Montres Tudor S.A. v. Concord Watch Co. S.A.
Read the full judgment text of HCMP 5788/2000 on BabelCite. This High Court CFI judgment was delivered on 25 July 2001.
1. This is an appeal from the decision of Mr. Kestutis Stasys Kripas acting for the Registrar of Trade Marks ("the acting registrar") dated 18 August 2000.
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HCMP005788/2000 HCMP 5788/2000 IN THE HIGH COURT OF THE HONG KONG SPECIAL ADMINISTRATIVE REGION COURT OF FIRST INSTANCE MISCELLANEOUS PROCEEDINGS NO. 5788 OF 2000
Coram: Hon. Sakhrani J in Court Date of Hearing: 5 and 7 July 2001 Date of Judgment: 25 July 2001 ---------------------- J U D G M E N T ---------------------- 1.This is an appeal from the decision of Mr. Kestutis Stasys Kripas acting for the Registrar of Trade Marks ("the acting registrar") dated 18 August 2000. 2.The appellant ("the opponent") was the opponent to trade mark application No. 9539 of 1993. The application was made by the respondent ("the applicant") on 9 September 1993 to register in Part A of the Register in Class 14 the trade mark "帝龍" ("the suit mark") which is transliterated as "Tai Lung". The Chinese characters in the suit mark mean "the emperor, the dragon". The goods to be covered by the registration were :
3.The Registrar of Trade Marks accepted the suit mark for registration subject to the following conditions:
The application was advertised in the Government Gazette on 27 January 1995. 4.On 17 March 1995 the opponent filed its notice of opposition to the application. The opponent opposed the application on the basis that it was the proprietor of the registered trade mark "帝舵" (Tai To or Tai Tor) registered in Hong Kong under No. 3975 of 1991 in Class 14 in respect of precious metals and their alloys and goods in precious metals or coated therewith, jewellery, precious stones; horological and chronometric instruments and parts and fittings thereof, watchbands and wrist watches. 5.The applicant filed a counter statement dated 8 July 1995. 6.Thereafter the opponent filed evidence by way of the statutory declarations of Cheung Kam Ping ("Cheung") and Stephen Martin Hayward ("Hayward") both made on 26 June 1996. The applicant then filed evidence by way of the statutory declaration of Shirley Mok ("Mok") made on 15 December 1997. 7.Although the opponent had the opportunity to file evidence in reply, it chose not to do so. The matter was then fixed before the acting registrar for hearing. The opponent's agent informed him that they were instructed not to appear at the hearing. The hearing proceeded before the acting registrar in the absence of the opponent or its representatives. In his decision dated 18 August 2000 the acting registrar held that the opposition failed and that the application should proceed. 8.The acting registrar dealt with the matter on the basis that the opponent opposed the application on a number of grounds as set out in its notice of opposition. At the hearing of the appeal before me, however, the opponent relied only on the ground that the suit mark is unregistrable as a trade mark both under s. 12 (1) as well as under s. 20(1) of the Trade Marks Ordinance (Cap. 43). 9.In Miscellaneous Proceedings No. 5789 of 2000 ("the other proceedings") the opponent also appealed against the decision of the acting registrar given also on 18 August 2000 in respect of the opposition to the application for registration by the applicant of its trade mark "君皇" (Gwun Wong). The other proceedings were heard at the same time as these proceedings. I have to-day given judgment in favour of the applicant in the other proceedings. 10.As I have said in my judgment in the other proceedings, it is well established that at the hearing of the appeal great weight should be attached to the decision of the acting registrar. I am satisfied that great weight must also be attached to the decision of the acting registrar in this appeal which should not be lightly disturbed. 11.As regards the opposition under s. 12(1) of the Ordinance, the acting registrar has correctly stated that before the opponent can mount an opposition, it must first overcome the burden of establishing that its mark is known to a substantial number of persons in Hong Kong. If the opponent discharges this burden the onus then shifts to the applicant to satisfy the tribunal that there is no reasonable likelihood of deception arising among a substantial number of persons if the suit mark proceeds to registration. This is not disputed. 12.Both the applicant and the opponent deal in the same goods, namely, watches and timepieces. On the applicant's evidence, the "DELIRIUM" range of the applicant's "CONCORD" watches was launched in 1979 internationally. Since then it was also introduced in Hong Kong. The "DELIRIUM" trade mark has been registered in many countries including Hong Kong. The Chinese equivalent chosen by the applicant for the "DELIRIUM" trade mark was "帝龍" (Tai Lung) which, on the evidence, the applicant intends to use together with the "CONCORD" and "DELIRIUM" trade marks. The Chinese mark will not be applied to the watches themselves but will be used on tags or labels attached to the watches and in Chinese language advertising promotional and sales material. 13.On the evidence filed by the opponent the acting registrar found that the opponent had not established that by 9 September 1993 its mark "帝舵" (Tai To) had sufficient cognizance among a substantial number of persons in Hong Kong (para 52). He accordingly held that on the evidence the opponent had failed to establish the threshold onus necessary to mount the opposition under s. 12(1) and to shift the onus of proof to the applicant to satisfy the tribunal that there was no reasonable likelihood of deception arising among a substantial number of persons if the mark proceeded to registration. Therefore, the opposition under s. 12(1) failed. The acting registrar then went on to deal with the opposition under s. 20(1). 14.In the course of the hearing of the appeal, Ms. Tam, counsel for the opponent, accepted that on the state of the evidence before him, the acting registrar was justified in reaching that conclusion. The opponent had sought to rely on evidence which it had filed in the opposition which was the subject matter of the other proceedings. However, the deponents had failed to exhibit all of the relevant evidence of use of the opponent's trade mark in the opposition the subject matter of these proceedings. That being so, the evidence that had been filed in the opposition the subject matter of the other proceedings was not properly before the acting registrar. I have no doubt that on the state of the evidence before the acting registrar he correctly held that the opponent had failed to establish the threshold onus to mount the opposition under s. 12(1). However, by the affirmation of Hayward filed for this appeal on 18 December 2000 the opponent has now provided sufficient evidence to satisfy the court that by 9 September 1993 its mark "帝舵" (Tai To) had sufficient cognizance among a substantial number of persons in Hong Kong. The said affirmation of Hayward exhibited a copy of his statutory declaration made on 26 June 1996 together with the exhibits thereto and which was filed in the opposition proceedings opposing the application for registration of the trade mark "君皇" (Gwun Wong), the subject matter of the other proceedings. 15.Mr. Yan, counsel for the applicant, accepted that for the purposes of this appeal with the said affirmation of Hayward the opponent had established the threshold onus in respect of the opponent's use of the trade mark "帝舵" (Tai To). In the circumstances the onus shifted to the applicant to satisfy the court that there is no reasonable likelihood of deception arising among a substantial number of persons if the mark proceeds to registration. 16.Apart from relying on s. 12(1), the opponent also relied on s. 20(1). This provides that :
17.It is not contended that the marks are identical. S. 2(4) of the Ordinance provides that :
It is contended that the resemblance of the applicant's mark and the opponent's mark is so near as to be likely to deceive or cause confusion. 18.As I have said in my judgment in the other proceedings the test to be used in applying s. 12(1) is the Smith Hayden test. The test as adapted for this appeal is as follows :
Under s. 20(1) the test to be applied as adapted is that as set out by the acting registrar in para. 67, namely :
19.As Ms. Tam has pointed out, under s. 12(1) the opponent's mark must be considered as it has in fact been used and the applicant's mark in notional fair use whereas under s. 20(1) both marks are to be considered in notional fair use upon the goods concerned, namely watches and timepieces. 20.The main question to consider is whether the two marks are deceptively similar. 21.It is clear from the evidence that at least from June 1992 the opponent has extensively advertised its watches with the trade mark "TUDOR" in English and the trade mark "帝舵" (Tai To) in Chinese. It is only the use by the opponent up to the date of the application that should be considered under s. 12(1), namely up to 9 September 1993. Any use by the opponent after that date is to be disregarded. 22.Mok has stated in her statutory declaration that for a long time Chinese consumers in Hong Kong have referred to the "TUDOR" watches as "刁陀表" (Diu Tor Biu) or Diu Tor watches. This was the Chinese mark used by the opponent for a long time for its "TUDOR" watches before it adopted the mark "帝舵" (Tai To). The applicant does not accept that the mark "帝舵" (Tai To) is a very well known trade mark in Hong Kong. I am, however, prepared to accept on the basis of the evidence filed on behalf of the opponent, that the mark "帝舵" (Tai To) is a well known mark in Hong Kong. However, the crucial question to consider is whether the mark "帝龍" (Tai Lung) is deceptively similar to the mark "帝舵" (Tai To). 23.The first character in both marks is the same. The second character is completely different. I cannot agree with Ms. Tam that there is a visual resemblance between the shape of the second character in both marks, namely "舵" (To) and "龍" (Lung). I fail to see any visual resemblance in the shape of these characters. I would, however, emphasise that as I have said in my judgment in the other proceedings, it is important that the two marks must be judged as a whole and not as to a part or parts thereof. In my judgment the two marks as a whole do not look the same. They look different. 24.In my judgment the two marks do not also sound the same. They sound different. There is no similarity at all in the sound of the two marks. There is no reasonable likelihood of confusion in my view between "帝舵" (Tai To) and "帝龍" (Tai Lung). 25.I have also taken into account the imperfect recollection test which I have set out in my judgment in the other proceedings. 26.In my judgment the two marks are not deceptively similar. 27.Ms. Tam also submitted that on the evidence the opponent's mark "帝舵" (Tai To) was a relatively new Chinese version of the mark "TUDOR" in substitution of the earlier Chinese version "刁陀表" (Diu Tor Biu) and that because of this confusion was more likely than if the "帝舵" (Tai To) mark had been used over a long period of time and had been established in the minds of the public. I am unable to accept this submission. If the marks are not deceptively similar, there is no reasonable likelihood of confusion no matter how long the opponent has used its mark. 28.It was further submitted by Ms. Tam that neither of the two marks have an established meaning as a phrase and therefore they do not have a clear meaning to be remembered by. "帝舵" (Tai To) is translated as "imperial helm". "帝龍" (Tai Lung) is translated as "imperial dragon". She submitted that both marks conveyed a general impression of royalty and power and, therefore, there was deceptive similarity between the two marks. I cannot accept this submission. As I have said in my judgment in the other proceedings that fact that two marks may convey the same idea is not sufficient in itself to create a deceptive resemblance between them. Here the marks do not even convey the same idea but it is submitted that a general impression of royalty and power is conveyed. Even if this were so, I do not see how this assists the opponent. To refuse the registration of a trade mark on the ground that a general impression of royalty is being conveyed between the two marks is tantamount to giving a monopoly to the opponent over the concept of royalty and this the court should not do. As I have said in my judgment in the other proceedings the concept of royalty is something which watch traders wish to use and the evidence supports this. 29.I would also observe that Mok in her statutory declaration at para. 13 said :
Her evidence is unchallenged. I am satisfied that the two marks mean different things and convey different ideas. 30.It is also important to bear in mind that the applicant's "DELIRIUM" range of "CONCORD" watches are not cheap items but are marketed as exclusive high-class timepieces aimed at the top end of the market. Likewise, the opponent's watches are not cheap items either. Both the applicant's and opponent's watches are likely to be found for sale in the same outlets. I have already said in my judgment in the other proceedings that this is an important factor to bear in mind. Because these are expensive items it is unlikely that a purchaser would make a purchase by way of a casual purchase or on impulse. It is highly likely that a purchaser would purchase these items after time and thought rather than casually or on impulse. Sufficient care would be exercised by a purchaser when making a purchase and it is unlikely that confusion would arise. 31.I am satisfied that the two marks are not deceptively similar. In my judgment there is no reasonable likelihood of deception or confusion. 32.In my judgment the acting registrar correctly held that the opposition under s. 20(1) failed. 33.As to notional fair use by the applicant of its mark, Ms. Tam relied on her submissions in the other proceedings. I have dealt with the same in my judgment in the other proceedings and there is no need to repeat this here. As regards the test under s. 12(1) as set out above, having regard to the use of the mark "帝舵" (Tai To) in Hong Kong by the opponent, I am satisfied that "帝龍" (Tai Lung) if used in a normal and fair manner in connection with any goods covered by the proposed registration will be unlikely to cause deception amongst a substantial number of persons. Because of the dissimilarity between the two marks there is no reasonable likelihood of confussion. 34.As regards the test under s. 20(1), assuming user by the opponent of its mark "帝舵" (Tai To) in a normal and fair manner in respect of horological and chronmetric instruments, I am satisfied that there will be no reasonable likelihood of deception or confusion among a substantial number of persons if the applicant also uses its mark "帝龍" (Tai Lung) normally and fairly in respect of the same goods. Because of the dissimilarity between the two marks there is no reasonable likelihood of confusion. 35.It follows from my decision that I am also of the view that if the suit mark is applied to the same goods or same type of goods which are sold by the opponent that would not amount to passing off. 36.In my judgment the opposition fails both under s. 12(1) and s. 20(1). The appeal is dismissed. I also make an order nisi that the costs of the proceedings be paid by the opponent to the applicant such costs to be taxed and paid forthwith.
Representation: Ms. Winnie Tam instructed by M/s Lovells for Appellant (Opponent) Mr. John Yan instructed by M/s Wilkinson and Grist for Respondent (Applicant) The Department of Justice for Registrar of Trade Marks (absent) |