"Lavinci & Device"

Hong Kong
- Likelihood of confusion
- Similarity of marks

 

Summary

EASTCO INTERNATIONAL INVESTMENT LIMITED (“the applicant”) applied to register the trade mark LAVINCI with a device (“the suit mark”), for goods in classes 3, 18 and 25 on 2 March 2004. ESCADA AKTIENGESELLSCHAFT (“the opponent”) filed a notice of opposition to the registration and the hearing took place on 29 March 2007.

The opponent is the owner of the Double E logo marks for goods in class 3 and class 25. These marks were filed earlier than the suit mark and were registered in 1994.

The opposition was based on s.12 (3) TMO which is similar in effect to s. 5 (2) of the UK Trade Marks Act 1994 which implemented Article 4 (1) (b) of the First Council Directive 89/104 of 21 December 1998of the Council of the European Communities. Section 12 (3) TMO prohibits the registration of a trade mark which would be likely to cause confusion on the part of the public as a result of it being similar to an earlier mark and because it is intended to be registered in respect of goods or services the same as or similar to those subject of the earlier mark.

The registrar applied the global appreciation test set out in Sabel BV v Puma AG AG [1998] RPC 199. The global appreciation of the visual, aural or conceptual similarities of the marks in question must be based on the overall impression given by the marks to the average consumer bearing in mind the distinctive and dominant components of the marks. The Registrar accepted that words “speak louder” than devices in a composite mark. An average customer is considered to be reasonably well-informed, observant and circumspect and someone who normally perceives a mark as a whole and does not proceed to analyze its various details.

A lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods and vice versa. Mere association is not enough. It must cause the public to wrongly believe that the respective goods come from the same or economically linked undertakings.

Comparing the marks as a whole the Registrar maintained that the average consumer would be unlikely to be confused.

The Registrar further considered the distinctiveness of the opponent's mark. Under the Sabel v Puma test, the more distinctive an earlier mark, the greater will be the likelihood of confusion. Factors taken into account are, the market share held by the mark; how intensive, geographically widespread and long standing use of the mark has been; the amount spent on promotion of the mark and how the consumer perceive the mark. The opponent tried to prove reputation by submitting evidence on the extensive use of the mark going back to 1994. However, the Registrar noted that the evidence did not provide a geographical breakdown on the sales and advertising figure on individual market. Therefore it was unclear whether the use was in Hong Kong . Besides, there is also no independent evidence of the reputation of those marks by way of consumer survey or statement chambers of commerce or trade associations. The Registrar found that the opponent had not established that the Double E logo marks enjoyed reputation in Hong Kong and the distinctiveness of those marks has not been enhanced through use.

The opponent further relied on s.12 (5) TMO. Under this head the subject mark shall not be registered if its use in Hong Kong is liable to be prevented by the law of passing off. In considering the opponent's evidence as a whole, the Registrar was not satisfied that the opponent has established goodwill in the Hong Kong market. Since the degree of similarity between the subject mark and the opponent's mark is low, the public would unlikely be confused into believing that goods bearing the subject mark offered by the applicant are goods of the opponent. The element of misrepresentation is therefore not made out. It follows that the opponent is unlikely to suffer damage as a result. Hence passing off could not be established.

The opponent also argued that it was entitled to protection under the Paris Convention as a well-known trade mark. However, the Registrar determined that the opponent failed to establish that the Double E logo marks were well known in Hong Kong at the relevant date since no information was given about the degree of knowledge or recognition of these marks in any relevant sector of the public.

The Registrar also found no real evidence to support the opponent's claim that the use of the suit mark would take unfair advantage of, or be detrimental to the distinctive character or repute of the Double E logo marks. The claim cannot be made merely by assuming from the fact that the earlier mark has a substantial reputation.

Finally, the opponent alleged that the application for registration of the subject mark was made in bad faith. Bad faith is a serious allegation and dishonesty must be proved on the part of the applicant. The test is any dealing made was fall short of the standards of acceptable commercial behavior observed by reasonable and experience men in the trade.

The opponent argued that the applicant deliberately adopted a logo similar to that of the opponent's Double E logo marks and thereby took unfair advantage of the opponent's reputation. The Registrar totally rejected this argument because it was found that the device element in the suit mark was derived from the applicant's first draft logo. The applicant was not dishonest because no materially false statement was made in its application form.

As a result, the Registrar concluded that all the oppositions failed and awarded the applicant costs.

Decision of the Registrar of Trade Marks 28 June 2007 (unreported)