-informed and
reasonably observant and circumspect. A lesser degree of similarity between the
marks may be offset by a greater degree of similarity between the goods or services, and
vice versa (Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (supra)).
72. In the context of consideration of the likelihood of confusion, assessment of
the similarity between two marks means more than taking just one component of a
composite trade mark and comparing it with another mark. On the contrary, the
comparison must be made by examining each of the marks in question as a whole.
Likelihood of confusion with the Opponent’s Mark A
73. I have considered the visual, aural and conceptual similarities and differences
between each of the subject marks on the one hand and the Opponent’s Mark A on the
other. The goods covered by the marks in question are often sold in self-service stores
where consumers choose the product themselves in which case they would rely
primarily on the image of the trade mark applied to the product. Visual comparison
between the signs would therefore be important. Even where the goods are ordered
18
orally, the consumer would still see the goods before actual purchase. Despite the
phonetic similarity, the Opponent’s Mark A and the subject marks are visually similar
only to be a very low degree and are conceptually dissimilar. Taking each of the subject
marks and the Opponent’s Mark A as a whole, the overall impression created by each of
the subject marks is very different from that created by the Opponent’s Mark A. The
subject goods and the Opponent’s Class 16 goods covered by the Opponent’s Mark A
are similar only to a low degree (paragraph 50 above). The distinctiveness of the
Opponent’s Mark A is just above average (paragraph 67 above).
74. Taking into account the combined effect of all of the above considerations, I
consider that when any of the subject marks is used in relation to the subject goods, the
average consumer would unlikely be misled into believing that those goods and the
Opponent’s Class 16 goods offered under the Opponent’s Mark A come from the same
or economically-linked undertakings.
Likelihood of confusion with the Opponent’s Mark B
75. I have considered the visual, aural and conceptual aspects of each of the
subject marks on the one hand and the Opponent’s Mark B on the other. I find them to
be visually and aurally dissimilar, and no conceptual comparison is possible. Taking
each of the subject marks and the Opponent’s Mark B as a whole, the overall impression
created by each of the subject marks is very different from that created by the
Opponent’s Mark B. The subject goods and the Opponent’s Class 5 goods covered by
the Opponent’s Mark B are identical. The Opponent’s Mark B has a reasonably high
degree of distinctiveness (paragraph 70 above).
76. Taking into account the combined effect of all of the above considerations,
despite the fact that identical goods are involved, since the overall impression created
by each of the subject marks is very different from that created by the Opponent’s Mark
B, I consider that when any of the subject marks is used in relation to the subject goods,
the average consumer would unlikely be misled into believing that those goods and the
Opponent’s Class 5 goods offered under the Opponent’s Mark B come from the same or
economically-linked undertakings.
77. The ground of opposition under section 12(3) of the Ordinance is not made
out.
19
Opposition under section 12(4) of the Ordinance
78. Section 12(4) of the Ordinance provides, inter alia, as follows:
“… a trade mark which is–
(a) identical or similar to an earlier trade mark; and
(b) proposed to be registered for goods or services which are not identical or
similar to those for which the earlier trade mark is protected,
shall not be registered if, or to the extent that, the earlier trade mark is entitled to
protection under the Paris Convention as a well-known trade mark and the use of the
later trade mark without due cause would take unfair advantage of, or be detrimental
to, the distinctive character or repute of the earlier trade mark.”
79. The Opponent stated in the Grounds of Opposition, inter alia, as follows:
“10. … In order to free-ride on the worldwide fame and reputation for high quality
goods that the Opponent has painstakingly built up over the decades, the
[Applicant] applies for a mark “Kotonella” which combines the two famous
marks of the Opponent [“COTTONELLE” and “KOTEX”], substituting the
“CO” part of the “COTTONELLE” mark with the “KO” of the KOTEX”
mark, and applying the “Kotonella mark for goods in Class 5 for which
“KOTEX” is famous, instead of in Class 16 where there is a
“COTTONELLE” registration that would block its application. So doing, the
Applicant attempts to position itself as the “COTTONELLE” of Class 5
feminine care goods and mislead and confuse consumers into thinking that its
goods are those of the Opponent, as if the Opponent had expanded its
“COTTONELLE” line of products to Class 5 goods and adopted a variation of
the “COTTONELLE” mark that reminds one of the “KOTEX” mark which is
famous in respect of Class 5 goods.
…
12. The Opponent, which has leading-edge manufacturing plants all over the
world, further notes that the Applicant operates from a residential address (as
“Carnarvon Mansion” is a residential address) and fears for its reputation and
the safety of consumers should sub-standard or unsafe products be produced
bearing a trade mark that is highly similar or virtually identical to its famous
“COTTONELLE” brand and which makes some reference to its renowned
“KOTEX” brand. … Where or when the goods of the Application are harmful,
of inferior quality or otherwise unacceptable or undesirable, there would be
20
irreparable damage to the Opponent’s high reputation for excellent product
quality which the Opponent has ensured through committing considerable
resources to product quality control strictly and continuously enforced over
the years in all of its manufacturing and distribution procedures and outlets in
many countries throughout the world.
13. By reason of the foregoing, the Opponent alleges that:
…
(a) Registration of the Application Mark is contrary to Section 12(4) because the
Application Mark is identical or similar to an earlier trade mark, and the
[subject marks] shall not be registered as the earlier trade mark is entitled to
protection under the Paris Convention as a well-known trade mark and the use
of the [subject marks] without due cause would take unfair advantage of or be
detrimental to the distinctive character or repute of the earlier trade mark.”
80. In its Counter-statement, the Applicant denied the above allegations and put
the Opponent to strict proof thereof. Specifically, the Applicant denied that the
Applicant combined any of the Opponent’s trade marks by applying for registration of
the subject marks for goods in Class 5,22 and denied any conduct or act by the
Applicant which would lead to or result in production of any goods of inferior quality or
harm to the public.23
81. To succeed under section 12(4) of the Ordinance, the Opponent has to
establish the following:
(a) that at least one of the Opponent’s Marks is an earlier trade mark which
is entitled to protection under the Paris Convention as a well-known
trade mark;
(b) that any of the subject marks is identical or similar to that earlier mark,
and that on a global appreciation of all the factors relevant to the
circumstances, the use of any of the subject marks would give rise to a
link with the earlier mark in the minds of the relevant public;
(c) that in consequence of that link, the use of any of the subject marks
without due cause either takes unfair advantage of the distinctive
22 Grounds for Counter-statement, para. 10. 23 Grounds for Counter-statement, para. 12.
21
character or repute of the earlier mark or is detrimental to that
distinctive character or repute.
Well-known trade mark
82. Section 4 of the Ordinance provides, inter alia, as follows:
“(1) References in this Ordinance to a trade mark which is entitled to protection
under the Paris Convention as a well-known trade mark shall be construed as
references to a trade mark which is well known in Hong Kong and which is the
trade mark of a person who-
(a) is a national of, or is domiciled or ordinarily resident in, a Paris
Convention country or WTO member;
(b) has a right of abode in Hong Kong; or
(c) has a real and effective industrial or commercial establishment in a Paris
Convention country, a WTO member or Hong Kong,
whether or not that person carries on business in Hong Kong or owns any
goodwill in a business in Hong Kong.
(2) In determining for the purposes of subsection (1) whether a trade mark is well
known in Hong Kong, the Registrar or the court shall have regard to
Schedule 2.”
83. Section 5(1) of the Ordinance provides, inter alia, as follows:
“In this Ordinance, "earlier trade mark" (在先商標), in relation to another trade
mark, means-
…
(b) a trade mark which, at the date of the application for registration of the other
trade mark or, where appropriate, at the date of the priority claimed in respect
of that application for registration, was entitled to protection under the Paris
Convention as a well-known trade mark.”
84. Pursuant to sections 4(1) and 5(1)(b) of the Ordinance, the relevant question is
whether any of the Opponent’s Marks is well known in Hong Kong at the Application
Date.
85. In determining whether any of the Opponent’s Marks is well known in Hong
22
Kong, I have to take into account any factors from which it may be inferred that the
mark is well known in Hong Kong (section 1(1) of Schedule 2 to the Ordinance). I shall
consider any information submitted in this regard, including, but not limited to, any
information concerning the degree of knowledge or recognition of the trade mark in the
relevant sectors of the public; the duration, extent and geographical area of any use of
the trade mark; the duration, extent and the geographical area of any promotion of the
trade mark, and of any registrations or applications for registration of the trade mark to
the extent that they reflect use or recognition of the trade mark; any record of successful
enforcement of rights in the trade mark and the value associated with it (section 1(2),
Schedule 2 to the Ordinance).
Opponent’s Mark A
86. Although the Opponent claimed that the Opponent’s Mark A was first used in
the USA in 1972 and in Hong Kong in the early 1970’s and had since been in use
continuously,24 annual turnover figures for products bearing the Opponent’s Mark A in
Hong Kong and in North America only since 2005 are provided.25 The average
turnover for products bearing the Opponent’s Mark A in Hong Kong for the years 2005
to 2009 was around US$30,000 per annum, which was modest. The average
advertising expenditure in North America in respect of products bearing the Opponent’s
Mark A during the years 2005 to 2009 was around US$25,000 per annum,26 which was
not substantial. No advertising figures for those products are available for the local
market in Hong Kong. The Opponent’s Mark A mark has been registered in a number of
jurisdictions as listed in Exhibit LHY-9 to Lee’s Declaration, but no turnover figures
and no advertising expenditure figures in respect of sales and promotion of products
bearing the Opponent’s Mark A in these jurisdiction have been provided. The extent of
use or recognition of the Opponent’s Mark A in those jurisdictions are therefore not
clear. There is no direct evidence of the degree of knowledge or recognition of the
Opponent’s Mark A in the relevant sectors of the public. There is no record of
successful enforcement of rights in the Opponent’s Mark A and no evidence on the
value associated with the mark.
87. Having regard to the totality of the Opponent’s evidence filed in these
proceedings and all relevant factors for consideration in accordance with section 1,
Schedule 2 to the Ordinance, I find that the Opponent has failed to establish that the
24 Lee’s Declaration, para. 10. 25 Lee’s Declaration, paras 25, 27. 26 Lee’s Declaration, para. 27.
23
Opponent’s Mark A is well known in Hong Kong as at the Application Date.
Opponent’s Mark B
88. Although it is claimed that since its launch in the early 1920’s the Opponent’s
Mark B has acquired an extensive reputation and goodwill worldwide for sanitary and
feminine hygiene products27, there is very little evidence filed in these proceedings in
respect of the use and promotion of the mark. Save that it is mentioned in a review by
Advertising Age dated 15 September 2003 at Exhibit LHY11 to Lee’s Declaration that
“By 1965, Kotex controlled 62% of the U.S. feminine hygiene market and was spending
$4 million annually in advertising”, no turnover figures and no advertising figures in
respect of products marketed under the Opponent’s Mark B whether in Hong Kong or
elsewhere have been provided. Although the Opponent states that it owns many
registrations for the KOTEX mark worldwide including Hong Kong,28 only details of
the trade marks registered in Hong Kong as listed in the Schedule have been provided.
There is no direct evidence of the degree of knowledge or recognition of the Opponent’s
Mark B in the relevant sectors of the public in Hong Kong. There is no record of
successful enforcement of rights in the Opponent’s Mark B and no evidence on the
value associated with the mark.
89. Having regard to the totality of the Opponent’s evidence filed in these
proceedings and all relevant factors for consideration in accordance with section 1,
Schedule 2 to the Ordinance, I find that the Opponent has failed to establish that the
Opponent’s Mark B is well known in Hong Kong as at the Application Date.
90. The requirements listed in paragraph 81(a) to (c) above are cumulative. Each
of those requirements must be established before a claim under section 12(4) of the
Ordinance is made out. Since the Opponent has failed to establish the requirement
referred to in paragraph 81(a) above, it is strictly speaking not necessary for me to
consider the other requirements. Lest I should be found to be wrong in my conclusions
in paragraphs 87 and/or 89 above, I proceed to consider the requirement referred to in
paragraph 81(b) above.
Similarity and link
91. For the prohibition in section 12(4) to apply, there must be a degree of
27 Lee’s Declaration, para.17. 28 Lee’s Declaration, para.16.
24
similarity between the earlier mark and the applied-for mark such that the relevant
section of the public establishes a link between them, even though it does not confuse
them.29 The fact that for the average consumer, who is reasonably well informed and
reasonably observant and circumspect, the later mark calls the earlier mark to mind is
tantamount to the existence of such a link.30 The existence of such a link must be
appreciated globally, taking into account all factors relevant to the circumstances of the
case,31 including the degree of similarity between the marks at issue; the nature of the
goods or services for which the marks at issue were registered, the degree of closeness
or dissimilarity between those goods or services, and the relevant section of the public;
the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive
character, whether inherent or acquired through use and the existence of the likelihood
of confusion on the part of the public.32
Opponent’s Mark A
92. I have taken into account the degree of distinctive character of the Opponent’s
Mark A and the strength of its reputation. Notwithstanding that there may be some
overlap between the relevant consumers of the Opponent’s Class 16 goods and the
subject goods, the degree of similarity between the Opponent’s Mark A and the subject
marks is so low that the subject marks would not call to mind the Opponent’s Mark A.
The use of any of the subject marks would not give rise to a link with the Opponent’s
Mark A in the minds of the relevant public.
Opponent’s Mark B
93. I have also considered the degree of distinctive character of the Opponent’s
Mark B and the strength of its reputation. Notwithstanding that the relevant
consumers of the Opponent’s Class 5 goods and the subject goods are the same, the
degree of similarity between the Opponent’s Mark B and the subject marks is so low
that the subject marks would not call to mind the Opponent’s Mark B. The use of any
of the subject marks would not give rise to a link with the Opponent’s Mark B in the
minds of the relevant public.
94. The requirement referred to in paragraph 81(b) above is not established.
29 Adidas-Salomon v Fitnessworld [2004] F.S.R.21 at para. 29; Intel v CPM C-252-07 [2009] R.P.C. 15
at para. 30. 30 Intel v CPM [2009] R.P.C. 15 at para. 63. 31 Adidas-Salomon v Fitnessworld [2004] F.S.R.21 at para. 30; Intel v CPM [2009] R.P.C. 15 at para. 41. 32 Intel v CPM [2009] R.P.C. 15 at para. 42.
25
Unfair advantage/detriment
95. As the Opponent has failed to establish that use of any of the subject marks
would give rise to a link with any of the Opponent’s Marks in the minds of the relevant
public, it follows that there is nothing from which it could be inferred that in
consequence of such a link, the use of any of the subject marks either takes unfair
advantage of the distinctive character or repute of any of the Opponent’s Marks or is
detrimental to that distinctive character or repute. The requirement referred to in
paragraph 81(c) above is not established.
96. The ground under section 12(4) of the Ordinance therefore is not made out.
Opposition under section 11(5)(a) of the Ordinance
97. Section 11(5)(a) of the Ordinance provides that :
“(5) A trade mark shall not be registered if, or to the extent that –
(a) its use is prohibited in Hong Kong under or by virtue of any law;”.
98. The Opponent’s pleaded case under section 11(5)(a) of the Ordinance is as
follows:33
“Registration of the Application Mark is contrary to Section 11(5)(a) because its use
is prohibited in Hong Kong by virtue of law, namely the law of passing off due to the
Opponent’s reputation in the [Opponent’s Mark A].”
99. The ground under section 11(5)(a) of the Ordinance is an absolute ground for
refusal, and is concerned with the trade mark itself. An objection that use of a mark
would cause passing-off arises under section 12(5)(a) of the Ordinance and not under
section 11(5)(a).34 The ground of opposition under section 11(5)(a) is therefore not
made out.
100. The Opponent has not pleaded the ground of opposition under section 12(5)(a)
of the Ordinance. Even if it had so pleaded, the Opponent would not have succeeded
under that ground. This is because the Opponent would not be able to establish all the
33 Grounds of Opposition, para. 13(d). 34 Kerly’s Law of Trade Marks and Trade Names (15th Edn.) para. 8-210.
26
three elements of passing off35 as at the Application Date. Even if the Opponent can
establish that it has sufficient goodwill or reputation in the market in Hong Kong by
virtue of the use of the Opponent’s Mark A in relation to toilet paper before the
Application Date, the Opponent’s Mark A is so different from each of subject marks that
when any of the subject marks is used in relation to the subject goods, the average
consumer would unlikely be misled into believing that those goods and the Opponent’s
toilet paper products offered under the Opponent’s Mark A come from the same or
economically-linked undertakings (paragraph 74 above). The Opponent therefore
cannot establish the element of misrepresentation. It follows that there is nothing from
which it could be inferred that the Opponent is likely to suffer damage by reason of any
erroneous belief engendered by the Applicant’s misrepresentation. Even if the
Opponent had properly pleaded the ground of opposition under section 12(5) of the
Ordinance, it would not have succeeded under that ground.
Opposition under section 11(5)(b) of the Ordinance
101. Section 11(5)(b) of the Ordinance provides that:
“(5) A trade mark shall not be registered if, or to the extent that –
… (b) the application for registration of the trade mark is made in bad faith.”
102. In the Grounds of Opposition, the Opponent stated that:
“9. The Opponent alleges that the Applicant copies the [Opponent’s Mark A]. The
“Kotonella” trade mark is visually and phonetically similar and identical to the
Opponent’s “COTTONELLE” Trade Mark. By the simple device of using a
particular script and a particular pink colour, the Applicant attempts to disguise
the visual resemblance between the trade marks….
…
35 The three elements of the tort of passing off as formulated by Lord Oliver in the JIF case (Reckitt &
Colman Products Limited v. Borden [1990] R.P.C. 341, 406, [1990] 1 All ER 873, 880) (applied in
Ping An Securities Ltd v 中國平安保險 (集團) 股份有限公司 (2009) 12 HKCFAR 808) are: “First,
[the plaintiff] must establish a goodwill or reputation attached to the goods or services which he
supplies in the mind of the purchasing public by association with the identifying ‘get-up’ … under
which his particular goods or services are offered to the public, such that the get-up is recognised by
the public as distinctive specifically of the plaintiff’s goods or services. Second, he must
demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading
or likely to lead the public to believe that goods or services offered by him are the goods or services of
the plaintiff…. Third, he must demonstrate that he suffers or, in a quia timet action, that he is likely to
suffer damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that
the source of the defendant’s goods or services is the same as the source of those offered by the
plaintiff.” (emphasis added)
27
10. The Opponent’s registration for the “COTTONELLE” trade mark covers toilet
paper, under the specification of goods “toilet paper having a surface and
texture resembling cotton”, in Class 16. The Opponent also has many
registrations of the world-renowned “KOTEX” mark … which covers feminine
napkins and such goods in Class 5. In order to free-ride on the worldwide fame
and reputation for high quality goods that the Opponent has painstakingly built
up over the decades, the [Applicant] applies for a mark “Kotonella” which
combines the two famous marks of the Opponent [“COTTONELLE” and
“KOTEX”], substituting the “CO” part of the “COTTONELLE” mark with the
“KO” of the KOTEX” mark, and applying the “Kotonella” mark for goods in
Class 5 for which “KOTEX” is famous, instead of in Class 16 where there is a
“COTTONELLE” registration that would block its application. So doing, the
Applicant attempts to position itself as the “COTTONELLE” of Class 5
feminine care goods and mislead and confuse consumers into thinking that its
goods are those of the Opponent, as if the Opponent had expanded its
“COTTONELLE” line of products to Class 5 goods and adopted a variation of
the “COTTONELLE” mark that reminds one of the “KOTEX” mark which is
famous in respect of Class 5 goods.
…
13. By reason of the foregoing, the Opponent alleges that:
…
(e) Registration of the [subject marks] is contrary to Section 11(5)(b) because
the application for registration of the [subject marks] was made with
knowledge of the Opponent’s reputation in the [Opponent’s Mark A] and
was therefore made in bad faith.”
103. In the Counter-statement, the Applicant denied the above allegations. In
Olga’s Declaration, the Applicant stated that:
“4. The Applicant is the proprietor of the Applicant’s mark. The mark was coined
by one of the two directors of the Applicant, Ms. Jurgita Navalinskaite in about
2008. The idea resulted from a “play” of the Spanish/Mexican word “ella”,
which has a Spanish dictionary meaning as personal pronoun meaning “she”,
and the invented word “koton” without any dictionary meaning, English,
Spanish or Mexican, which is a “play” of the Spanish word “cotón” meaning
printed cotton, as a fabric or material. The subtle or hidden connotation of the
mark is “woman” and the word is pronounced as “[cotone’] [ayl’-lyah]”. The
mark consists of four syllables. The mark “Kotonella”, which is invented, is
28
used as the brand name because branding exercise of our in-house design team
headed by Ms. Jurgita Navalinskaite. The “Kotonella” mark has been
designed for branding proposes [sic] and has been used as an inherently
distinctive trade mark in respect of the applied for goods in the Applicant’s
Trade Mark, especially sanitary napkins, which are exclusively for women.
The brand name as [sic] created as and with the idea of a subtle or suggestive
reflection of what the mark was standing for.… The mark in plain block letters
is nothing visually like the Opponent’s marks … The mark is visually,
conceptually and phonetically distinguishable from the Opponent’s marks…”
104. The term “bad faith” is not defined in the Ordinance. In Gromax Plasticulture
Ltd v Don & Low Nonwovens Ltd [1999] R.P.C. 367 at 379, Lindsay J. said in relation
to section 3(6) of the UK Trade Marks Act 1994 (equivalent to section 11(5)(b) of the
Ordinance):
“I shall not attempt to define bad faith in this context. Plainly it includes dishonesty
and, as I would hold, includes also some dealings which fall short of the standards of
acceptable commercial behaviour observed by reasonable and experienced men in
the particular area being examined. Parliament has wisely not attempted to explain
in detail what is or is not bad faith in this context: how far a dealing must so
fall-short in order to amount to bad faith is a matter best left to be adjudged not by
some paraphrase by the courts (which leads to the danger of the courts then
construing not the Act but the paraphrase) but by reference to the words of the Act
and upon a regard to all material surrounding circumstances.”
105. In Harrison v Teton Valley Trading Co (CHINAWHITE) [2005] F.S.R. 10, the
English Court of Appeal said (at paragraph 26):
“The words “bad faith” suggest a mental state. Clearly when considering the
question of whether an application to register is made in bad faith all the
circumstances will be relevant. However the court must decide whether the
knowledge of the applicant was such that his decision to apply for registration would
be regarded as in bad faith by persons adopting proper standards.”
106. Further, in Ajit Weekly Trade Mark [2006] R.P.C. 25, the Appointed Person
stated as follows:
29
“The subjective element of the test means that the tribunal must ascertain what the
defendant knew about the transaction or other matters in question. It must then be
decided whether in the light of that knowledge, the defendant’s conduct is dishonest
judged by ordinary standards of honest people, the defendant’s own standards of
honesty being irrelevant to the determination of the objective element.”
107. In response to the serious allegation made by the Opponent that the Applicant
had copied the Opponent’s Mark A and that the subject application was made by the
Applicant in bad faith, the Applicant denied the same, and filed evidence giving an
account of the origins of the subject marks (paragraph 103 above). The Opponent did
not file any evidence in reply, did not file any submissions to challenge the Applicant’s
evidence and did not appear at the hearing.
108. An allegation that a trade mark has been applied for in bad faith is a serious
allegation. It should not be made unless it can be fully and properly pleaded and
should not be upheld unless it is distinctly proved (ROYAL ENFIELD Trade Marks
[2002] R.P.C. 24 at para. 31). The standard of proof is on the balance of probabilities
but cogent evidence is required due to the seriousness of the allegation. It is not enough
to prove facts which are also consistent with good faith (Brutt Trade Marks [2007]
R.P.C. 19 at para. 29).
109. I have compared each of the Opponent’s Mark A and the Opponent’s Mark B
with the subject marks and find them to be so different from each of subject marks that
when any of the subject marks is used in relation to the subject goods, the average
consumer would unlikely be misled into believing that those goods and the Opponent’s
goods come from the same or economically-linked undertakings. The Applicant had
given an account on oath as to how the subject marks were created, which evidence had
not been challenged. I find no basis for concluding that the subject marks were copied
from any of the Opponent’s Marks. I do not find that there is any basis for concluding
that the Applicant’s decision to apply for registration of the subject marks would be
regarded as in bad faith by persons adopting proper standards. The ground of
opposition under section 11(5)(b) of the Ordinance is also not made out.
Conclusion and Costs
110. I have considered each of the grounds of opposition relied on by the Opponent
and found that none of them has been made out. The opposition against the subject
application therefore fails.
30
111. The Applicant has sought costs. At the hearing, Mr. Cheung for the Applicant
submitted that due to the fact that the case had been pending since 2010, and the
Opponent did not even bother to attend the hearing, he requested the Registrar to
consider awarding costs on an indemnity basis.
112. The courts have repeatedly emphasized that in order to obtain an order for
costs on an indemnity basis, the successful party should show that the case has some
“special or unusual feature” which would justify an award of costs on such basis.36
113. The Opponent in this case filed evidence in support of its opposition within the
six-month period prescribed by rule 18 of the Trade Marks Rules (Cap. 559A). The
Applicant, on the other hand, sought and was granted four terms of extension of time for
a period of three months each for filing evidence in support of the subject application. I
do not consider the fact that this case has been pending since 2010 is something for
which the Opponent should be held responsible and be penalized in costs. Moreover, a
party may choose to rely on its pleadings and evidence if it is of the view that oral
argument would not advance its case further. There has been no abuse of the process
of the tribunal. The Applicant has failed to show that this case has any special or
unusual feature such that it would be appropriate to award costs on an indemnity basis.
114. Accordingly, I award the Applicant costs, which shall be calculated with
reference to the usual scale in Part I of the First Schedule to Order 62 of the Rules of the
High Court (Cap. 4A) as applied to trade mark matters, unless otherwise agreed
between the parties.
( Finnie Quek )
for Registrar of Trade Marks
8 December 2014
36 Town Planning Board v Society for Protection of the Harbour Ltd (No 2) (2004) 7 HKCFAR 114.
31
Schedule
Trade Mark Trade Mark
No.
Registration
Date
Class
No. Specification of Goods
19771709 15 Sep 1976 16 toilet paper having a surface and
texture resembling cotton.
19490752 10 Dec 1948 5 sanitary napkins, and sanitary
belts.
199408557 04 Dec 1992 5 sanitary napkins, towels, pads;
tampons; panty liners; all for
hygienic or menstrual purposes;
all included in Class 5.
199502438 30 Jul 1993 5 sanitary napkins, towels, pads;
tampons; panty liners; all for
hygienic or menstrual purposes;
all included in Class 5.
199914796 20 Jul 1998 5 feminine hygiene products;
sanitary napkins; sanitary towels;
belts and holders for sanitary
napkins or towels; menstrual pads
and shields; sanitary panties and
diapers; menstrual panty liners;
tampons; tampon applicators;
menstruation knickers; cotton
wool for pharmaceutical purposes;
cellulose wadding and products;
absorbent shields and
undergarments for incontinence;
all included in Class 5.
200008834 20 Dec 1999 5 feminine hygiene products;
sanitary napkins; sanitary towels;
belts and holders for sanitary
napkins or towels; menstrual pads
and shields; sanitary panties and
diapers; menstrual panty liners;
tampons; tampon applicators;
menstruation knickers; cotton
wool for pharmaceutical purposes;
cellulose wadding; absorbent
shields and undergarments of
cellulose fibre for use in
incontinence; all included in
Class 5.
32
Trade Mark Trade Mark
No.
Registration
Date
Class
No. Specification of Goods
200103259 11 Jul 2000 5 sanitary napkins, towels, pads,
panty liners and tampons, all for
feminine and menstrual hygiene
purposes; all included in Class 5.
200107566 11 Sep 1998 5 sanitary napkins, and sanitary
belts.
200107567 11 Sep 1998 5 sanitary napkins, and sanitary
belts.
200112300 07 Apr 2001 5 sanitary napkins, towels, panty
liners and tampons, all for
feminine hygiene or menstrual
hygiene purposes; all included in
Class 5.
200300715 02 Apr 2002 5 sanitary napkins, towels, pads,
panty liners and tampons; all for
feminine or menstrual hygiene
purposes.
