"SHIRLEY"

Hong Kong
- Registrability
- Likelihood of confusion
- Similarity of marks

 

An individual, Phornchi Hopitakkul ("Applicant") applied for the trade mark "SHIRLEY" under application no.421/1994.  This application was accepted and opposed by C.F.E.B. SISLEY ("Opponent").  The Opponent argued that their "sisley" mark was confusingly similar to the "SHIRLEY" mark. Both parties filed evidence from experts in linguistics to support their respective views.  The Applicant's evidence was an expert opinion annexed as an exhibit to the Statutory Declaration of the Applicant's solicitor.  There was no explanation as to why the expert could not give evidence directly by means of a Statutory Declaration.  Since the civil rules of evidence applied to Registry proceedings the expert's evidence was hearsay and was not admissible.

The test is whether : "Having regard to the user of "SISLEY" in respect of cosmetics, is the court satisfied that "SHIRELY", if used in a normal and fair manner in respect of cosmetics, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons?  May a number of people be caused to wonder whether the goods under the respective marks come from the same source?  Is there a real tangible danger of confusion if the applied for mark is put on the Register?"

The Registrar determined that the "SHIRLEY" and "sisley" marks were confusingly similar to an ordinary Hong Kong consumer who is a non-native English speaker with imperfect recognition.  The Registrar found that there was an aural similarity between the words which added to the apparent visual similarity between the words.

There was no evidence as to whether the price range of the cosmetics, whether the cosmetics were directed at a different market or whether the customers were likely to be different.  The Applicant was judged not to have discharged the onus of showing that purchasers of cosmetics would not be deceived.

It should be born in mind that the Applicant was not represented at the hearing.

Decision of the Registrar of Trade Marks dated 12 December 2000 (unreported)