TRADE MARKS ORDINANCE (CAP. 559)
OPPOSITION TO TRADE MARK APPLICATION NO. 300941454
MARK:
OPPONENT: LRC PRODUCTS LIMITED
_____________________________________________________________________
STATEMENT OF REASONS FOR DECISION
Background
1.
On 27 August 2007, the applicant filed an application for registration
(“the subject application”) under the Trade Marks Ordinance (Cap. 559) (“the
Ordinance”) for the registration of the following mark :-
(“the suit mark” or “the applicant’s mark”).
2.
Registration is sought in respect of “Wearing Apparel” in Class 25 (“the subject goods”).
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3.
Particulars of the subject application were published on
7 September 2007. The opponent filed a notice of opposition to the subject application together with the grounds of opposition on 5 February 2008. The notice of opposition and the grounds of opposition were subsequently amended. The amended grounds of opposition was filed on 18 November 2008 (“amended grounds of opposition”).
4.
The opposition hearing took place before me on 12 October 2012.
Mr. Lester Lee, Counsel, instructed by Wenping & Co. appeared for the opponent.
Mr. Philips B. F. Wong, Counsel, instructed by Tsang, Chan & Woo appeared for the applicant.
5.
I reserved my decision at the conclusion of the hearing.
Grounds of opposition
6.
The grounds on which the opponent opposes registration of the suit mark as stated in the amended grounds of opposition are sections 11(1)(a), 11(5)(b), 12(4) and 12(5)(a) of the Ordinance. The opponent limits the grounds to sections 12(4) and 12(5)(a) in the opponent’s skeleton submission and at the hearing.
7.
The opponent seeks to rely on a number of its marks which have been registered in Hong Kong containing the word “DUREX”. A schedule of 19 registrations in Hong Kong is annexed to the amended grounds of opposition. The marks include word marks containing only the word “DUREX” (“the simple DUREX word marks”) and other marks formed by adding other words or devices to the word
“DUREX”. Details of these marks are reproduced in the Appendix to this decision.
I would refer these marks as “the opponent’s marks” collectively.
Counter-statement
8.
The applicant filed a counter-statement on 21 July 2008.
1
1
No amendment was made to the counter-statement following the filing of the amended grounds of opposition on 18 November 2008.
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Evidence
9.
Under Rule 18 of the Trade Marks Rules (Cap. 559, sub. leg.)(“Rule/s”), the opponent filed an affidavit of Lisa Jane Brown, Head of Legal and Intellectual
Property of the opponent, together with exhibits, which was sworn on 16 January
2009 (“Brown’s affidavit”).
10.
Under Rule 19, the applicant filed the statutory declaration of Ramy Attie,
Director of the applicant, together with exhibits, which was declared on
11 September 2009.
Relevant date
11.
The relevant date for considering the opposition is 27 August 2007, the date of the subject application for registration.
Opponent’s evidence
12.
Ms. Brown deposes that the opponent is a subsidiary of SSL
International plc (“SSL”). SSL has its headquarters in London and has a diverse portfolio of consumer products including the contraceptive brand “DUREX” and other brands.
13.
The opponent has two main areas of business, namely the Medicines product group which deals with proprietary medicine and toiletries, and the
Protectives product group which deals with the contraceptive side of the business.
Ms. Brown avers that the opponent is one of the largest manufacturers of contraceptive sheaths in the world. She gives an account of the history of manufacture of condoms since 1930 and the improvements made to condoms over the years. The word “DUREX” represents DUrability, REliability and EXcellence, and it was first registered in 1929. The opponent uses the “DUREX” trade mark and other related sub-brands in respect of contraceptives and other products globally.
The condom range of products has been extended to a wide range of condom products such as “DUREX EXTRA SAFE”, “DUREX PERFORMA” and “DUREX
FETHERLITE”. Since 1996, the range of products marketed under the DUREX brand has been extended to include lubricants and other sexual wellbeing products.
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14.
Ms. Brown avers that the DUREX brand is the number one condom brand worldwide and products are sold in 200 countries worldwide. Exhibit C to
Brown’s affidavit is produced to illustrate that the DUREX brand was ranked number
68 on the list of top 500 UK brands compiled by the Centre for Brand Analysis in the period of 2008/09.
15.
The opponent has over the years applied for various registrations of the
DUREX marks and other related marks. A list of the opponent’s registrations and pending applications for registration of the DUREX marks and other related marks worldwide is produced at Exhibit H.
16.
Ms. Brown also sets out the worldwide sales figures from 2003 to 2008.
The global sales amount to £186 million in 2006/07 and £203 million in 2007/08.
Page 1 of SSL’s Annual Report and Accounts for 2008 (relevant pages are exhibited among other documents at Exhibit A) shows that DUREX brand products achieved global sales amount in the sum of £217.7 million. After giving an account of the promotion and publicity activities on the DUREX brand and DUREX brand products since the late 1960s, Ms. Brown sets out the global marketing expenditures from 2003 to 2008. The expenditure reached £27 million and £29 million in 2006/07 and
2007/08 respectively.
17.
SSL has business presence in Hong Kong via SSL Healthcare (Hong
Kong) Limited (“SSL Hong Kong”), its subsidiary company in Hong Kong. At page
95 of SSL’s Annual Report and Accounts for 2008 the extracts of which are produced at Exhibit A, the opponent and SSL Hong Kong are listed under SSL’s “Principal
Group undertakings”. The office address of SSL Hong Kong is also set out at page
104.
18.
Ms. Brown avers that the sale of DUREX brand products in Hong Kong has been conducted through SSL Hong Kong since 1990, and DUREX brand products were imported from the UK for sale in Hong Kong before 1990.
19.
Ms. Brown asserts that the opponent sold more than two million
DUREX condoms in Hong Kong in the financial year of 2007/2008 and the market share reached nearly 70% by August 2007. On the sale of lubricants, the DUREX brand achieved a market share of 60% in Hong Kong in March 2006. Copies of some sales invoices issued by SSL Hong Kong from May 2003 to November 2007 on sales of DUREX brand products in particular condoms are produced at Exhibit J.
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The approximate retail sales figures in Hong Kong furnished by Ms. Brown from
2001 to 2008 are reproduced below:-
Year Sales
(in US$)
2001/02 11,303,000
2002/03 10,843,000
2003/04 11,821,000
2004/05 12,656,000
2005/06 13,540,000
2006/07 13,810,000
2007/08 13,921,000
20.
On promotion and publicity, Ms. Brown explains that condoms and sexual wellbeing products bearing the DUREX brand name have been advertised in the local media including the major newspapers, magazines and by way of promotional materials at sales outlets such as Watsons Stores. Copies of some advertisements (the earliest extract shows a date of publication before 18 June 2001) are produced at Exhibit L. The approximate marketing expenditures in Hong Kong from 2001 to 2008 are reproduced below:-
Year Marketing expenditure
(in US$)
2001/02 641,000
2002/03 301,000
2003/04 686,000
2004/05 378,000
2005/06 335,000
2006/07 125,000
2007/08 192,000
21.
Ms. Brown also gives an account of the launching of the opponent’s website www.durex.com
since 1995 and the availability of e-commerce services globally via websites in different markets. Copies of printouts from the Hong Kong website (webpages printed on 14 January 2009) are produced at Exhibit K.
22.
A limited range of clothing items under the DUREX brand has also been sold by the opponent. Sales of baseball caps and T-shirts have been made in the UK,
Ireland, Italy and New Zealand. Copies of printouts from the relevant webpages
(printed on 14 and 15 January 2009) produced at Exhibit M show that clothing items including polo shirts and T-shirts are offered for sale.
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The applicant’s evidence
23.
Mr. Attie avers that the applicant was founded in 1963 and is one of the largest apparel manufacturers in the Republic of Panama.
24.
According to Mr. Attie, the applicant’s mark comprises a device of a boy dressed like a pirate at the top which occupies ¾ of the mark and the word “DUREX” at the bottom. The boy is dressed in red whilst all other parts of the mark including the word are in black. The word “DUREX” in the applicant’s mark was an invented word and has been adopted since 1963. “DUREX” is derived from a Spanish motto
“Dura mas” which means “Last more” in English. In Spanish, the words “DUREX” and “Dura mas” are phonetically similar. Since 1964, the applicant has also marketed its products using the slogan “Durex Dura Mas” which means “Durex Last
More”. A list of registrations and pending applications for registration of the applicant’s mark and related marks is produced at Exhibit “RA-1”.
25.
Mr. Attie deposes that the applicant engages in the business of manufacturing, designing, selling, providing and distributing apparel products in
Class 25 and in particular woven shirts, dress, casual pants, jeans, pyjamas, school uniforms and imported baby and children wear and shoes bearing the applicant’s mark.
These products are sold by the applicant or through the applicant’s licensees, representatives or distributors both in Panama and in other markets including the
United States, Mexico and other Latin American countries. Goods bearing the applicant’s mark are also marketed worldwide and promoted via the applicant’s website.
26.
Mr. Attie sets out the worldwide sales figures achieved by the applicant on clothing, school uniforms and footwear from 1999 to 2008. The figures provided range from the lowest figure of US$ 4.74 million in 2005 to the highest figure of
US$8.53 million in 2008. For 2006 and 2007, the sales amounts are approximately
US$5 million and US$5.57 million respectively.
27.
The advertising and marketing expenditures from 2004 to 2008 are provided, among which the expenditures of US$240,000 and US$225,000 in 2006 and
2007 respectively are shown. Copies of some sample promotional materials including advertisements, printouts from website and publications are produced at
Exhibit “RA-2”.
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28.
Mr. Attie avers that the applicant does not have any retailers or distributors in Hong Kong and the Asian Pacific market offering the applicant’s goods for sale. However, suppliers from these regions manufactured and supplied goods bearing the applicant’s mark for the applicant.
Comparison of marks
29.
As the opponent’s grounds of opposition based on sections 12(4) and
12(5)(a) of the Ordinance require consideration of the question of whether a certain degree of similarity between the marks at issue exists, I would first consider whether the suit mark is identical or similar to the opponent’s marks.
30.
The opponent’s marks listed in the Appendix can be broadly divided into the following three categories :
(1) simple DUREX word marks such as the marks and
(registration numbers 19892966 and 19911474 respectively);
(2) word marks formed by adding other word(s) e.g. “FETHERLITE”,
“TOP GEL” after the word “DUREX” such as the marks and (registration numbers 19780020 and 199504203 respectively)
2
; and
(3) composite marks comprising the word “durex” and devices, such as the marks and (registration numbers 199915213AA and 200306555 respectively).
31.
Turning to the suit mark, the suit mark is a composite mark consisting of a device of a boy surrounded by a circle (“the boy device”) above the word
“DUREX”. The boy device takes up about three quarters of the whole mark. The boy in the boy device has a smile and wears a kerchief and shorts in black. Although
2
I observe that these word marks are essentially the names of products which fall within the scope of the DUREX brand products.
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Mr. Attie explains that the boy is dressed in red, the applicant has not made any colour claim of the upper garment of the boy in the subject application. The word
“DUREX” is expressed in plain capital letters in black.
32.
Generally speaking, words “speak louder” than devices in a composite mark ( Oasis Stores Ltd’s Trade Mark Application [1998] R.P.C. 631 at 644). Where a mark comprises a device and a word, it is the word that is generally recalled rather than the device ( Re Yuen Nuen Sun [2000] 2 HKLRD 341, at paragraph 11). The boy device is also comparatively indistinctive when the suit mark is applied on wearing apparel for infants and babies. As such, the word “DUREX” is the more distinctive feature in the suit mark and is likely to make an immediate impression on the average consumer. Nonetheless, given the size and prominence of the boy device which cannot be disregarded, I consider that the suit mark would be remembered as a composite mark consisting of the word and device elements.
33.
Having considered the three categories of marks set out in paragraph 30 above, I consider that it is sufficient for me only to compare the simple DUREX word marks with the suit mark both of which bear the identical word “DUREX”. The marks of the other two categories also contain the word “DUREX” or “durex”, but the inclusion of other words or devices in these marks is likely to have the effect of decreasing the degree of similarity between the suit mark and these marks. If the opponent succeeds in opposing the subject application based on the simple DUREX word marks being the opponent’s case at the highest, the finding would be sufficient to dispose of the present case and there is no need for the opponent to rely on the other two categories of marks.
34.
Following from the above, I would therefore only compare the suit mark with the opponent’s simple DUREX word marks visually, aurally and conceptually.
Visual comparison
35.
It is obvious that the word “DUREX” in the suit mark is identical to the opponent’s simple DUREX word marks. However, I would bear in mind that the suit mark would be remembered as a composite mark comprising the word “DUREX” and the boy device.
36.
Considering the identical word “DUREX” present in both the suit mark and the opponent’s simple DUREX word marks, and the boy device of the suit mark
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which also yields some visual impact, I find the suit mark is similar to the opponent’s simple DUREX word marks visually.
Aural comparison
37.
As both the suit mark and the opponent’s simple DUREX word marks contain the identical word “DUREX” whilst the device element of the suit mark could not be pronounced, both marks would be pronounced “DU-REX” in the same way.
The marks are identical aurally.
Conceptual comparison
38.
The suit mark is a composite mark whilst the opponent’s simple DUREX word marks are word marks. Although both the applicant and the opponent have adduced evidence on what the word “DUREX” stands for respectively
3
, these meanings are not readily perceived and understood by the average consumer.
Having regard to the appearance of the identical word “DUREX” which is the only word element in both marks (whilst the boy device in the suit mark is comparatively indistinctive), I find the suit mark highly similar to the opponent’s simple DUREX word marks conceptually.
39.
Having compared the suit mark and the opponent’s simple DUREX word marks, I consider the suit mark is aurally identical, conceptually highly similar and visually similar, to the opponent’s simple DUREX word marks. I conclude that the suit mark and the opponent’s simple DUREX word marks are closely similar.
Opposition under section 12(4) of the Ordinance
40.
Section 12(4) of the Ordinance reads as follows :
“ … a trade mark which is
(a) identical or similar to an earlier trade mark; and
(b) proposed to be registered for goods or services which are not identical or similar to those for which the earlier trade mark is protected,
3
Mr. Attie for the applicant explained that the word “DUREX” is derived from “Dura mas” which means “Last more” (see paragraph 24 above). For the opponent, Ms. Brown explained that the word
“DUREX” represents Durability, REliability and EXcellence (see paragraph 13 above).
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shall not be registered if, or to the extent that, the earlier trade mark is entitled to protection under the Paris Convention as a well-known trade mark and the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.
”
41.
According to section 4(1) of the Ordinance, references in the Ordinance to a trade mark which is entitled to protection under the Paris Convention as a well-known trade mark shall be construed as references to a trade mark which is well-known in Hong Kong. In determining whether a trade mark is well-known in
Hong Kong, the Registrar shall have regard to Schedule 2 to the Ordinance (section
4(2) of the Ordinance).
42.
To succeed under section 12(4), the opponent has to establish the following :
(a) that the suit mark is identical or similar to the opponent’s mark;
(b) that the opponent’s mark is entitled to protection under the Paris
Convention as well-known trade mark; and
(c) the use of the suit mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the opponent’s mark.
43.
For the reason stated in paragraph 33 above, I would consider the opponent’s case based on the simple DUREX word marks.
44.
Both Mr. Lee and Mr. Wong referred me to passages in the case of Intel
Corporation Inc v CPM United Kingdom Ltd. [2009] R.P.C. 15 which deals with the interpretation of Article 4(4)(a) of the European Council Directive 89/104
4
4
Article 4(4)(a) of the European Trade Marks Directive 89/104/EEC of 21 December 1988 provides –
“ Any Member State may furthermore provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where, and to the extent that:
(a) the trade mark is identical with, or similar to, an earlier national trade mark within the meaning of paragraph 2 and is to be, or has been, registered for goods or services which are not similar to those for which the earlier trade mark is registered, where the earlier trade mark has a reputation in the
Member State concerned and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark; ”
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(corresponding to section 5(3) of the UK Trade Marks Act 1994
5
which is equivalent to section 12(4) of the Ordinance).
45.
I find the following passages from the judgment of the European Court of Justice (“ECJ”) in the Intel case useful to an understanding of the scope of and the basis for opposition under section 12(4) of the Ordinance :
“ 27 The types of injury against which Art.4(4)(a) of the Directive ensures such protection for the benefit of trade marks with a reputation are, first, detriment to the distinctive character of the earlier mark, secondly, detriment to the repute of that mark and, thirdly, unfair advantage taken of the distinctive character or the repute of that mark.
28 Just one of those three types of injury suffices for that provision to apply.
29 As regards, in particular, detriment to the distinctive character of the earlier mark, also referred to as ‘dilution’, ‘whittling away’ or ‘blurring’, such detriment is caused when that mark’s ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is notably the case when the earlier mark, which used to arouse immediate association with the goods and services for which it is registered, is no longer capable of doing so.
30 The types of injury referred to in Art.4(4)(a) of the Directive, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them...
31 In the absence of such a link in the mind of the public, the use of the later mark is not likely to take unfair advantage of, or be detrimental to, the
5
Section 5(3) of the UK Trade Marks Act 1994 provides–
“ A trade mark which is identical or similar to an earlier trade mark shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a
Community trade mark or international trade mark (EC), in the European Community) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark .”
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distinctive character or the repute of the earlier mark.
32 However, the existence of such a link is not sufficient, in itself, to establish that there is one of the types of injury referred to in Art.4(4)(a) of the Directive… (emphasis added) ”
46.
Mr. Lee for the opponent submitted that were the applicant be allowed to use the suit mark in Hong Kong, the detriment to the opponent is that (a) it would dilute the opponent’s marks; and (b) it would create an image that is compatible with that portrayed by the opponent’s marks. I was also not addressed on the alleged detriment of unfair advantage taken of the distinctive character or the repute of the opponent’s marks. As such, I am only concerned with the first two types of injuries set out in paragraph 27 of the judgment in the Intel case (reproduced above).
47.
I have in paragraph 39 above found that the suit mark and the opponent’s simple DUREX word marks are closely similar. The next issue I have to consider is whether the relevant section of the public makes a connection between the opponent’s simple DUREX word marks and the applicant’s mark as a consequence of the similarity between the two marks even though the relevant section of the public does not confuse them.
48.
The perception of the relevant section of the public has to be considered.
In the Intel case, the ECJ said the following :
“ 33 The public to be taken into account …varies depending on the type of injury alleged by the proprietor of the earlier trade mark.
34 First, both a trade mark’s distinctiveness and its reputation must be assessed, first, by reference to the perception of the relevant public, which consists of average consumers of the goods or services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect ….
35 Accordingly, the existence of injury consisting of detriment to the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect.”
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49.
Thus, I have to assess the distinctiveness and the reputation of the simple
DUREX word marks by reference to the perception of the average consumers of the goods for which the simple DUREX word marks are registered.
50.
The respective specifications of the opponent’s goods for which the simple DUREX word marks are registered are set out at the Appendix. Having considered Brown’s affidavit and its exhibits, I notice that the opponent’s promotion and publicity efforts mainly focused on condoms and other sexual wellbeing products.
51.
Considering the nature of the opponent’s condoms and other products for contraceptive and/or sexual wellbeing purposes, I perceive the relevant section of the public to be considered are adults who look for and procure such products for sexual activities.
52.
On the factors to be considered in assessing the existence of a “link”, the following passages from the judgment of the ECJ in the Intel case are relevant to the analysis in the present case :
“41 The existence of such a link must be assessed globally, taking into account all factors relevant to the circumstances of the case …
42 Those factors include:
– the degree of similarity between the conflicting marks;
– the nature of the goods or services for which the conflicting marks were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public;
– the strength of the earlier mark’s reputation;
– the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;
– the existence of the likelihood of confusion on the part of the public.”
53.
The ECJ then examined the relevance of the different factors. On similarity between the earlier and later marks, generally, the more similar they are, the more likely it is that the later mark will bring the earlier mark with a reputation to the mind of the relevant public. Certain marks may have acquired such a reputation that it goes beyond the relevant public targeted by those marks as regards the goods for
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which those marks were registered. The stronger the distinctive character of the earlier mark, whether inherent or acquired through use, the more likely it is that, confronted with a later identical or similar mark, the relevant public will call that earlier mark to mind.
54.
On the question of reputation, it is the opponent’s case that “DUREX” is a globally well known brand known for its contraceptive and adult-themed products.
Ms. Brown has also averred to the claimed substantial reputation and market share in condoms and lubricants in Hong Kong (paragraph 12 of Brown’s affidavit). Copies of the advertisements on major newspapers and magazines, newspaper extracts giving accounts of promotional activities and promotional materials for the Hong Kong market produced at Exhibit L to Brown’s affidavit with printed dates
6
before the relevant date are all related to the opponent’s condoms or other goods used for contraceptive and/or sexual wellbeing purposes and show use of marks including and “ 杜蕾斯 ” (the latter is the transliteration of “DUREX” in Chinese).
55.
The opponent has not given any breakdown of the sales figures and marketing expenditures as set out in Brown’s affidavit in respect of the Hong Kong market. The opponent has not produced evidence such as audited accounts to substantiate the claimed substantial sales figures of DUREX brand products achieved, or evidence to support the expenditures on publicity and marketing. That said, I note that the copies of the sales invoices issued by SSL Hong Kong exhibited
7
show sales made in remarkable volumes before the relevant date
8
, and copies of the advertisements, extracts and promotional materials show continuous and extensive efforts on the promotion of the DUREX brand and products in Hong Kong. As such, although I am not able to ascertain whether the figures furnished by Ms. Brown are substantiated as a matter of fact, considering the relevant evidence as a whole, I am prepared to proceed on the basis that the opponent has achieved substantial sales of the opponent’s goods which serve contraceptive and/or sexual wellbeing purposes and has spent substantial marketing expenditures on the DUREX brand and goods in
Hong Kong before the relevant date.
6
Copies subsequent to the relevant date, undated or only marked with inserted or handwritten dates
7
(instead of printed dates) are disregarded.
8
Copies subsequent to the relevant date are disregarded.
The products covered in the sales invoices include goods bearing the registered marks of DUREX
FETHERLITE, DUREX TOP GEL, DUREX SENSATION and DUREX EXTRA SAFE, together with goods of other descriptions such as DUREX SELECT, DUREX TOGETHER, DUREX JEANS which are not registered trade marks in Hong Kong.
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56.
Taking into account the uncontested evidence that the opponent’s condoms have been sold in Hong Kong for at least 17 years before the relevant date, the substantial sales volume and marketing expenditures, as well as the promotion and publicity efforts of the DUREX brand and goods bearing the simple DUREX marks or other variants of marks all of which contain the word “DUREX” or “durex”, I am satisfied that the opponent’s DUREX brand (which includes the simple DUREX word marks) has acquired enhanced distinctiveness and reputation in condoms and goods used for contraceptive and/or sexual wellbeing purposes among the relevant section of the public, namely adults who look for and procure such goods for sexual activities.
Yet, for the reason stated in paragraph 72 below, there is no need for me to determine whether the opponent’s marks are entitled to protection as well-known trade marks in
Hong Kong as provided in section 4 of the Ordinance as of the relevant date.
57.
For the purpose of analysis, I remind myself that I am only required to find whether a “link” exists between the simple DUREX word marks and the suit mark. Despite the very different nature of the respective goods of the opponent and the applicant, in view of the finding above on the similarity in the marks concerned as well as the distinctiveness and the reputation achieved by the DUREX brand, I am prepared to find the existence of a link between the opponent’s simple DUREX word marks and the suit mark. In my view, the relevant section of the public targeted by the simple DUREX word marks will call the opponent’s simple DUREX word marks to mind when they see the application of the suit mark on the subject goods even though the relevant section of the public does not confuse them.
58.
I would now consider the question of injury or detriment to the opponent’s marks. Section 12(4) does not have the sweeping effect of preventing the registration of a sign which is the same as or similar to a well-known earlier trade mark. It is also not intended to enable the owner of a well-known earlier trade mark to object as a matter of course to the registration or use of a sign which may remind people of his mark ( Premier Brands v Typhoon [2000] F.S.R. 767). Thus, the existence of a link between the opponent’s simple DUREX word marks and the suit mark does not dispense with the onus on the part of the opponent to prove actual and present injury to its marks, or a serious likelihood that such an injury will occur in the future. Detriment to and unfair advantage of distinctive character or repute must be provable by real, as opposed to theoretical, evidence and cannot be merely assumed from the fact that the earlier mark has a substantial reputation ( Creditmaster Trade
Mark [2005] R.P.C. 21).
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59.
The ECJ in the Intel case said the following:
“ 37 …the proprietor of the earlier mark must adduce proof that the use of the later mark ‘would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark’.
38 The proprietor of the earlier trade mark is not required, for that purpose, to demonstrate actual and present injury to its mark …. When it is foreseeable that such injury will ensue from the use which the proprietor of the later mark may be led to make of its mark, the proprietor of the earlier mark cannot be required to wait for it actually to occur in order to be able to prohibit that use. The proprietor of the earlier mark must, however, prove that there is a serious risk that such an injury will occur in the future…”
60.
Mr. Lee submitted that the DUREX brand is known for its contraceptive and adult-themed products, and the idea of contraception is one of the primary messages incorporated into the opponent’s marks. The use of the suit mark on clothing items for infants or babies gives rise to association drawn by the public which is incompatible with and contrary to the image and message consistently conveyed by the DUREX brand as a reliable form of contraceptive. The decision in the case of Elleni Holding BV v. Sigla SA [2005] E.T.M.R. 7 is cited in support. At the hearing, Mr. Lee also referred to the decision of the Third Board of Appeal of the
Office for Harmonization in the Internal Market (“OHIM”) of the European Union in the case of Hollywood S.A.S. v. Souza Cruz S.A.
(Case R 283/1999-3).
9
61.
It should be noted that the Third Board of Appeal of OHIM in the Elleni case confirmed the requirement on the part of the proprietor of the earlier mark with a trade mark image to adduce evidence of detriment to demonstrate why and how damage could be caused to the trade mark image in question. I find the following passages pertinent :
“ 42 Hence, once an image associated with a trade mark which has a reputation has been shown to exist, the fact that the contested sign is detrimental to this image, must still be demonstrated.
9
The decision of the Hollywood case was issued on 25 April 2001. The case was heard before the Third
Board of Appeal of OHIM constituted by the same chairman and members as in the Elleni case.
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43 It must, therefore, be shown that the trade mark is sullied or debased by its association with something unseemly. This may happen when the applied for trade mark, to which the mark with reputation may be associated, is used, on the one hand, in an unpleasant, obscene or degrading context or, on the other hand, in a context which is not inherently unpleasant but which proves to be incompatible with the trade mark's image. In all cases, there is a comparison which is injurious to the trademark's image and what is known in English as dilution by tarnishment. (see Decision of 25 April 2001, in
Case R 283/1999-3, HOLLYWOOD/HOLLYWOOD, at [83]).
44 The detriment in question may be only potential, in as much as the contested sign has not yet been registered, much less used...
45 Pursuant to Art.8(5), the evidence of detriment may be argumentative and based on the rules of probability. However, the evidence has to demonstrate why and how damage could be caused to the trade mark image in question, or undue advantage may be taken from that image.
46 Such a prove cannot be automatically inferred by a simple connection between the services covered by the two conflicting marks, as done in the contested decision. The existence of such a connection, although combined with a positive assessment of the existence of reputation, is not, per se, sufficient element from which it might be deduced that there also exists a risk that the applied for mark may take unfair advantage of or be detrimental to the earlier one.
47 The Board notes, in this respect, that in the present case no evidence or argument at all has been submitted by the opponent to prove a misappropriation by the appellant's mark of the reputation enjoined by its mark or that such reputation would be damaged by the use of the appellant's mark.”
62.
The Hollywood case dealt with an opposition against an application for registration of the mark “HOLLYWOOD” for cigarettes, tobacco products etc. in
Class 34. Mr. Lee referred me to paragraph 89 of the decision which reads “ The evidence of detriment required may be simply a logical analysis and may result from deductions based on the rules of probability. In this context, an opinion poll is possible but not compulsory, and would not be sufficient on its own.
” I notice that the Third Board of Appeal then went on to address why the opinion polls, being evidence adduced in that case, could not explain why and how damage could be done
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to the trade mark image in question, and why it considered the evidential value of the opinion polls was reduced.
63.
The Hollywood case preceded the Elleni case and the Third Board of
Appeal of OHIM in the latter case has confirmed the requirement on the part of the proprietor of the earlier mark to adduce evidence of detriment. In the decision of the
Hollywood case itself, the Third Board of Appeal also indicated that the proprietor of the earlier trade mark must show that use of the later trade mark would prompt inappropriate or at least negative mental associations with the earlier trade mark, or associations conflicting with its image, which would be detrimental to it.
10
64.
In view of the paragraphs quoted from the decision in the Elleni case above, I do not agree that the need for evidence of detriment for showing why and how damage could be caused to certain trade mark image may be satisfied by logical analysis or deductions without any evidence adduced.
65.
In the present case, no evidence has been adduced by the opponent to show any alleged detriment to the image of the opponent’s marks (assuming the existence of the claimed image associated with the opponent’s marks).
66.
Mr. Lee also drew my attention to a recent judgment of the ECJ in
Environmental Manufacturing LLP v. OHIM, Société Elmar Wolf [2012] E.T.M.R. 54 on the issue of evidence. The judgment concerns allegation of detriment to the distinctive character of an earlier mark. The ECJ said the following :
“52 Accordingly, the proprietor of the earlier mark must adduce prima facie evidence of a future risk, which is not hypothetical, of detriment. …
Such a finding may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case….
53 It cannot, however, be required that, in addition to those elements, the proprietor of the earlier mark must show an additional effect, caused by the introduction of the later mark, on the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered.
10
Paragraph 87 of the decision.
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Such a condition is not set out in art.8(5) of Regulation 207/2009
11
or in
Intel Corp [2009] E.T.M.R. 13 at [27].
54 So far as concerns [77] of Intel Corp [2009]
12
…, it is apparent … that the change in the economic behaviour of the consumer … is established if the proprietor of the earlier mark has shown… that the mark’s ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark.”
67.
In the Environmental Manufacturing case, the ECJ, following the Intel case, affirmed the requirement for the proprietor of the earlier mark to adduce evidence that use of the later mark would be detrimental to the distinctive character of the earlier mark. When it is foreseeable that such injury will ensue, the proprietor of the earlier mark must prove that there is a serious risk that such an injury will occur.
13
It is also noteworthy that the goods in question in that case are identical or of similar character.
68.
As I understand it, Mr. Lee submitted that the word “DUREX”, with its strong distinctive character, is capable of arousing immediate association with the opponent’s undertaking. Coupled with the fact that the subject goods also target the same market of the opponent’s goods viz. the public at large, the use of the suit mark
(bearing the visually and aurally identical word “DUREX” which is a dominant element of the suit mark) on the subject goods must necessarily weaken the value and function of the opponent’s marks (all of which incorporate the word “DUREX”) as it will lead to the dispersion of the very identity and hold which the opponent’s marks had upon the mind of the public.
69.
For the purpose of the present case, I do not see the need to determine whether the ECJ in the Environmental Manufacturing case has, as Mr. Lee submitted, lowered the threshold of evidence to be adduced by the proprietor of the earlier mark.
11
The content of article 8(5) of Regulation 207/2009 is, in essence, identical to article 4(4)(a) of
Council Directive 89/104.
12
Paragraph 77 of the judgment in the Intel case reads:-
“ 77 It follows that proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future.
”
13
Paragraph 51 of the judgment.
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The case authorities considered consistently held that the proprietor of the earlier mark has the onus to demonstrate detriment by evidence, and for the issue presently considered, there is the onus to demonstrate that the ability of the marks to identify the goods for which they are registered and used as coming from this proprietor is weakened, as the use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark. This is also followed in the Environmental
Manufacturing case.
70.
The applicant has not used the suit mark on the subject goods in Hong
Kong before the relevant date and there is no suggestion of any actual and present harm to the opponent’s marks. In so far as the opponent is alleging that it is foreseeable that injury will ensue from the use of the suit mark on the subject goods, I observe that there is simply no evidence from the opponent to demonstrate that such injury would arise in future.
71.
Following from the above, there is no need for me to consider the issue of “use without due course” provided in section 12(4) of the Ordinance.
72.
As the requirement under paragraph 42(c) is not satisfied, I also do not see the need to determine whether the opponent’s marks are entitled to protection as well-known trade marks in Hong Kong as of the relevant date.
73.
The opposition under section 12(4) of the Ordinance fails.
Opposition under section 12(5)(a) of the Ordinance
74.
Section 12(5) of the Ordinance provides, inter alia, as follows:
“ ... a trade mark shall not be registered if, or to the extent that, its use in Hong
Kong is liable to be prevented –
(a) by virtue of any rule of law protecting an unregistered trade mark or other sign used in the course of trade or business (in particular, by virtue of the law of passing off) … ”
75.
A helpful summary of the elements of an action for passing off can be found in Halsbury's Laws of Hong Kong Vol 15(2) at paragraph 225.001. The guidance takes account of speeches in the House of Lords in Reckitt & Colman
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Products Ltd v Borden Inc [1990] R.P.C. 341 and Erven Warnink BV v J Townend &
Sons (Hull) Ltd [1979] A.C. 731 (which are also applied in the case of Ping An
Securities Ltd v 中國平安保險 ( 集團 ) 股份有限公司 [2009] 12 HKCFAR 808), and is as follows :
The House of Lords has restated the necessary elements which a plaintiff has to establish in an action for passing off:
(1) the plaintiff’s goods or services have acquired a goodwill or reputation in the market and are known by some distinguishing feature;
(2) there is a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the plaintiff; and
(3) the plaintiff has suffered or is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation.
76.
I have in paragraph 39 above found that the suit mark and the opponent’s simple DUREX word marks are closely similar. I have also in paragraph 56 found that the opponent’s DUREX brand has acquired reputation in condoms or goods used for contraceptive and/or sexual wellbeing purposes among adults who look for and procure such goods for sexual activities.
77.
Mr. Wong for the applicant accepted that the opponent enjoyed goodwill in respect of the following marks (registration number 199915213AA) in Hong Kong as of the relevant date, but such goodwill is only limited to condoms.
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78.
Mr. Lee referred to the sale by the opponent of some adult clothing items bearing the DUREX mark(s) (paragraph 16 and Exhibit M of Brown’s affidavit).
Any erroneous belief that the applicant’s subject goods are originated from the opponent would put the opponent’s goodwill at risk and damage the opponent’s financial interests. He also submitted that the specification of the subject goods is broad enough to cover items such as lingerie, which in turn may be considered as
“similar” to the opponent’s goods which generally relate to adult-themed products.
79.
Upon considering Exhibit M, I note that the clothing items are offered for sale online. There is however no evidence to show that such clothing items have been sold in or to any consumers in Hong Kong prior to the relevant date. In any event, there is no evidence and hence no basis for me to find that the opponent’s marks enjoy reputation or goodwill in relation to clothing items in Hong Kong.
80.
I also do not agree with the submission that lingerie is “similar” to the opponent’s goods which cover mainly condoms or goods used for contraceptive and/or sexual wellbeing purposes. Having considered the differences in the respective users, trade channels, nature and purpose of the goods concerned, I do not consider lingerie is similar to the opponent’s goods.
81.
I find it obvious that the opponent and the applicant operate in very different fields of activities. The nature, purpose and trade channels of the opponent’s goods, covering mainly condoms and goods for contraceptive and/or sexual wellbeing purposes, are vastly different from those of the subject goods of wearing apparel.
82.
Even though I have found that the opponent’s simple DUREX word marks and the suit mark are closely similar, the opponent still has the burden to demonstrate misrepresentation by the applicant (whether or not intentional) leading or likely to lead the public to believe that goods offered by the applicant are those of the opponent.
83.
Paragraphs 18-106 and 18-107 of Kerly’s Law of Trade Marks and Trade
Names , 15 th
Edition have set out the discussion on the heavy burden on a claimant to prove misrepresentation where a defendant and a claimant operate in different fields of activities.
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“ There is no rule that the defendant must operate in the same field of activity as the claimant. However, this does not mean an examination of their respective fields of activity is irrelevant. The more remote the activities of the parties, the stronger the evidence needed to establish misrepresentation and the real likelihood of damage that are prerequisites of a right of action in passing off. ... this is a question of fact to be determined in the circumstances of the particular case…
It may be said generally that establishing passing off by goods in which the claimant does not trade calls for special evidence to establish that the defendant’s actions will induce the belief, if not that his goods are those of the claimant at least that his business is an extension of or somehow connected with that of the claimant, or his goods somehow approved or authorized by the claimant. Where the fields of activity of the parties are different, the burden of proving that the defendant causes real likelihood of damage to the claimant is a very heavy one… ”
84.
Mr. Lee submitted that the opponent’s marks enjoy a strong distinctive character that is able to arouse immediate association of the general public, and it is likely that the applicant’s use of the suit mark would lead to misrepresentation as to the origin of or connection between the applicant’s and the opponent’s goods. I do not agree. There is simply no evidence from the opponent to demonstrate the existence of any misrepresentation or that the relevant section of the public would be confused or misled into believing that the goods offered by the applicant are those of the opponent.
85.
The second element under paragraph 75(2) is therefore not made out.
There is thus no question of any damage flowing from any claimed misrepresentation.
86.
The opposition under section 12(5)(a) fails.
Costs
87.
As the opposition has failed, I award the applicant costs. Subject to any representations, as to the amount of costs or calling for special treatment, made by either party within one month from the date of this decision, costs will be calculated with reference to the usual scale in Part I of the First Schedule to Order 62 of the
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Rules of the High Court (Cap. 4A) as applied to trade mark matters, unless otherwise agreed.
(Miss Joyce Poon) for Registrar of Trade Marks
11 January 2013
- 24 -

Trade Mark No.
19780020
19781580
19892966
1990B2556
19911474
199406248
199504203
199812048AA
Appendix
Date of
Registration
Class Goods/Services
29 May 1975 10 Class 10 contraceptive appliances included in class 10; surgical rubber gloves, fingerstalls and diagnostic fingercots.
12 July 1976
4 November
1987
8 November
1985
10 Class 10 contraceptive appliances included in Class
10; surgical rubber gloves, fingerstalls and diagnostic fingercots.
10 Class 10 condoms, contrivances made of natural or synthetic rubber for hygienic, prophylactic or medical purposes; diagnostic and medical testing apparatus falling within Class 10.
10 Class 10 condoms.
4 November
1987
19 March
1991
3 April 1993
8 August
1997
5 Class 5 contraceptive preparations and substances falling within Class 5; spermicidal gels and creams; hygienic lubricants for use in the area of the vagina, penis or anus, all falling within Class 5.
3 Class 3 toilet preparations in the form of gels, liquids, creams, foams and solid formulations; topically applied personal deodorants, anti-perspirants, disinfectants, douches; soaps and detergents but not soaps and detergents for laundry and domestic
(other than personal) use; all included in
Class 3.
5 Class 5 contraceptive preparations and substances; spermicidal gels, hygienic lubricants and disinfectants for use in the area of the vagina, penis and anus; all in gel form; all included in Class 5.
5, 10 Class 5 contraceptive preparations and substances; spermicidal gels, liquids and creams; hygienic lubricants and disinfectants for use in the area of the vagina, penis or anus; diagnostic preparations and substances all for
- 25 -

199915213AA
200306555
200306556
22 October
1998
25 February
2002
25 February
2002 gynaecological testing purposes or for the diagnosis of sexually transmitted diseases; anaesthetics for topical application; disinfectants, detergents for medical use; materials for bandaging and tampons; all included in Class 5.
5, 10
Class 10 condoms; contrivances made of natural or synthetic rubber or plastic polymeric materials, all for hygienic, prophylactic or medical purposes; all included in Class 10.
Class 5 contraceptive preparations and substances, spermicidal gels, liquids and creams, hygienic lubricants and disinfectants for use in the area of the vagina, penis or anus; diagnostic preparations and substances, all for gynaecological testing purposes or for the diagnosis of sexually transmitted diseases; anaesthetics for topical application; cleansing materials, disinfectants and detergents, none for personal use; materials for bandaging and tampons; all included in Class 5.
Class 10 condoms, contrivances made of natural or synthetic rubber for hygienic, prophylactic or medical purposes; all included in Class 10.
5 Class 5 contraceptive preparations and substances; spermicidal gels; spermicidal creams; hygienic lubricants for use in the area of the vagina, penis or anus; diagnostic preparations and substances; all for gynaecological testing purposes or for the diagnosis of sexually transmitted diseases and all in kit form; all included in Class 5.
10 Class 10 condoms; contraceptives; all included in
Class 10.
300011447 28 April 2003 3 Class 3 non-medicated wipes; toiletries; cosmetics; sanitary preparations; moisturising preparations; all included in Class 3.
- 26 -

300011889
200306555
200306556
29 April 2003
25 February
2002
25 February
2002
5, 10
5
10
Class 5 contraceptive preparations; spermicidal gels, liquids and creams; hygienic lubricants and disinfectants.
Class 10 condoms; contraceptive or prophylactic devices; articles made of natural or synthetic rubber for hygienic purposes.
Class 5 contraceptive preparations and substances; spermicidal gels; spermicidal creams; hygienic lubricants for use in the area of the vagina, penis or anus; diagnostic preparations and substances; all for gynaecological testing purposes or for the diagnosis of sexually transmitted diseases and all in kit form; all included in Class 5.
Class 10 condoms; contraceptives; all included in
Class 10.
300011447
300011889
300047033
28 April 2003
29 April 2003
14 July 2003
3
10
5, 10
Class 3 non-medicated wipes; toiletries; cosmetics; sanitary preparations; moisturising preparations; all included in Class 3.
Class 5 contraceptive preparations; spermicidal gels, liquids and creams; hygienic lubricants and disinfectants.
Class 10 condoms; contraceptive or prophylactic devices; articles made of natural or synthetic rubber for hygienic purposes.
Class 10 condoms; contraceptive devices; prophylactic devices; contrivances of natural or synthetic rubber for hygienic purposes; applicators for use with all the aforesaid goods; all included in Class 10.
- 27 -

300099702
300149454
300198874
300253809
300287785
24 October
2003
30 January
2004
19 April 2004
22 July 2004
17 September
2004
10 Class 10 condoms; contraceptive or prophylactic devices; articles made of natural or synthetic rubber for hygienic purposes.
10 Class 10 massage apparatus, instruments and appliances; electric and electronic massage apparatus, instruments and appliances; body massagers; personal massagers; vibrators;
5, 10 marital aids; sex aids; parts and fittings for all the aforesaid goods.
Class 5 contraceptive preparations and substances; spermicidal gels, liquids and creams; hygienic lubricants and disinfectants.
3
Class 10 condoms; contraceptive, hygienic or prophylactic devices.
Class 3 non-medicated wipes; toiletries; sanitary preparations; non-medicated preparations for the bath in the form of salts, oils and soaks; moisturising preparations; essential oils; massage oils; rooms sprays.
5, 10 Class 5 contraceptive preparations and substances; spermicidal gels, liquids and creams, hygienic lubricants and disinfectants.
Class 10 condoms; contraceptive, hygienic or prophylactic devices.
- 28 -