TRADE MARKS ORDINANCE (Cap. 559)
APPLICATION NO.
: 301847179AA
MARK
:
APPLICANT
: TRANSISTOR DEVICES CHINA LIMITED
CLASSES
: 9 and 38
____________________________________________________________________
STATEMENT OF REASONS FOR DECISION
Background
1.
On 2 March 2011 (“the date of application”), TRANSISTOR DEVICES
CHINA LIMITED (“the applicant”) filed an application for registration of the
mark shown below (“the subject mark”) under the Trade Marks Ordinance
(Cap. 559) (“the Ordinance”), under the application number 301847179 (“the
original application”).
2.
Registration of the subject mark is sought in respect of goods in Class 9 and
services in Classes 38 and 42 by the original application.
3.
At the examination stage, objection was raised against the original application
with respect to the goods and services applied for in Classes 9 and 38 under
section 12(3) of the Ordinance on the basis of the following registered trade
marks (“the cited marks”):
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Cited Mark A
Trade mark
:
Registration no.
:
Date of registration :
300581120
15 February 2006
Cited Mark B
Trade mark
:
Registration no.
:
Date of registration :
301500399
16 December 2009
Cited Mark A is registered in respect of “cable; batteries; battery chargers;
headphone; solar batteries” in Class 9 and “communications by telephone” in
Class 38. Cited Mark B is registered in respect of “光學，開關，調節或控制
電 的 儀 器 和 器 具 ” (optical apparatus and instruments, apparatus and
instruments for switching, regulating or controlling electricity) in Class 9 and
“照明裝置” (apparatus for lighting) in Class 11. For Cited Mark B, only goods
in Class 9 are cited against the subject mark.
4.
The original application was subsequently divided into two divisional
applications. One of the divisional applications covers the goods and services
applied for in Classes 9 and 38 (application number 301847179AA), namely,
“Scientific, nautical, surveying, photographic, cinematographic, optical,
weighing, measuring, signaling, checking (supervision), life-saving and
teaching apparatus and instruments; apparatus and instruments for conducting,
switching, transforming, accumulating, regulating or controlling electricity;
apparatus for recording, transmission or reproduction of sound or images;
magnetic data carriers, recording discs; automatic vending machines and
mechanisms for coin operated apparatus; cash registers; calculating machines,
data processing equipment and computers; fire-extinguishing apparatus; all
included in Class 9” and “Telecommunications” respectively (the goods
applied for in Class 9 and the services applied for in Class 38 are hereinafter
referred to as “the goods applied for” and “the services applied for”
respectively, and collectively, as “the goods and services applied for”). The
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other covers the services applied for in Class 42 (application number
301847179AB).
The divisional application of application number
301847179AB proceeded to registration.
5.
The applicant filed a statutory declaration at the examination stage to show that
there had been honest concurrent use of the subject mark. Despite the filing
of such evidence, the objection under section 12(3) was maintained.
6.
On 30 August 2013, the Registrar of Trade Marks (“the Registrar”) issued a
notice of his decision to refuse the subject application under rule 91(1) of the
Trade Marks Rules (Cap. 559A) (“the Rules”). Pursuant to rule 91(2) of the
Rules, the agent for the applicant, T. C. Foo & Co. (“the agent”), requested a
statement of reasons for the Registrar’s decision. The statement of reasons is
now given as follows.
The Ordinance
7.
Section 12(3) of the Ordinance reads as follows:
“A trade mark shall not be registered if –
(a) the trade mark is similar to an earlier trade mark;
(b)
(c)
8.
the goods or services for which the application for registration is
made are identical or similar to those for which the earlier trade
mark is protected; and
the use of the trade mark in relation to those goods or services is
likely to cause confusion on the part of the public.”
As to the meaning of “earlier trade mark” as referred to in section 12(3), the
relevant part of section 5 of the Ordinance states:
“(1) In this Ordinance, “earlier trade mark” (在先商標), in relation to
another trade mark, means –
(a) a registered trade mark which has a date of the application for
registration earlier than that of the other trade mark, taking into
account the priorities claimed in respect of each trade mark, if
any…”
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The dates of application for registration of the cited marks are earlier than that
of the subject mark. The cited marks therefore constitute “earlier trade
marks” in relation to the subject mark by virtue of section 5 of the Ordinance.
9.
Another section to consider is section 7(1) of the Ordinance which throws light
on how subsection (c) of section 12(3) is to be interpreted. It provides that :
“For greater certainty, in determining for the purposes of this Ordinance
whether the use of a trade mark is likely to cause confusion on the part of
the public, the Registrar or the court may take into account all factors
relevant in the circumstances, including whether the use is likely to be
associated with an earlier trade mark.”
Section 12(3) of the Ordinance
10. In interpreting Article 4(1)(b) of the First Council Directive 89/104/EEC of 21
December 1988 issued by the Council of the European Communities, which is
broadly similar to section 12(3) of the Ordinance, the European Court of
Justice laid down the basic principles for the assessment of similarity between
marks and the likelihood of confusion between them. These principles are set
out in the cases of Sabel BV v Puma AG [1998] R.P.C. 199, Lloyd Schuhfabrik
Meyer & Co. GmbH v Klijsen Handel BV [2000] F.S.R. 77 and Canon
Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. [1999] R.P.C. 117 and adopted
in Guccio Gucci SpA v Gucci [2009] 5 HKLRD 28. These principles are:
(a) The likelihood of confusion must be appreciated globally, taking account
of all the relevant factors.
(b) The matter must be judged through the eyes of the average consumer of
the goods in issue, who is deemed to be reasonably well informed and
reasonably observant and circumspect.
(c) In order to assess the degree of similarity between the marks concerned
one must determine the degree of visual, aural or conceptual similarity
between them and, where appropriate, evaluate the importance to be
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attached to those different elements taking into account the nature of the
goods in question and the circumstances in which they are marketed.
(d) The visual, aural and conceptual similarities of the marks must therefore
be assessed by reference to the overall impressions created by the marks
bearing in mind their distinctive and dominant components. The
perception of the marks in the mind of the average consumer plays a
decisive role in the overall appreciation of the likelihood of confusion.
(e) The average consumer normally perceives a mark as a whole and does not
proceed to analyse its various details.
(f)
There is a greater likelihood of confusion where the earlier trade mark has
a highly distinctive character, either per se or because of the use that has
been made of it.
(g) The average consumer rarely has the chance to make direct comparisons
between marks and must instead rely upon the imperfect picture of them
he has kept in his mind; further the average consumer’s level of attention
is likely to vary according to the category of goods in question.
(h) Appreciation of the likelihood of confusion depends upon the degree of
similarity between the goods. A lesser degree of similarity between the
marks may be offset by a greater degree of similarity between the goods,
and vice versa.
(i)
Mere association, in the sense that the later mark brings the earlier mark
to mind, is not sufficient for the purpose of the assessment.
(j)
But the risk that the public might believe that the respective goods come
from the same or economically linked undertakings does constitute a
likelihood of confusion within the meaning of the section.
11. In determining whether registration of the subject mark is prohibited under
section 12(3) of the Ordinance, I have to consider whether the subject mark
would likely cause confusion on the part of the public, as a result of it being
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similar to the earlier trade marks and that it is sought to be registered in respect
of goods and services the same as or similar to those registered under the
earlier trade marks. I must therefore examine whether there are similarities
between firstly, the subject mark and each of the cited marks and secondly, the
goods and services covered by the trade marks and then consider whether such
similarities (if any) are likely to lead to confusion by the public.
Comparison of marks
12. A comparison of the marks concerned has to be based on an overall
appreciation of the visual, aural and conceptual similarities of the marks in
question, taking into account the overall impressions given by the marks, and
bearing in mind, in particular, their distinctive and dominant components.
13. In comparing the marks, I shall consider the perception of the marks in the
mind of the average consumer of the goods and services in question. The
goods applied for cover a wide range of goods relating to electronics and the
use thereof, those that control the distribution and use of electricity, and items
used for scientific or research purposes. These goods can vary in scale and
complexity, and be used for different purposes. The relevant consumers of
these services include members of the general public as well as people in the
trade in Hong Kong. The services applied for, “telecommunications”, also
apply to a wide variety of consumers, including the vast majority of members
of the public. These relevant consumers are deemed to be reasonably well
informed and reasonably circumspect and observant.
14. The subject mark consists of a device and the words “TDI POWER”. The
letters “TDI” are in bold and the words are purple in colour. The device
consists of three identical green and purple curved bands arranged to envelop
the letters “TDI”. The applicant has claimed colours green and purple as
elements of the subject mark.
15. As mentioned above, the goods applied for cover a wide range of products
relating to electronics, electricity and scientific and research purposes and the
services are telecommunications. The letters “TDI” are situated at the
beginning of the subject mark and are inherently distinctive of the goods and
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services applied for. The word “POWER” describes the characteristics of the
goods and services applied for are either made or provided (as the case may be)
for supply of energy or to facilitate the supply and transmission of energy. It
may also be perceived as a laudatory term to denote the goods and services
applied for possess particular strengths. The word is therefore a highly
indistinctive element which will not leave a particular impression on the
relevant consumers.
16. Cited Mark A consists of the words “TDI Telecom” in plain fonts. Cited
Mark B consists of the words “TDI Lighting” in plain fonts. No colour
claims have been made in respect of the cited marks.
17. The cited marks can be used in any colour.
The colour claim in respect of the
subject mark is therefore of little significance in terms of offering assistance to
distinguish it from the cited marks. Both of the cited marks consist of the
letters “TDI” as their respective frontal parts. The letters are inherently
distinctive of the cited goods and services.
18. “Telecom” is a short-form for telecommunications (The Collins English
Dictionary). With respect to the cited goods “cable; batteries; battery chargers;
headphone; solar batteries” and cited services “communications by telephone”,
“Telecom” designates the characteristics of the goods, which are related to
telecommunication, and the nature of the services concerned. Similarly,
“Lighting” in Cited Mark B describes the nature of its goods, which serve or
facilitate the purpose of illumination. In both instances, “Telecom” and
“Lighting” are highly indistinctive and do not form the focus of the consumers’
attention.
19. Turning back to the comparison between the subject mark and each of the cited
marks, I must assess the visual, aural and conceptual similarities of the marks,
taking into account the overall impressions given by the marks, and bearing in
mind, in particular, their distinctive and dominant components.
20. Visually, the device in the subject mark is, to a certain degree, distinctive on its
own. However, since words speak louder than devices, the relevant
consumers are likely to pay greater attention to the letters “TDI”. As
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discussed above, the words “POWER” in the subject mark and “Telecom” and
“Lighting” in the respective cited marks are highly indistinctive of their goods
and/or services. The letters “TDI” are the most distinctive and dominant
element in each of the cited marks and the subject mark. The subject mark
and the cited marks all share the same distinctive and dominant element.
Visually, the subject mark and each of the cited marks share a substantial
degree of similarity.
21. Aurally, the only difference between the subject mark and the cited marks
attributes to the words “POWER” in the subject mark and “Telecom” and
“Lighting” in the respective cited marks. In view of the descriptiveness of
these words, the subject mark and each of the cited marks would be referred to
by the same distinctive and dominant element, i.e.“TDI” in speech. Therefore,
the subject mark and each of the cited marks are highly similar in this respect.
22. Conceptually, the device of the subject mark does not invoke any particular
concept. As regards the words “POWER”, “Telecom” and “Lighting”, in
view of their descriptiveness, they also do not have an impact on the overall
impressions of the subject mark and the cited marks respectively. All marks
concerned share the same distinctive and dominant element. The subject
mark and each of the cited marks share a high degree of conceptual similarity.
23. Taking into account the visual, aural and conceptual similarities between the
subject mark and each of the cited marks as well as the differences between
them as a whole, and bearing in mind the perception of the average consumer
of the goods and services in question, I find the subject mark and each of the
cited marks to be substantially similar to each other.
Comparison of goods and services
24. In British Sugar Plc v James Robertson and Sons Ltd [1996] R.P.C. 281 (at
pages 296-7), Mr. Justice Jacob (as he then was) found that the following
factors were relevant in considering the similarities between the goods and/or
services at issue:
(a) the respective uses of the respective goods or services;
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(b) the respective users of the respective goods or services;
(c) the physical nature of the goods or acts of services;
(d) the respective trade channels through which the goods or services reach
the market;
(e) in the case of self-serve consumer items, where in practice they are
respectively found or likely to be found in supermarkets and in particular
whether they are, or are likely to be, found on the same or different
shelves; and
(f)
the extent to which the respective goods or services are competitive.
This inquiry may take into account how those in trade classify goods, for
instance whether market research companies, who of course act for
industry, put the goods or services in the same or different sectors.
25. It was also held in Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc.,
supra, that in assessing the similarity of the goods or services concerned, all
the relevant factors relating to those goods or services themselves should be
taken into account. Those factors include, inter alia, their nature, their end
users and their method of use and whether they are in competition with each
other or are complementary.
26. The goods and services applied for and the cited goods and services have been
stated above. At the examination stage, it was pointed out to the applicant
that the goods and services applied for were similar to the cited goods and
services. In this connection, the agent submitted that the applicant’s goods
and services of interest are “‘Mercury bulk DC power supplies, used for
powering telecommunications systems, and LCE pure sine wave inverters,
which are used to generate high quality AC power’ in Class 9 and ‘Mercury
bulk DC power supplies, used for powering telecommunications systems’ in
Class 38”. The applicant was informed of the deficiencies in such
classification of goods and services and they were still objectionable.
The
applicant did not seek any amendment to the specification.
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27. “Telecommunications” services of the subject mark essentially cover services
providing communications over a distance by means of telecommunication
devices, such as telephone and radio. These services are inclusive of
“communications by telephone” of Cited Mark A. The services applied for
are identical to the cited services.
28. “Apparatus and instruments for conducting, switching, transforming,
accumulating, regulating or controlling electricity” of the goods applied for are
either identical or share a high degree of similarity to the cited goods
“apparatus and instruments for switching, regulating or controlling electricity”
of Cited Mark B. These goods applied for are also either highly similar or
identical to the cited goods “batteries and solar batteries”, being goods for
storage of electrical energy, and “battery chargers”, being the medium through
which batteries are recharged, of Cited Mark A. The “goods of interest” of
the applicant are essentially apparatus for purposes of storing electrical power
and regulating or converting electrical output. They would also have either
been identical or highly similar to the abovementioned cited goods of both
cited marks had the specification been duly amended.
29. “Optical apparatus and instruments” of the goods applied for are identical to
the cited goods “optical apparatus and instruments” of Cited Mark B. Being
articles principally for capturing still or moving images, “photographic and
cinematographic apparatus and instruments” of the goods applied for are also
highly similar to and their uses are complementary with these cited goods,
which include instruments such as lenses for focusing lights onto cameras or
video cameras to form images.
30. With respect to the cited services “communications by telephone” of Cited
Mark A, providers of communication services often make available to
customers through the same trade channels communication apparatus and
instruments, including telecommunication and telephone devices. It is noted
that telephone devices nowadays are not used to communicate strictly via audio
signals. Telephones, in particular mobile phones, are able to take photographs,
record videos or audio signals that can then be transmitted over a distance.
They are multi-functional devices serving purposes of goods falling within
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“apparatus for recording, transmission, or reproduction of sound or images” of
the applicant. These goods and services complement each other, and afford
the customers comprehensive solutions to their communication needs. The
cited services and the goods applied for are similar.
31. As to the other goods applied for in Class 9, they consist of a wide range of
electronic or mechanical goods. These goods applied for, such as “scientific,
nautical, surveying, weighing, measuring, signaling, checking (supervision),
life-saving and teaching apparatus and instruments; calculating machines, data
processing equipment and computers”, are often sold together with accessories
such as cables, batteries and battery chargers and are required to be used with
these accessories. These goods applied for are very often designed to be
compatible with their accessory products, and they are complementary with the
cited goods “cable, batteries, battery chargers” offered under Cited Mark A.
These goods applied for and such accessory products are often produced by the
same undertakings. They are often available at the same trade channels and
target the same consumers. These goods applied for are therefore similar to
the cited goods of “cable, batteries, battery chargers”.
32. Taking into account all relevant factors referred to in paragraphs 24 and 25
above, I find that the goods and services applied for are either identical or
similar to most of the goods and services protected by the respective cited
marks.
Likelihood of confusion
33. Under section 12(3) of the Ordinance, likelihood of confusion refers to
confusion on the part of the public as to the trade origin of the goods in
question. This is a matter of global appreciation taking into account all
relevant factors and judging through the eyes of the average consumer of the
goods at issue.
34. As stated above, the relevant consumers of the goods and services applied for
include members of the general public as well as people in the trade. It
should also be noted that the average consumer rarely has the chance to make a
direct comparison between the different marks but must rely upon his
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imperfect recollection of marks.
35. I have already found that the subject mark and each of the cited marks are
substantially similar and the goods and services applied for and the cited goods
and services are either identical or similar. In assessing the likelihood of
confusion, I have to be mindful of the principle established in the case of
Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc., supra, that a lesser
degree of similarity between the marks may be offset by a greater degree of
similarity between the goods or services, and vice versa.
36. The agent submitted that “the term ‘TDI’ has already been common in the
[r]egister in the name of different proprietors in Class 9” and “a common
occurrence in the market does not automatically render the marks to become
unregistrable”. I see nothing to substantiate the agent’s argument that the
“TDI” element is a “common occurrence” in the register, and hence, in the
actual market. The mere fact that the cited marks are concurrently on the
register is irrelevant to the question I have to consider, namely, whether there is
any likelihood of confusion on the part of the public if the subject mark is to be
registered for the goods and services as applied for.
37. Further, the agent submitted that since the cited marks co-exist on the register,
the subject mark should also be accepted for registration. It is well
established that each case must be considered on its own merits. Comparison
with other marks on the register is in principle irrelevant when considering a
particular mark tendered for registration (British Sugar Plc v James Robertson
& Sons Ltd, supra). The acceptances of the cited marks for registration do
not assist the subject application.
38. Having regard to the substantial degree of visual, aural and conceptual
similarities between the subject mark and each of the cited marks, the identity
or similarity (as the case may be) of the goods and services involved, and
bearing in mind the principles set out in paragraph 10 above and all relevant
factors, I consider that when the subject mark is used in relation to the goods
and services applied for, the average consumer would be confused into
believing that the goods and services provided under the subject mark and
those goods and/or services provided under each of the cited marks (as the case
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may be) come from the same or economically-linked undertakings.
39. In the premises, the registration of the subject mark is objectionable under
section 12(3) of the Ordinance.
Honest concurrent use
40. On 6 September 2012, the applicant also filed a statutory declaration of Wong
Hun, a director of the applicant, made on 23 August 2012 (“the statutory
declaration”) to show the use of the subject mark. I therefore now go on to
consider whether registration of the subject mark could nonetheless be allowed
by virtue of honest concurrent use or other special circumstances under section
13 of the Ordinance. The relevant provision under section 13(1) reads as
follows:“Nothing in section 12 (relative grounds for refusal of registration)
prevents the registration of a trade mark where the Registrar or the court is
satisfied(a) that there has been an honest concurrent use of the trade mark
and the earlier trade mark or other earlier right; or
(b) that by reason of other special circumstances it is proper for the
trade mark to be registered.”
Section 13(1)(a) of the Ordinance
41. As stated in Re CSS Jewellery Co. Ltd. [2010] 2 HKLRD 890 at paragraph 35,
the assessment of honest concurrent use under section 13(1)(a) of the
Ordinance involves the following two-stage determination:
(a) whether there has been an honest concurrent use of the subject mark and
the earlier trade mark;
(b) if the answer is in the affirmative, whether after considering all relevant
circumstances, including public interest, the Registrar’s discretion should
be exercised to accept the application for registration of the mark, despite
the fact that the use of the mark in relation to the goods or services in
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question is likely to cause confusion on the part of the public.
42. The applicant’s evidence for the purpose of establishing honest concurrent use
comprises the statutory declaration which includes seven exhibits.
43. The point of time for assessing honest concurrent use in the current case is the
date of application. What I have to consider is therefore whether the
applicant has established that there has been honest concurrent use of the
subject mark and the cited marks as at the date of application.
Stage 1
44. To pass the first stage examination as stated in Re CSS Jewellery Co. Ltd.,
supra, the applicant needs to establish three matters, namely, (a) there was use
of the subject mark in respect of the goods and services applied for in Hong
Kong; (b) such use was made concurrently with the cited marks; and (c) such
concurrent use was honestly made.
45. According to the statutory declaration, the applicant has used the subject mark
continuously since mid-2008 in Hong Kong in respect of the goods and
services applied for.
46. Paragraph 5 of the statutory declaration stated that the annual sales value or
business turnovers of the applicant from 2008 to 2011 range from over
US$16,000,000 to over US$40,000,000, equivalent to over HK$124,000,000 to
over HK$310,000,000. The figures are from extracts of the applicant’s
directors’ report and audited financial statements of the respective financial
years, as produced in “Exhibit WH-3”. On the other hand, I also note that the
directors’ reports stated that “the principal activity of the company is sale of
power supply equipment purchased from its subsidiary”.
47. It can be seen that there is reference to the sale of “power supply equipment” in
“Exhibit WH-3” which falls within “apparatus and instruments for conducting,
switching, transforming, accumulating, regulating or controlling electricity” of
the goods applied for. However, the scale of such sales is unknown.
Information from “Exhibit WH-3” does not show which part of the sales
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attributes to which part of the goods or services applied for in Hong Kong.
Taking the statement in the directors’ reports as referred to above together, the
sales value may largely relate to the sales of “power supply equipment” only.
48. Mr. Wong produced at “Exhibit WH-4” copies of invoices for the sale of the
applicant’s goods between May 2008 and February 2011. The invoices very
often use abbreviations or codes to denote the goods concerned. They are not
entirely articulate about the precise goods being sold. I am not provided with
explanation on to what goods these invoices relate, although a handful of
invoices are printed with the words “POWER SUPPLY”. The invoices
appear to further support that the applicant is engaged in the sale of “power
supply equipment”. Nevertheless, paragraph 5 of the statutory declaration
stated that the sales of the goods or services applied for included export from
and use outside Hong Kong. In addition, all of the invoices show shipping
and billing addresses outside Hong Kong. This suggests that the goods were
primarily for export to customers outside Hong Kong.
49. Copies of some undated photographs displaying samples of the applicant’s
goods have been submitted under “Exhibit WH-5”. The photographs include
those of packaging cardboard boxes and metal compartments with labels
adhered on their surfaces. The subject mark is displayed on these articles.
While I am presented with no explanation on what these metal products are,
some of the labels in the photographs are clear enough to indicate that they are
various power supply systems and their accessory parts.
50. Copies of some undated pamphlets and a single webpage of the applicant
(which post-dated the date of application) have also been produced in “Exhibit
WH-6”. The pamphlets and webpage mainly include articles of power supply
and electrical devices that regulate electric current, for example, power
inverters and frequency converters. The said products are advertised therein
for multiple settings, such as in aeroplanes, land vehicles and hospitals. The
subject mark is only seen to have been directly applied on one unspecified
product in these pamphlets. However, the subject mark can be found on the
pamphlets and the webpage themselves (the first, second, third, ninth, tenth,
eleventh, twelfth and fifteenth page of “Exhibit WH-6”).
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51. As stated above, the point of reference for assessing honest concurrent use in
the current case is the date of application. The undated photographs and
pamphlets and post-dated webpage do not assist this application.
52. Turning to the advertising and promotion of the goods and services applied for,
the statutory declaration stated that approximately US$100,000 has been spent
per year to advertise the goods and services applied for by means of the
applicant’s website. There is nothing to show that such promotion has been
done in Hong Kong or targets relevant consumers in Hong Kong. “Exhibit
WH-7” shows some samples of invoices issued by “Orange Velvet Design
Studio” or “Orange Velvet Design Studio, LLC” (which has an address outside
Hong Kong) between February 2008 and January 2011. These invoices
indicate that this company has provided to the applicant services including
website maintenance and designs of promotional materials.
53. Taking into account the promotional materials in “Exhibit WH-6” and the
expenditure on advertising and promotion in “Exhibit WH-7”, the applicant has
paid some effort in advertising and promoting. There is nevertheless no
information before me as to the scale and extent of the said promotional
activities, and whether they reach the relevant consumers of the goods and
services applied for in Hong Kong. The number of hits of the applicant’s
website by the relevant consumers in Hong Kong is unknown, so are the
numbers of recipients in Hong Kong of the said promotional materials. In the
absence of such proof, I am unable to see how much effort the applicant has
paid in advertising the subject mark with respect to the goods and services
applied for in Hong Kong.
54. Taking into account the above, while there are some evidence that tend to show
the use of subject mark in relation to the sales and promotion of certain power
supply equipment which fall within “apparatus and instruments for conducting,
switching, transforming, accumulating, regulating or controlling electricity” of
the goods applied for before the date of application, such use is not shown to
have ever been made in Hong Kong. With respect to the rest of the goods and
services applied for, I do not see any proof of use of the subject mark.
55. On the totality of the evidence before me, I do not find that the applicant has
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demonstrated the use of the subject mark in Hong Kong before the date of
application. In other words, the first requirement stated in paragraph 44 has
not been established. I do not need to go further and consider whether the use
of the subject mark has been honestly made. I cannot arrive at a conclusion
that there has been such use of the subject mark in Hong Kong by the applicant
in relation to the goods and services applied for that would justify the further
determination of whether there is honest concurrent use. The answer in stage
1 of the assessment must therefore be in the negative and it is not necessary for
me to proceed to stage 2 of the assessment. The claim for honest concurrent
use must fail.
Section 13(1)(b) of the Ordinance
56. Pursuant to section 13(1)(b) of the Ordinance, if by reason of other special
circumstances it is proper for a trade mark to be registered, an objection under
section 12(3) of the Ordinance can be overcome.
57. Nevertheless, on the evidence before me, I do not see any special
circumstances which would justify registration of the subject mark in respect of
the goods and services applied for. Thus, I do not allow the subject mark to
be registered in respect of the goods and services applied for pursuant to
section 13(1)(b) of the Ordinance.
Conclusion
58. I have considered all the written submissions made by or on behalf of the
applicant in respect of the subject application. For the reasons stated above,
the subject mark is precluded from registration under section 12(3) of the
Ordinance. The subject application is accordingly refused under section
42(4)(b) of the Ordinance.
(Raymond Lam)
for Registrar of Trade Marks
25 March 2014
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