"BANSEOXJA 变色鳄世家"

Hong Kong
- Opposition

 

Summary

Wong Yuet Mei (the “applicant”) applied to register the trade mark “BANSEOXJA 变色鳄世家” for leather footwear, clothing and headgear in class 25 (the “Mark”) under the Trade Marks Ordinance Cap 559 (the “Ordinance”).

The Mark was accepted after examination and was advertised in the Government Gazette. Crocodile Garments Limited (the “opponent”) objected to the registration of the Mark on the basis that the Mark is similar to the opponent's registered "鱷魚", "鱷魚恤", "鱷魚格格" and “crocodile” trade marks (the opponent's marks”) and the use of the Mark is likely to cause confusion on the part of the public.

The key issues were 1) whether the Mark is similar to the opponent's marks? 2) whether the goods claimed by the applicant are identical or similar to the goods claimed by the opponent? 3) whether the use of the Mark in relation to those goods is likely to cause confusion on the part of the public?

Having compared the goods concerned in both marks, the Registrar found that there is a high degree of similarity between the applicant's goods and the goods and services for which the opponent's marks are registered.

In determining whether the Mark is similar to any of the opponent's marks, the Registrar applied the “global appreciation” test as laid out in Sabel BV v Puma AG [1998] R.P.C. 199 where the marks are assessed globally, taking into account all relevant factors in determining whether there is a likelihood of confusion between the Mark and the opponent's marks.

Regarding the aural comparison, the Registrar found that the Mark and the opponent's marks are different since both marks have different pronunciation (“Banseoxja” compared with “crocodile”).

On the visual comparison, the Registrar also found that the overall appearance of the applicant's “BANSEOXJA 变色鳄世家” and the opponent's "鱷魚", "鱷魚恤", "鱷魚格格" and “crocodile” trade marks are completely different.

Conceptually, the Registrar assessed that the opponent's registered trade marks convey the idea of a crocodile. On the other hand, the Registrar believed that the first three characters of the Mark conveyed the idea of a chameleon and not simply of a crocodile. The Registrar concluded that the idea conveyed by the Mark and the opponent's marks are different.

Having compared the Mark and the opponent's marks, the Registrar found that both marks are aurally, visually and conceptually different, even allowing for imperfect recollection.

Not surprisingly the Registrar concluded that since both marks are aurally, visually and conceptually different, there is little or no likelihood of consumers being confused into believing that the goods provided by the applicant are those of the opponent. The Registrar therefore allowed the registration of the Mark.

Decision of the Registrar of the Trade Marks dated 7 June 2006 (unreported)