"FUBU"
Hong Kong
- Opposition
- Prior rights 
Jivan Industry Limited ("applicant") applied to register the mark "FUBU" in relation to "clothing, headgear and footwear" in class 25. The "FUBU" mark was accepted. GTFM ("opponent") opposed the acceptance of the application based on a claim to prior rights in the mark through use in Hong Kong under S.12 of our TMO, and by virtue of earlier registrations for the FUBU mark in the United States under S.23 of the TMO. The applicant denied the basis of the opposition.
The opponent filed evidence but the applicant declined to file evidence.
In particular, the opponent argued that it enjoyed rights to the "FUBU" mark in Hong Kong prior to the 10 December 1997 application date. The Registrar found as a matter of fact that the opponent has not satisfied the burden of establishing that its own "FUBU" mark was known to a substantial number of persons in Hong Kong prior to the application date. The Registrar noted that the opponent's mark had not been officially launched in Hong Kong and that it had not enjoyed any sells in Hong Kong. The Registrar dismisses the opponent's registrations for the mark in other countries as being no assistance in Hong Kong. The Registrar ruled that the mere presence of a web site, without proof that the Hong Kong public are familiar with it or that it is frequented by members of the Hong Kong public, is of no assistance to the opponent.
The opponent also sought to rely on the unique section 23 of the Hong Kong Trade Marks Ordinance ("TMO"). Section 23 affords protection to foreign trade marks in priority to a Hong Kong pending application. Section 23 requires that the opponent's foreign trade mark is registered in respect of the same or similar description of goods "in a country or place from which such goods originate". The Registrar noted that the phrase "in a country or place from which such goods originate" has been interpreted in the MAXIMS case1 Hunter J. noted that he did not have to look beyond the fact of registration to be satisfied as to where the goods are manufactured or whether there has been express evidence of use.
The Registrar noted that the remedy under section 23 was discretionary.
The Registrar noted that the applicant had not filed evidence of use of "FUBU" mark in Hong Kong.
The Registrar also noted that the opponent's mark had not been used in Hong Kong.
The applicant had explained the provenance of the suit mark in its counter statement. Nonetheless, since this assertain did not form part of the applicant's evidence and the opponent did not have the opportunity to cross-examine the applicant's representative there was no opportunity to verify the truth of the statement. Whilst the opponent claim that the applicant had blatantly copied the opponent's word mark "FUBU" there is no supporting evidence. Hence, no issue of dishonesty was raised by the opponent and the applicant did not need to answer this point.
Nonetheless, the Registrar re-iterated the rule that the opponent bears the burden of showing that the suits mark is registrable.
Whilst the examiner is not prepared to make a finding of this honesty she states that the possibility of appropriation of the opponents US marks cannot be discounted. The Registrar therefore exercise her discretion to refuse registration of the "FUBU" mark.
The application was refused and the applicant was ordered to pay the costs of the proceedings.
Decision of the Registrar of Trade Marks dated 14 January 2002 (unreported)
Observation: this is likely to be one of the last cases based on section 23 of the TMO, since the unique provision is not in Hong Kong's New Trade Mark Ordinance which came into effect in April 2003.
Decision of the Registrar of Trade Marks dated 14 January 2002 (unreported)
1. [1983] HKLR 287 at 299
