"LOLITA"

Hong Kong
- Post Registration Issues
- Infringement and defences
- Non-use of trademark

 

Joseph-Marie Pividal ("Applicant") applied to rectify the Register by removing Agnes Trouble's ("Proprietor") trademark "LOLITA" registered under no.2482/1985.  The primary ground for cancellation was non-use.  The application for removal failed .

This case is notable for the strong criticism made of the evidence filed by the Applicant.  As is typical in Hong Kong applicants for removal typically engage an investigation firm to conduct market surveys to determine whether the registered mark had been used in the requisite five-year period.  The Applicant instructed a well known international firm which emphasized commercial investigations.  The Registrar heavily criticized the evidence.  It was noted that the four individuals who conducted the surveys of members of the cosmetic trade did not provide statutory declarations relating to the interviews.  The declaration was provided by an officer of the investigation firm ("Declarant") who did not apparently hold any position with the organisation during the time period when the investigations were conducted.  The Declarant had not indicated that he had spoken to any of the four investigators.  Further, the Declarant attached a report which had been signed on behalf of another person who had presumably reviewed the notes of the investigators.  The evidence was regarded as being third hand hearsay since neither the Declarant nor the compiler of the attached report personally took part in the investigation.  The Registrar confirmed that he is bound by the straight rules of evidence.

In reviewing the evidence the Registrar indicated that the declaration did not disclose whether the investigators spoke in English or Cantonese, whether their questions appeared to be understood or whether the investigators fully understood their replies.  It was not clear as to whether the interviewees who were approached personally were shown representations of the "LOLITA" mark.  This was regarded as being important since the visual clue can often assist in recognition.  Further, the Registrar was not satisfied that the interviewees were made aware that their answers were for the purposes of evidence in a tribunal and accordingly placed little weight on the evidence even if the evidence had been presented properly.  The Registrar also noted that few of the interviewees could be regarded as having any standing in the trade concerned for the requisite five-year period.  The Registrar regarded the evidence as unsatisfactory.

Although it was not necessary for the Registrar to consider whether the Proprietor had used the trade mark the Registrar did acknowledge that the Proprietor did make use of the trade mark even though there were no actual sale in Hong Kong at the requisite time.  The Registrar accepted that there was evidence that preparations were made for the sale of the "LOLITA " marked product in Hong Kong before the expiration of the relevant period together with actual sales after the expiry of the period.  The fact that sales took place after the relevant period went to the question of whether the Proprietor had a genuine intention to use the trade mark which was put into issue by the Applicant.  The application for removal failed.

Decision of the Registrar of Trade Marks dated 21 December 2000 (unreported)