"SHIVA"

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

Shiva Corporation ("Applicant") applied for the trademark "SHIVA" under application no.1496/1996.  The Applicant claimed computer software and hardware for specific purposes in class 9.  The Registrar cited the trademark "SHIVAKI" which was registered under number 4064/1998.  The cited registration claimed a wide range of goods including "electric apparatus and instruments, calculating machines, data processing equipment, magnetic data carriers, recording disk" in class 9.  The Applicant requested an informal hearing to argue for the withdrawal of the citation.  The Applicant argued that the "SHIVA" mark was distinguishable because it referred to a Hindu god, it was visually and phonetically distinguishable from the cited "SHIVAKI" mark and because the cited mark had a distinctive Japanese connotation as evidenced by the use of the suffix "-KI".

The test is whether : "Assuming user by the proprietor of the cited mark "SHIVAKI" in a normal and fair manner for any of the goods covered by the registration of the mark, is the tribunal satisfied that that there will be no reasonable likelihood of deception or confusion amongst a substantial number of persons if the applicant also uses its mark "SHIVA in a normal and fair manner in respect of any goods covered by its proposed registration."The Registrar determined that the "SHIVA" and "SHIVAKI" marks were visually and phonetically similar and that the public would not distinguish any differences in the ideas of the marksThe Applicant also argued that the goods claimed were not of the same description as those claimed by the citation registration.  The Registrar decided that the claim to "electric apparatus and instruments" covered computers and that "calculating machines and data processing equipment" also covered "computers".  Whilst the Registrar determined that "software" and "computers" are different in nature he determined that the purpose of "software" and "computers" is the same and that they flow through the same trade channels.  Hence the goods were of the same description.The application for the "SHIVA" trademark was refused.

Decision of the Registrar of Trade Marks dated 14 November 2000 (unreported)