BAD FAITH DECISIONS
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, four trademark cases relating to the issue of bad faith have been decided.
Te first case concerned Pending Application No.300662751 for the device mark consisting of symmetrical patterns around the inner part of a circle and the letter ‘V’ at the centre (see Fig 1 above right). Tis mark was filed by a furniture company in Shantou City, Guangdong province, China and the opponent was Gianni Versace SpA of Italy.
Based on the following observations, the hearing officer was satisfied that the Section 11(5)(b) objection was sustained.
• Te applicant’s mark is visually similar to the opponent’s mark, for both marks consist of similar symmetrical patterns.
• Due to the fact that the applicant is located in Shatou City, Guangdong province, and intends running 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 marks ‘Versace’ as well as its circle device mark.
• Use of the letter ‘V’ with the symmetrical circular patterns will lead the public to believe that the applicant’s mark is from the opponent.
• An individual shareholder of the applicant had previously filed an application for registration of the mark ‘GuangdaVersace’ in Chinese characters in Class 20. Te Chinese characters appearing in that mark are the Chinese transliteration of ‘Versace’. Tis earlier application was opposed by the opponent and was then treated as abandoned due to non-filing of a counter statement. Tat individual shareholder is regarded as a connected person to the applicant in the present opposition proceedings (date of decision: December 14, 2011).
Te second case is concerned about Pending Application No. 300638631 for the mark (Tai Kang in Chinese characters, see Fig 2 above right) in Class 36. In that case, the individual applicant filed an application for registration of the subject mark, which was identical to the trade name of
40 World Intellectual Property Review Annual 2012
the opponent, a famous insurance company in Beijing. Te hearing officer was satisfied that a case of bad faith was sustained on the basis of the following observations:
• Te address of the applicant is within the same area as a branch office of the opponent. Such proximity suggests that the applicant must possess some knowledge of the trade name of the opponent in Hong Kong.
• Te applicant is the managing director of a trademark agency company of which he and a former employee of the opponent are the shareholders.
• Insurance services under the opponent’s mark or trade name have an established reputation in China. It is being used to distinguish the services provided by the opponent from the other’s (date of decision: January 30, 2012).
In both cases, the hearing officers adopted the combined test for dishonesty to reach a decision, aſter having made reference to a number of relevant cases in the UK. In Harrison v Teton Valley Trading Co (Chinawhite), the English
www.worldipreview.com
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80 |
Page 81 |
Page 82 |
Page 83 |
Page 84 |
Page 85 |
Page 86 |
Page 87 |
Page 88 |
Page 89 |
Page 90 |
Page 91 |
Page 92 |
Page 93 |
Page 94 |
Page 95 |
Page 96 |
Page 97 |
Page 98 |
Page 99 |
Page 100 |
Page 101 |
Page 102 |
Page 103 |
Page 104 |
Page 105 |
Page 106 |
Page 107 |
Page 108 |
Page 109 |
Page 110 |
Page 111 |
Page 112 |
Page 113 |
Page 114 |
Page 115 |
Page 116 |
Page 117 |
Page 118 |
Page 119 |
Page 120 |
Page 121 |
Page 122 |
Page 123 |
Page 124 |
Page 125 |
Page 126 |
Page 127 |
Page 128 |
Page 129 |
Page 130 |
Page 131 |
Page 132 |
Page 133 |
Page 134 |
Page 135 |
Page 136 |
Page 137 |
Page 138 |
Page 139 |
Page 140 |
Page 141 |
Page 142 |
Page 143 |
Page 144 |
Page 145 |
Page 146 |
Page 147 |
Page 148 |
Page 149 |
Page 150 |
Page 151 |
Page 152 |
Page 153 |
Page 154 |
Page 155 |
Page 156 |
Page 157 |
Page 158 |
Page 159 |
Page 160 |
Page 161 |
Page 162 |
Page 163 |
Page 164 |
Page 165 |
Page 166 |
Page 167 |
Page 168 |
Page 169 |
Page 170 |
Page 171 |
Page 172 |
Page 173 |
Page 174 |
Page 175 |
Page 176 |
Page 177 |
Page 178 |
Page 179 |
Page 180