JURISDICTION REPORT: HONG KONG
COMPARISON OF MARKS IN HONG KONG
Kenny Leung Wenping & Co
Section 12 of the Trade Marks Ordinance sets out the relative grounds for refusal of registration of a mark in Hong Kong. Objections under Section 12(3) of this ordinance are commonly raised either in the trademark examination stage or in opposition proceedings.
Section 12(3) of the Trade Marks Ordinance provides that: “A trade mark shall not be registered if:
• Te trade mark is similar to an earlier trade mark;
• Te 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
• Te use of the trade mark in relation to those goods or services is likely to cause confusion on the part of the public.”
Te trademark opposition decision for the applied-for mark ‘
J.Estina & Crown Device’ in Class 14 is concerned with an objection under Section 12(3). In this case, the opposed mark is applied to “watches and clocks, wristwatches, electric watches, desk clocks, alarm clocks; precious metals and their alloys and goods in precious metals or coats therewith, medals and brooches; jewellery, necklaces, rings, bracelets, earrings”. Te opponent, Festina Lotus, a watch designer, manufacturer and trader in Spain, relied on its two registered marks, ‘Festina’ and ‘Festina & Crown Device’, in the same class to formulate the grounds of opposition. Tese two registered marks are regarded as earlier trademarks under the Trade Marks Ordinance.
Te hearing officer, Ms Maria Ng, delivered her decision on April 18, 2012. She adopted the basic principles for assessing similarity between two marks and the likelihood of confusion between them. Tese principles are set out in three Court of Justice of the EU (CJEU) decisions—Sabel BV v Puma AG, Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV and Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc—and adopted in a Hong Kong court case, Guccio Gucci SpA v Gucci.
Te first factor to be considered is the relevant public of the applied-for goods. Te hearing officer took the view that the relevant public would be members of the public in Hong Kong who are “reasonably well informed and reasonably observant and circumspect”, and who would exercise reasonable care and attention when selecting these goods.
Te second factor is the distinctiveness of the opponent’s marks. Both are found to be inherently distinctive of the opponent’s goods and the word ‘Festina’ itself has no dictionary meaning.
Based on the above factors, the hearing officer then went on to compare the applied-for mark and the opponent’s composite mark ‘Festina & Device’. By
“GIVEN THAT THE GOODS RELATING TO THE APPLIED-FOR MARK ARE GENERALLY SMALL, THE DIFFERENCES BETWEEN THESE TWO WORDS WOULD NOT BE OBVIOUS TO THE AVERAGE CONSUMER OF THE RELEVANT PUBLIC.”
way of visual comparison, the relevant consumers are likely to pay more attention to the word elements, as the devices appearing in the two marks are commonly used for decorative purposes by traders in the same business. As words generally speak louder than devices in a composite mark, the relevant consumers will naturally pay more attention to the word ‘Festina’.
Te word elements of the opposed mark and the opponent’s composite mark are ‘
J.Estina’ and ‘Festina’ respectively. Given that the goods relating to the applied-for mark are generally small, the differences between these two words would not be obvious to the average consumer of the relevant public.
So far as aural comparison is concerned, the emphasis is on the second syllable of each mark, ie, ‘tin’. A considerable proportion of the consumers of the relevant public would pronounce and remember the opposed mark as ‘Jes-tin-na’ or ‘Es-tin-na’.
A conceptual comparison of the two marks finds that neither of them bears any meaning to the average consumer of the relevant public. Tere is no dispute that the goods of interest covered by the two marks are identical.
Te last criterion of the Section 12(3) provision is the likelihood of confusion. Te CJEU cases have made it clear that this matter has to be considered globally, taking into account the visual, phonetic and conceptual aspects of the marks concerned and all relevant factors. Te visual, phonetic and conceptual aspects do not necessarily have the same weight. In the present case, visual perception of the applied-for goods in conjunction with the opposed mark should be more significant.
Taking all the relevant factors into account, it is held that there is real likelihood of confusion as to the origin of the applied-for goods should the opposed mark be allowed to co-exist. As the Section 12(3) objection sustains, it is not necessary for the hearing officer to consider the opponent’s word mark ‘Festina’.
Kenny Leung is an in-house counsel at Wenping & Co. He can be contacted at:
Kenny@wenping.com.hk
102 World Intellectual Property Review September/October 2012
www.worldipreview.com
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