"audio pro & Device"

Hong Kong
- Proprietorship objection
- Comparison between composite mark and word only mark

 

Summary

Audio Pro Aktiebolag of Sweden ("Applicant") applied for the trademark "audio pro & Device" under application no.13820/95 (the "Suit Mark"). The Suit Mark was accepted subject to a disclaimer of the words "audio pro". The Applicant claimed "Apparatus for recording, transmission or reproduction of sound or images; stereo components, amplifiers, loudspeakers, sub woofers and carbinets for loudspeakers;" amongst other things in class 9. These goods are identical or of the same description as the goods for which United China Electronics (H.K.) Co. Ltd's ("Opponent") registered mark "PROAUDIO" and unregistered mark "AUDIOPRO" are used.

The Opponent sought to rely on the registration and use of its trade mark "PROAUDIO" and "AUDIOPRO" in the opposition. The Opponent's "PROAUDIO" registration had a priority date of 28 June 1995. This was about four months before the 31 October 1995 filing date of the Suit Mark. The Opponent argued that by reason of the prior registration of its "PROAUDIO" mark, the Suit Mark would be prohibited under s20(1) Trade Marks Ord. (Cap.43, Laws of Hong Kong) ("Old TMO") and the Applicant could not claim to be the proprietor.The Applicant filed evidence to show that the Suit Mark was used in Hong Kong before both the Opponent's marks. The Registrar was of the view that it was significant that the applicant was in fact the first user of the "audio pro" mark, in Hong Kong even though no evidence of sales was provided by the Applicant in Hong Kong for more than 3 years immediately prior to the application date.Both parties filed evidence. The Applicant did not attend the hearing nor did it file any written submission. The Applicant was content to rely only on the evidence filed. The Applicant had proven sales records, notwithstanding the limited amount of use of the trade mark in Hong Kong prior to the Opponent's registration of "PROAUDIO" mark.

There was no evidence of the Applicant's sales in Hong Kong for more than 3 years immediately prior to the application date. Nonetheless, the Registrar accepted that the non-use by the Applicant was due to a sale of the trade mark and related intellectual property to Go-Gro Industries Ltd., a Hong Kong company in 1993. This company became the common law proprietor of the Suit Mark. It was not until 2 weeks before the 1995 Application date that the exclusive right to was assigned from G-Gro back to the Applicant.

Analysis

1. s13(1) - proprietorship objection
   
   For a proprietorship objection to arise at all the Opponent must show that the suit mark is virtually identical to the opponent's mark and is for identical goods. After a side-by-side comparison, the Registrar was satisfied that the "PROAUDIO" mark is dissimilar or not virtually identical to the Suit Mark.
   
   The Suit Mark has been used as a mark. It is clear from prior cases that any claim to proprietorship has to be determined as a matter of legal right. That is, it depends on the first use (namely, who first uses the mark in relation to goods to identify that trader's goods from those of the other traders). As a matter of fact, the Registrar was satisfied that the Applicant was the first user of the Suit Mark in Hong Kong. Therefore the Applicant was judged to be the rightful proprietor of the Suit Mark. The use did not need to be sufficient to acquire a market reputation in Hong Kong.
   
   The Opponent's assertion that the Suit Mark had been abandoned was dismissed. The Applicant was judged to be the rightful proprietor of the suit mark. The opposition under this ground was defeated.
   
2. Comparison between a composite mark and a word only mark
   
   Before considering whether there is a near resemblance of the marks (and if so, is deception or confusion likely?), the Registrar determined that the objection under s20(1) of Old TMO should not be restricted to the residue that is left after disclaimers.
   
   The Registrar examined in detail the difficulty of comparing a composite mark with a word only mark. It is trite law that words are more readily recalled than devices. The Registrar, by way of example, explained the basis for comparing a composite mark and a word only mark, namely:
   

   1. [when] a device comprising a pictorial representation of the word element, [which] may reinforce the word, the device will generally be recalled as part of the trade mark; however
   2. 'when the device is either so lacking in eye appeal that it is immediately forgotten, or so abstract as to be incapable of mental classification and therefore, again, immediately forgotten. [... and when] there is no natural way that the device can enter into any oral or written reference to the suit mark. It does not qualify, add to, or combine with the words "audio pro" in any way so as to produce, in speech, a concept other than "audio pro" simpliciter. There is no evidence at all of what the device does or might signify to the purchasing public'. As the suit mark in this case, "audio pro & Device" (i.e. a composite mark) will be recalled as "audio pro" either in writing or in speech. It is on this basis that the comparison between the competing marks should be undertaken.
      
      
3. First impression, imperfect recollection and likelihood of deception
   
   The Registrar observed that the first impression test (namely, whether one word too nearly resembles another must always depend on the first impressions) applies to both aural confusion and also but is equally applicable to conceptual confusion. The Registrar judged that the word order of the Suit Mark ("audio pro") and the Opponent's registered mark ("PROAUDIO") is entirely interchangeable and nothing about the variation in word order creates a memorable conceptual distinction between the marks.
   
   The Registrar then applied the imperfect recollection test, namely whether the average consumer who only knows the Suit mark, and has perhaps only an imperfect recollection of it, would be liable to think that it was the same as or related to the Opponent's registered mark ("PROAUDIO").
   
   The Registrar found that the Suit Mark and the "PROAUDIO" mark must be considered as nearly resembling each other.
   
   The Registrar then considered the degree of deception or confusion necessary to be regarded as a real tangible danger of confusion. The Registrar was satisfied that the relevant deception and confusion need not lead a purchaser to being deceived or buying the wrong trader's goods; nor amount to a passing-off of the applicant's goods as those of the opponent. It is sufficient that an ordinary purchaser of average intelligence, having exercised normal care, entertains a reasonable doubt or being put in a state of doubt or uncertainty as to whether the Applicant's goods were made by the Opponent or whether it might not be the case that the those goods come from the same source.
   
   Apart from the price shown in the invoices for the Applicant's and Opponent's goods, there were no further evidence relating to trade channels filed by the parties. Therefore the Registrar, in considering the likelihood of deception or confusion, found that it is 'unsafe' to conclude that both the Applicant's and Opponent's goods will never enter the same trade channels and be directed at the same market.