"TM case summary - Guangzhou Guangxiang Enterprises Goup Co 6 jun 07

- I. D. 1. Similarity of Marks

 

Summary

Guangzhou Guangxiang Enterprises Group Co., Ltd. Double One Latex Factory (“the applicant”) applied to registered the trade mark “Double One, 11, with Chinese character” (“the suit mark”) in Class 9 in respect of industrial latex gloves for protection against accidents. The application was accepted for registration and published in the government gazette.

Zhangjiang Rongli Rubber Products Company Limited (“the opponent”) opposed the application. It claimed to be the proprietor of the trade mark “77 Double Seven & device” for plastic gloves for industrial purposes and gloves for protection against accidents. This mark was registered in China in Classes 9 and 21 and the opponent is applying in Hong Kong for registration for the same goods and classes.

The opponent argued that the suit mark nearly resembles and is confusingly similar to its marks. As such the registration of the suit mark should be refused under s.12 and 13 TMO.

The opponent averred that it has become one of the 500 largest private enterprises in mainland China and its mark has been extensively used since 1995. For that reason, it claimed under s.13 (1) TMO to be the proprietor of the Double Seven mark, so the applicant is not entitled to be registered as the proprietor of the suit mark.

According to Mila Schon Group SPA v Lam Fai Yuen 1998 ] 1 HKLRD 682, a claim to proprietorship arises only if the respective marks are identical or virtually identical. The Registrar compared the two marks side by side and found noticeable differences between them. Therefore, the marks were held not to be identical or virtually identical to each other. The objection under s.13 (1) failed.

The opponent further relied on s.12 (1) TMO. Under this head, it shall not be lawful to register as a trade mark, any matter the use of which would be likely to deceive or would be disentitled to protection in a court of justice.

In order to substantiate the claim, the opponent must establish that it has sufficient reputation in relation to its mark. The onus then shifts to the applicant to satisfy the Tribunal that there is no reasonable likelihood of deception arising among a substantial number of persons if the suit mark proceeds to registration.

The opponent submitted documents evidencing that they enjoyed substantial sales of goods under the mark between 1995 and 2002. The Registrar was satisfied that the opponent has established a reputation in its mark in the Hong Kong market for latex industrial gloves prior to the application date. As a result, the onus shifted to the applicant to show that the use of the suit mark will not be reasonably likely to cause deception amongst a substantial number of persons.

The Registrar applied the test set out in Smith Hayden & Co.'s Application (1946) 63 RPC 97. The test is whether having regard to the reputation of the opponent's mark in respect of latex industrial gloves is the Tribunal satisfied that the suit mark, if used in a normal and fair manner in respect of the specified goods, will not be likely to cause deception and confusion amongst a substantial number of persons? In other words, may a number of persons be caused to wonder whether goods under the respective marks come from the same source? Is there a tangible danger of confusion if the applied for the mark is put on the register?”

Having compared the opponent's mark and the suit mark as a whole, visually, aurally and conceptually, the Registrar found that the suit mark is similar to the opponent's mark. Moreover the applicant's goods are the same as the opponent's goods. In the circumstances, the Registrar concluded that the applicant had not discharged its onus of establishing that there is no reasonable likelihood of confusion or deception if the suit mark is put on the register.

The Registrar then considered the justification to exercise its discretion by virtue of s.22 TMO. The prerequisite was whether the applicant could establish that there was honest concurrent use or special circumstances.

On the evidence, the Registrar accepted that the applicant had used its mark at least since 1980s whilst the opponent had only begun to use its mark in Hong Kong since 1995. Further that the Registrar assessed that the sales volume of the applicant's goods in Hong Kong was more substantial than that of the opponent's. The Registrar concluded that a strong case of honest concurrent use had been made out and there are special circumstances which make it proper to exercise its discretion to permit registration by the applicant of the suit mark.

The Registrar found in favor of the applicant with costs to the applicant.

Decision of the Registrar of Trade Marks (unreported) - 6 June 2007

Decision may be found at:
http://www.ipd.gov.hk/eng/intellectual_property/trademarks/trademarks_decisions/decision/DEC200015768OP.pdf

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There was a mirror opposition by Guangzhou Guangxiang Enterprises Group Co., Ltd. Double One Latex Factory (the opponent)against Zhanjiang Rongli Rubber Products Company Limited's (the applicant) application for the mark “Double Seven” in Class 21. The opponent based its opposition on prior rights in the mark.

The Registrar found that the and marks are similar.

The registrar was not satisfied that the concurrent use of the suit mark (“Double Seven” mark) was honest so held in favor of the opponent.

Decision of the Registrar of Trade Marks (unreported) - 6 June 2007

http://www.ipd.gov.hk/eng/intellectual_property/trademarks/trademarks_decisions/decision/DEC200209743OP.pdf