Aug 22, 2024 | Eleven Principles to Determine Whether a “Trade Mark Application” is Similar to an “Earlier Trade Mark”
1 According to Section 12(3) of the Trade Marks Ordinance (Cap. 559), the Intellectual Property Department will refuse a trade mark application if there is an “earlier trade mark” under the same class of goods and that the “trade mark application” and the “earlier trade mark” are likely to cause confusion on the part of the public.
2 In the opposition proceedings, the above “elements of similarity” and “elements of public confusion” are most disputed by both parties (i.e., the applicant and the opponent). Through this article, the author wishes to explore in more depth what principles the Intellectual Property Department uses to assess whether:
the “trade mark application” is similar to the “earlier trade mark”; and
whether the “earlier trade mark” will cause confusion on the part of the public.
3 On 9th February 2024, the “Intellectual Property Department” issued a written decision. From that decision, the author wishes to point out what factors will be considered by the “Intellectual Property Department”.
4 In this case, Huawei Technologies Co., Ltd. (“Applicant”) applied to the Trade Marks Registry on 30th July 2020 to register the trade mark “” for goods of Class 9 (computers, phones, etc.). Subsequently, on 5th August 2021, Vivo Mobile Communication Co., Ltd. (“Opponent”) filed an objection. Since then, the trade mark application has entered the opposition procedure.
5 According to the Opponent’s Statement of Grounds, the Opponent stated that it is the registered owner of a series of similar registered trademarks (i.e., , X50, X60, X70, X80 and X90), and since 2007, the Opponent has been using the English letter “X” as the model number for its product series, and it was also the first user. Therefore, the Opponent claims that the approval of the trade mark application will cause confusion with the Opponent’s registered trademarks and will cause confusion to the public.
6 On the other hand, the Applicant disputed the above reasons put forward by the Opponent, and claimed that the trade mark application is not similar to the “earlier trade mark” in terms of phonetics or visual appearance, and thus there is no likelihood of confusion. It also pointed out that the English letter “X” in its trade mark application is very different from the “X” in the Opponent’s earlier trade mark. The Applicant also claimed that its trade mark application was created independently and did not take reference from the Opponent’s trade mark.
7 On 14th September 2023, the opposition hearing was thoroughly conducted. After considering the evidence from both sides, the Trade Marks Registry made the following decision:
Based on the substantial evidence of use provided by the Opponent, the Trade Marks Registry accepted that the Opponent’s priority date is 16th March 2020.
According to Section 12(3) of the Trade Marks Ordinance, the Trade Marks Registry, based on case law (including Tsit Wing (Hong Kong) Co Ltd and Others v TWG Tea Co Pte Ltd (2015) 1 HKLRD 414), decided that the trade mark in the application ( ) is similar to the “earlier trade mark” and will confuse the public, and thus refused the trademark application.
8 In making the above decision, the Trade Marks Registry considered and accepted the Court’s ruling, including the Court’s decision in Tsit Wing (Hong Kong) Co Ltd and Others v TWG Tea Co Pte Ltd (2015) 1 HKLRD 414.
9 In assessing the similarity between marks and the likelihood of confusion between them, the Trade Marks Registry will consider the following eleven (11 nos.) principles:
The likelihood of confusion must be appreciated globally, taking account of all relevant factors;
The matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably observant and circumspect, but who 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, and whose attention varies according to the category of goods or services in question;
The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
The visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
Nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
And beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
A lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa
There is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
Mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
The reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense;
If the association between the marks deceive the public to wrongly believe that the respective goods or services come from the same or commercially linked undertakings, there is a likelihood of confusion.
10 It is hoped that the abovementioned factors can provide some guidance to trade mark applicants and trade mark agents of opponents.