WELL-KNOWN MARKS IN HONG KONG JURISDICTION REPORT: HONG KONG
Kenny Leung Wenping & Co
Section 11(5)(b) of the Trade Marks Ordinance provides that a trademark shall not be registered if the application for registration of it is made in bad faith. Recently, two trademark cases have been decided where each of the opponents successfully established bad faith.
Te first case concerns a pending application for a device mark consisting of symmetrical patterns around the inner part of a circle and the letter ‘V’ at the centre. Tis mark was filed by a furniture company in Shantou City, Guangdong Province, China, while the opponent is Gianni Versace SpA of Italy. Based on the following observations, the hearing officer is satisfied that the Section 11(5)(b) objection is sustained.
• The applicant’s mark is visually similar to the opponent’s, since both marks consist of similar symmetrical patterns.
• Due to the fact that the applicant is located in Shatou City, Guangdong Province, and intends to run a furniture and household products business in Hong Kong, it is impossible that the applicant was not aware of the reputation and extensive use of the opponent’s ‘Versace’ marks as well as its circle device mark.
• Use of the letter ‘V’ with symmetrical patterns in a circle will lead the public to believe that the applicant’s mark comes from the opponent.
• One of the applicant’s shareholders had previously filed an application for registration of the mark ‘GuangdaVersace & Chinese characters’ in Class 20. The Chinese characters appearing in that mark were the Chinese transliteration of ‘Versace’. This earlier application was opposed by the opponent and was then treated as abandoned due to non-filing of a counter statement. That individual shareholder is regarded as a connected person to the applicant in the present opposition proceedings.
Te second case concerns a pending application for the mark ‘Tai Kang in Chinese characters’ in Class 36. In this case, the individual applicant filed an application for registration of the subject mark, which is identical to the trade name of the opponent, a famous insurance company in Beijing. Te hearing officer is satisfied that a case of bad faith is sustained due to the following observations:
• The applicant’s address is within the same area zone as a branch office of the opponent. Such proximity suggests that the applicant must possess some knowledge of the opponent’s trade in Hong Kong.
• The applicant is the managing director of a trademark agency company where he and a former employee of the opponent are the shareholders.
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• Insurance services under the opponent’s mark or trade name have an established reputation in China. Te mark is used to distinguish the opponent’s services.
In both cases, the hearing officers adopted the combined test for dishonesty to reach a decision, aſter making reference to a number of relevant cases in England. In Harrison v Teton Valley Trading Co (CHINAWHITE) 2005 FSR, the English Court of Appeal held that:
“Te 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 the proper standard.”
And the combined test for dishonesty is defined by Lawrence Collins J. in Daraydan Holdings Ltd v Solland International Ltd (2005) 4 All ER 73 as follows:
“... 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.”
Kenny Leung is an in-house counsel at Wenping & Co. He can be contacted at:
kenny@wenping.com.hk
World Intellectual Property Review March/April 2012 51
“IT IS IMPOSSIBLE THAT THE APPLICANT WAS NOT AWARE OF THE REPUTATION AND EXTENSIVE USE OF THE OPPONENT’S ‘VERSACE’ MARKS AS WELL AS ITS CIRCLE DEVICE MARK.”
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