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TRADE MARKS ORDINANCE (CAP. 559)

OPPOSITION TO TRADE MARK APPLICATION NO. 302174175

MARK:

CLASS: 3 & 5

APPLICANT: S.C. Eon Pharmacy Company Limited

OPPONENT: F. Hoffmann-La Roche AG

____________________________________________________________________

STATEMENT OF REASONS FOR DECISION

Background

1. On 28 February 2012, S.C. Eon Pharmacy Company Limited (“the

Applicant”) filed an application under the Trade Marks Ordinance (Cap. 559) (“the

Ordinance”) for registration of a series of two marks shown below (“the

application”) -

(“the suit mark” and individually “mark A” and “mark B”) in respect of the

following goods (“the applied for goods”) -

Class 3

Bleaching preparations & other substances for laundry use; cleaning,

polishing, scouring and abrasive preparations; soaps; perfumery, essential

oils, cosmetics, hair lotions; dentifrices; all included in Class 3.

Class 5

Pharmaceutical and medicinal preparations and substances; medicines

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and drugs; dietetic substances adapted for medical use; veterinary

preparations and sanitary preparations for medical purposes; plasters for

medical purposes; chemical preparations for medical purposes; capsules

for medicines; capsules for pharmaceutical purposes; Chinese patent

medicines; Chinese medicinal herbs; herbs; tonic herbs; herbal

substances and preparations for medical and dietetic purposes; nutritional

supplements; vitamin supplements; mineral food supplements; ginseng;

essence of ginseng; products or preparations made of ginseng extracts;

cordyceps; cordyceps preparations; all for medicinal purpose; all

included in Class 5.

2. The Applicant claimed the colour grey as an element of mark B in the

series.

3. Particulars of the application were published on 24 August 2012. On 23

November 2012, F. Hoffmann-La Roche AG (“the Opponent”) filed a Notice of

Opposition with Grounds of Opposition against the application (“the subject

proceedings”). On 7 February 2013, the Applicant filed a Counter-statement.

On 4 April 2014, through its newly appointed agent Messrs Kenneth Sit, Solicitors,

the Applicant sought leave to amend its Counter-statement as per a draft Amended

Counter-statement. The Opponent objected but did not call for a hearing within

the prescribed time. The Registrar granted leave to the Applicant and deemed the

Amended Counter-statement to have been filed and served on 4 April 2014.

4. The Opponent’s evidence consists of a statutory declaration of its

vice-director Dr Hans-Friedrich Czekay (“Dr Czekay”), with exhibits “HFC-1” to

“HFC-9”, filed on 23 October 2013 (“HFC’s SD”). The Applicant’s evidence

consists of a statutory declaration of its director Siu Yuk Ping (“Ms Siu”), with

exhibits “SYP-1” to “SYP-7”, filed on 22 April 2014 (“SYP’s SD”).

5. The opposition hearing took place before me on 25 November 2015 (“the

hearing”). Mr Hui Man Kit Patrick (Mr Hui”) of Messrs Kenneth Sit, Solicitors

represented the Applicant. Mr Philips Wong of counsel (“Mr Wong”), instructed

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by Messrs Deacons appeared for the Opponent. Mr Wong expressed at the outset

that the Opponent only opposed the application respecting the applied for goods

under Class 51 and that such a stance was all along made amply clear to the

Applicant.2 I stood down the matter for Mr Hui to seek instructions on the

Opponent’s position with a view to narrowing down issues between the parties.

Having taken instructions, Mr Hui insisted on arguing for both the classes 3 and 5

applied for goods. It was on that footing that the hearing was proceeded with, at

the conclusion of which I reserved my decision.

6. As the subject proceedings were only targeted at the applied for goods

under Class 5, my attention herein would be focused on those goods (“the

Applicant’s goods”).

Grounds of opposition

7. A number of grounds were pleaded in the Grounds of Opposition. At

the hearing Mr Wong restricted them to those solely under section 12(3) of the

Ordinance.3

Relevant date

8. The relevant date for considering the subject proceedings is 28 February

2012, the date of the application (“the relevant date”).

Opponent’s evidence

9. According to HFC’s SD, the Opponent is a Swiss company belonging to

the F. Hoffmann-La Roche Ltd. Group (“the Roche Group”) which Dr Czekay

claimed to be one of the world’s leading research-based healthcare providers. In

1 Skeleton Submissions of the Opponent, para. 4. 2 Notice of Opposition, Box 01. 3 Skeleton Submissions of the Opponent, para. 4.

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Hong Kong, the Opponent is the owner of the mark “ ” (Trade

Mark No. 199504899) covering “pharmaceutical preparations” in Class 5,

registered on 8 December 1993 (“the Opponent’s mark”).4 The Opponent’s mark

has also been registered in over 100 countries and regions throughout the world.5

10. It is convenient to note here that Dr Czekay adduced no evidence on two

other marks pleaded in the Notice of Opposition namely, “ ”

(Trademark registration no. 200000993) and “ ” (Trademark

registration no. 200000750). Those two marks did not feature in the Skeleton

Submissions of the Opponent nor were canvassed by Mr Wong at the hearing. It

was the Opponent’s case to only rely on the Opponent’s mark in the present

proceedings.

11. Dr Czekay said the Opponent’s mark was first adopted and used by the

Opponent’s predecessor in Belgium in around 1990 and then in Hong Kong in 1996.

The mark has since been continuously and extensively used in relation to goods

under the specification of “pharmaceutical preparations” in Class 5 (“the

Opponent’s goods”). Paragraph 7 of HFC’s SD set out the following sale figures

of the Opponent’s goods promoted and sold in Hong Kong under the Opponent’s

mark -

Year Sales of the Opponent’s

goods in Hong Kong

2007 HKD 21,796,320

2008 20,615,400

2009 19,191,900

2010 18,652,140

2011 16,298,100

2012 13,528,320

4 HFC’s SD, Exhibit “HFC-1”. 5 HFC’s SD, Exhibit “HFC-2”.

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12. Through the Opponent’s official website at www.roche.com which was

said to be first launched in 1992, information about the Opponent and its products

has been made available to customers, locally and elsewhere around the world.

The said website mentioned that the Opponent has two offices in Hong Kong,

Roche Hong Kong Limited and Roche Diagnostics (Hong Kong) Limited, both of

which were under the Roche Group.

13. According to Dr Czekay, Roche Hong Kong Limited (“Roche HK”) was

established in 1961 and is one of the leading companies in the Hong Kong

pharmaceutical industry. Its business focuses on clinical research, marketing and

sales of pharmaceutical products in both the Hong Kong and Macau markets.

Roche HK also has presence in Mainland China.6

14. Roche HK has engaged DKSH HK Ltd as its exclusive distributor.

Adduced under Exhibit “HFC-5” to HFC’s SD was a set of 12 sample invoices of

orders placed with Roche HK for various lines of the product “RECORMON

SYRINGES” during the period between March 2004 and January 2012. It is the

Opponent’s case that the Opponent’s mark has been applied on the packaging of the

Opponent’s goods and appeared on invoices, catalogues, leaflets etc relating thereto.

The Opponent’s goods have been promoted through visits to hospitals and clinics

and advertisements in medical or clinical publications.7 The products bearing the

Opponent’s mark discussed in the materials adduced are noted to be predominantly

concerned with the treatment of anaemia associated with renal failure. Dr Czekay

said the Opponent’s goods were registered under the Pharmacy and Poisons

Ordinance (Cap. 138) as early as from 1995.8

15. Goods bearing the Opponent’s mark were said to have been sold not only

in Hong Kong but also in many other jurisdictions across the world. In Hong

Kong, the Opponent’s goods were used by hospitals and clinics including the

teaching hospitals under the Hospital Authority. Dr Czekay claimed that through

such extensive sales networks, advertising and marketing in the medical field, the

6 HFC’s SD, Exhibit “HFC-3”. 7 HFC’s SD, Exhibits “HFC-6”, “HFC-7” & “HFC-8”. 8 HFC’s SD, Exhibits “HFC-9”.

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Opponent’s mark has become well-known among medical practitioners and

patients locally and overseas. The relevant consumers have come to associate the

Opponent’s goods bearing the Opponent’s mark as belonging to the Opponent.

16. The remainder of HFC’s SD discussed how similar or identical the

Applicant’s goods and the Opponent’s goods were and the similarity between the

subject mark and the Opponent’s mark, which as a whole giving rise to a likelihood

of confusion between the two marks.

Applicant’s evidence

17. According to SYP’s SD, the Applicant was incorporated in Hong Kong

on 3 April 2000 and operates a single drug store in Mongkok West, Kowloon.9

Ms Siu claimed that since about January 2011 the Applicant intended to develop a

skin cream for the treatment of eczema and related skin problems (“the Applicant’s

skin cream”). Ms Siu said it was her who came up with the name “保康膚” in

Chinese for the contemplated product, literally meaning “to maintain healthy skin”.

Ms Siu subsequently came up with the name “BECOMON” which she considered

to be an artistic English translation of “保康膚” in Chinese. Ms Siu also claimed

that she was not aware of the existence of the Opponent’s goods nor the Opponent’s

mark until she received notification of the subject proceedings in November 2012.

18. In paragraphs 6 of SYP’s SD and Exhibit “SYP-2”, Ms Siu mentioned

that two signs belonging to the Applicant have been successfully registered as trade

marks in 2012: “ ” and “ ”, both in respect of goods

in Class 3 and Class 5. Ms Siu nonetheless did not explain why she mentioned

these two marks.

19. By discussing information gathered from the Opponent’s website about

9 SYP’s SD, Exhibit “SYP-1”.

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the nature, ingredients and sale channels of a particular product of the Opponent

namely “NeoRecormon (Epoetin Beta)” (“NeoRecormon”), Ms Siu opined that the

Applicant’s skin cream differed from NeoRecormon as follows -

Applicant’s skin cream Opponent’s NeoRecormon

Sale channel Over the counter By prescription only

Target customer Any member of public

with skin problems

Patients with specific medical

conditions and use of drug

could lead to side effects

Packaging Cream in a squeezable

container

Drug in pre-filled syringes

20. It was Ms Siu’s case that there was no likelihood of confusion between

the Applicant’s skin cream and NeoRecormon because, firstly, the average

consumer of both products would place emphasis on their different purposes and,

secondly, since the decisions to prescribe NeoRecormon were mainly a matter for

medical practitioners in hospitals, the drug’s de fact customers were medical

practitioners who would give considerable attention when purchasing

NeoRecormon.

Opposition under section 12(3) of the Ordinance

21. Section 12(3) of the Ordinance provides that –

“A trade mark shall not be registered if -

(a) the trade mark is similar to an earlier trade mark;

(b) 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

(c) the use of the trade mark in relation to those goods or services is

likely to cause confusion on the part of the public.”

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22. Section 12(3) of the Ordinance essentially prohibits the registration of a

trade mark which would be likely to cause confusion on the part of the public as a

result of its being similar to an earlier trade mark and because it is to be registered

in respect of goods or services the same as or similar to those the subject of the

earlier trade mark.

23. The ground of opposition is premised on the existence of an “earlier trade

mark”, a term defined in section 5 of the Ordinance as follows -

“(1) In this Ordinance, “earlier trade mark”, in relation to another

trade mark, means –

(a) a registered trade mark which has a date of 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; or

…”

24. According to section 7(1) of the Ordinance, in determining whether the

use of a trade mark is likely to cause confusion on the part of the public, the

Registrar may take into account all factors relevant in the circumstances, including

whether the use is likely to be associated with an earlier trade mark.

25. The basic principles regarding the assessment of similarity between signs

and the likelihood of confusion between them are set out in the cases of Sabel BV v

Puma AG [1998] R.P.C. 199, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer

Inc [1999] R.P.C. 117, Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel

BV [2000] F.S.R. 77 and Specsavers International Healthcare Ltd v Asda Stores

Ltd [2012] F.R.S. 19. Such principles have been adopted in Hong Kong and

recently affirmed by the Court of Final Appeal in TWG Tea Co Pte Ltd v Tsit

Wing (Hong Kong) Co Ltd (FACV 15/2015) –

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(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 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 analyze 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 also 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.

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(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.

26. As mentioned in paragraph 9 above, the Opponent’s mark has a date of

application for registration earlier than that of the suit mark. According to section

5(1)(a) of the Ordinance, the Opponent’s mark is an earlier trade mark in relation to

the suit mark.

Relevant public

27. The average consumer of the category of goods concerned is deemed to

be reasonably well informed and reasonably observant and circumspect. The

average consumer’s level of attention is likely to vary according to the category of

goods in question.

28. The Applicant’s goods include pharmaceuticals and other preparations for

medical or veterinary purposes, nutritional and dietary supplements etc whereas the

registration of the Opponent’s mark covers pharmaceutical preparations generally.

Both sets of goods encompass a broad range of pharmaceutical and medicinal

products in Class 5 without restriction as to whether such products are for specialist

use by medical professionals for prescription to patients or are available through

purchase over the counter without prescription. The relevant consumers of both

sets of goods would include both medical professionals and any member of the

public. Given the serious consequences that may result from the administering of

a wrong pharmaceutical preparation, the degree of seriousness varying with the

nature of a particular preparation concerned, the end users of pharmaceutical

products will generally show a high degree of attentiveness even in relation to

prescription medicines where the decision to purchase rests on the healthcare

professional.10 As such, I am of the view that the level of care and attention that

10 Alcon v OHIM [2007] ETMR 68; Kerly’s Law of Trade Marks and Trade Names (15th Edition) at

para. 9-050.

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can be expected from the average consumer of both the Applicant’s goods and the

Opponent’s goods will be higher than average.

Comparison of marks

29. 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 attached to those

different elements taking into account the nature of the goods in question and the

circumstances in which they are marketed.

30. When comparing the marks, one must consider the perception of the

marks in the mind of the average consumer of the goods in question. The

average consumer is deemed to be reasonably well informed and reasonably

observant and circumspect. As discussed in paragraph 27 above, the average

consumer’s level of attention is likely to vary according to the category of goods

in question.

31. The Opponent’s case on the comparison of the marks was set out in

paragraphs 12 to 17 of the Skeleton Submissions of the Opponent while the

Applicant’s in paragraphs 20 to 28 of the Skeleton Submissions of the Applicant,

both supplemented by oral submissions at the hearing. Apart from the Opponent’s

mark, the Applicant also dealt with two other marks of the Opponent “罗可曼” and

“羅可曼” in its written submissions. Since the Opponent’s case did not turn on

either of those two marks but the Opponent’s mark,11 I would only deal with the

Opponent’s mark in these reasons for decision.

32. The Opponent’s mark “ ” is a pure word mark made up

of eight English alphabets. It is expressed in the uppercase in plain font without

any stylization.

11 Paragraph 10 above.

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33. The suit mark “ ” consists of two pure word marks in

series, each made up of the same seven English alphabets. Mark A is expressed in

the uppercase in plain font without any stylization while Mark B in the uppercase

(except the ending alphabet “n” which appears more to be in the lowercase) and

slightly stylized font and with a colour claim grey. Despite the slightly stylized

font, the seemingly lowercase “n” and the colour claim in mark B, there is only one

single mark in the series mark since all the instances in the series are manifestations

of the same mark.12 I would refer to the suit mark as “BECOMON”.

34. Both of the words making up the Opponent’s mark and the suit mark

have three syllables, respectively “RE-COR-MON” and “BE-CO-MON”.

Visually, the two marks differ by (a) their first alphabet, “R” vs. “B”; and (b) the

absence of an “R” in the middle of the suit mark. The two marks otherwise

share six same alphabets “_ECO_MON” in sequence. The average consumer

normally perceives a mark as a whole and does not proceed to analyze its various

details. Despite the two said differences, given that the upper quadrant of

alphabet “R” and alphabet “B” in the respective frontal part of the two marks

looks the same and that the average consumer rarely has the chance to make direct

comparisons between marks and must instead rely upon the imperfect picture of

them he/she has kept in his mind, I consider that the two said differences are too

subtle to be noticed. Visually I find that there exists a high degree of similarity

between the Opponent’s mark and the suit mark.

35. In paragraph 23 of the Applicant’s Skeleton Submissions and at the

hearing, Mr Hui discussed the effect of the colour factor in mark B on the

similarity, if any, between the Opponent’s mark and the suit mark from a visual

point of view. He argued that, combined with the other differences he

advanced between the two marks (i.e. mainly “R” vs. “B” and the missing “R”),

the colour factor would outweigh the similarity in the alphabets “_ECO_MON”

identical in the two marks.

12 Supported by Thomas Pink Ltd v Victoria’s Secret UK Ltd [2014] F.S.R. 40 at para. 104, submitted

and discussed by Mr Wong at the hearing.

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36. While the colour claim in mark B is one factor to be taken into account in

the global appreciation test, I am mindful of the correct approach in comparing

marks that one is to consider a notional (or normal) fair use of a mark without any

restrictions.13 As the suit mark is a series of two marks where colour is only

claimed in one of them, it would be wrong to view the colour factor with any

significance. According to section 51(3) of the Ordinance, “series of trade marks”

means a number of trade marks which resemble each other as to their material

particulars and differ only as to matters of a non-distinctive character not

substantially affecting the identity of the trade mark. The colour claim in mark B

should therefore be regarded as a matter of non-distinctive character which does

not substantially affect the identity of mark B. Mr Hui’s submissions that any

similarity between the two marks would be overweighed by the colour factor which

is absent in the Opponent’s mark was plainly wrong.

37. Aurally, the suit mark and the Opponent’s mark would most likely be

pronounced as “ˈrɛ / ke / mon” and “ˈbɛ / ke / mon”. The two marks share the

same 2nd and the 3rd syllables whereas the vowel sound “ɛ” in their 1st

syllables is also identical. I agree with Mr Wong’s submission that the only

difference between the two marks lies in the sound of the consonant of the 1st

syllables (i.e. “r” vs. “b”) and that when read together, the slight difference

between “rɛ” and “bɛ” would easily be neglected.14 In the premises, I find the

two marks aurally similar to a high degree.

38. Neither the Opponent’s mark nor the suit mark is dictionary defined.

Both marks have no meaning and there exists no conceptual similarity between

them.

39. Having regard to the visual, aural and conceptual similarities and

differences between the Opponent’s mark and the suit mark and the overall

impression created by each of them, I find that the two marks are similar to a high

degree.

13 Kerly’s Law of Trade Marks and Trade Names (15th Edition) at para. 9-084. 14 Skeleton Submissions of the Opponent, para. 15.

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Comparison of goods

40. The well-known tests for assessing similarity in goods and services are

found in British Sugar v Robertson and Sons Ltd [1996] R.P.C. 281 and Canon

Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (supra). The court considered

that all relevant factors relating to the goods or services in question should be

taken in account. They include, inter alia, their nature, intended purpose,

method of use, whether the goods/services are in competition with each other or

are complementary, as well as their users and the channels through which they

reach the market.

41. Goods and services are considered identical if they fall within the

ambit of the terms within the competing specification.15 Goods and services

are considered complementary if there is a close connection between them, in

the sense that one is indispensable or important for the use of the other in such a

way that customers may think that the responsibility for those goods and

services lies with the same undertaking.16

42. In the Applicant’s skeleton submissions17 and at the hearing, Mr Hui

devoted much text and time to discussing the Opponent’s goods being

prescription-only medicine sold or used in the form of pre-filled syringes while the

Applicant’s goods were intended to be sold over the counter without prescription in

the form of a cream in squeezable containers. As such, Mr Hui said there could

not be any similarity between the two sets of goods. On this point Mr Hui also

cited, inter alia, paragraph 9-084 of Kerly’s (supra) on notional fair use of marks

which I had in fact briefly touched on in paragraph 36 above -

“9-084 Notional fair use

In applying those principles the correct approach is to consider a

notional (or normal) fair use of the mark the subject of the application

15 Gérard Meric v Office for Harmonization in the Internal Market (Trade Marks and Designs)

(OHIM) Case T-133/05. 16 Boston Scientific Ltd v Office for Harmonization in the Internal Market (Trade Marks and

Designs)(OHIM) Case T-325/06. 17 Skeleton Submissions of the Applicant, paras. 29 to 36.

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and, where the earlier mark is a registered mark which has not been used,

a notional fair use of that mark too, both uses in relation to the full range

of goods or services within their respective specifications. Where the

earlier mark has been used, then, in the absence of argument or evidence

to the contrary, the way in which the proprietor has used it can be said,

at the very least prima facie, to be the paradigm case of its use in a

notional fair manner.” [own emphasis]

43. Mr Wong on the other hand drew my attention to a number of case

authorities in order to reinforce the well-established principles that in an opposition

involving relative grounds, notional fair use rather than the actual use of a mark

should be looked at.18

44. While the above paragraph quoted by Mr Hui is relevant to the subject

proceedings, I opine that it should be read in conjunction with paragraph 9-030 of

Kerly’s -

“The global appreciation assessments in relation to the relative grounds

in s.519 must be made on the basis of fair and notional use of the earlier

and later marks, rather than by taking into account the actual use in the

marketplace as required in the equivalent assessments in relation to

infringement (under s.10 )20. This may have the consequence that, for

example, a tribunal finds that on the basis of notional and fair use there

was a likelihood of confusion between the earlier and later mark under

s.5(2) 21 and therefore the later mark was refused registration; but

another tribunal later finds no infringement of the later mark under

s.10(2)22 by reason of the circumstances of actual use of the registered

mark and the defendant's mark that the original tribunal refused to

register.” [own emphasis]

45. The decision in Premier Brands UK Ltd v Typhoon Europe Ltd [2000]

F.S.R. 767 (at page 8), a case of infringement cited by Mr Hui where the actual use

18 The Tsit Wing case (supra) at para. 35, the Registrar’s decisions in the “J.ESTINA” mark

(Opposition to Trade Mark Application No. 300549955), 18.4.2012 at para. 22 and in the “Herbal

Bliss” mark (Opposition to Trade Mark Application No. 301526184), 17.7.2014 at paras. 63 & 64. 19 Similar to section 12 of the Ordinance. 20 Similar to section 18 of the Ordinance. 21 Similar to section 12(2)-(3) of the Ordinance. 22 Similar to sections 18(2)-(3) of the Ordinance.

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of a mark was considered to be a more relevant consideration, would help illustrate

the principles discussed in paragraph 9-030 of Kerly’s. As the Opponent’s attack

in these proceedings are not about infringement but relative grounds under section

12 of the Ordinance, the notional fair use rather than the actual use approach is to

be preferred.

46. As discussed in paragraph 28 above, both the Opponent’s goods and the

Applicant’s goods encompass a broad range of pharmaceutical and medicinal

products in Class 5 without any restriction whatsoever as to their users, sale

channels or forms of use. Furthermore, the Applicant’s goods in Class 5

undoubtedly fall squarely within the ambit of the specification of “pharmaceutical

preparations” registered under the Opponent’s mark. On a proper understanding

and application of the above two passages from Kerly’s, I do not see how the

differences in the actual (or intended, in the Applicant’s case) use of the

Opponent’s mark and the suit mark would, as Mr Hui suggested, render the two

sets of goods dissimilar where identity invariably exists between them.

47. Having considered all relevant factors, I come to a firm view that the

Applicant’s goods sought to be registered in Class 5 are identical to the Opponent’s

goods.

48. For the sake of completeness, despite Mr Hui’s indication that he was

instructed to advance the Applicant’s case regarding the applied for goods as a

whole,23 he did not deal with any of the applied for goods in Class 3 at the hearing.

Distinctiveness of the Opponent’s Mark

49. The distinctive character of the earlier trade mark is a factor to be taken

into account in the assessment of the likelihood of confusion. It is trite that there

is a greater likelihood of confusion where the earlier mark has a highly distinctive

character either because of its inherent qualities or because of the use that has been

23 Paragraph 5 hereof.

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made of it (Sabel v Puma (supra)).

50. In the subject proceedings, the Opponent’s mark is a coined word without

any dictionary meaning nor is descriptive of the Opponent’s goods in any way. I

have also considered the Opponent’s evidence on use of the Opponent’s mark.

Overall, taking into account the inherent characteristics and the extent to which the

Opponent’s mark has been used, I consider that the Opponent’s mark is inherently

distinctive and enjoys an enhanced degree of distinctiveness because of the use of

it.

Likelihood of confusion

51. The likelihood of confusion must be appreciated globally, taking into

account all relevant factors. 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. 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 (Canon Kabushiki Kaisha v

Metro-Goldwyn-Mayer Inc (supra)).

52. In the present case, I have found that the level of care and attention that

can be expected from the average consumer of both the Applicant’s goods and the

Opponent’s goods will be higher than average (paragraph 28 above).

53. I have compared the suit mark with the Opponent’s mark and found a

high degree of similarity between them (paragraph 39 above). I have also

compared the Applicant’s goods with the Opponent’s goods and found identity

between them (paragraph 47 above).

54. Mr Hui tried his best at the hearing as well as in the Skeleton

Submissions of the Opponent to bring home his argument that there is no

likelihood of confusion between the suit mark and the Opponent’s mark because

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one is intended to be use on goods to be sold over the counter and the other on

goods requiring prescription. I agree with Mr Wong that such an argument is

wholly misconceived as it completely overlooks the concept of notional and fair

use and the fact that none of the (application for) registrations of the two marks

contains any limitation as to use.

55. Taking into account the combined effect of these findings and having

regard to the degree of distinctiveness of the Opponent’s mark, I consider that, even

with a higher than average level of care and attention, when the suit mark is used in

relation to the Applicant’s goods, the average consumer would be confused into

thinking that those goods offered under the suit mark and the Opponent’s goods

offered under the Opponent’s mark come from the same or economically-linked

undertakings. The ground of opposition under section 12(3) of the Ordinance is

therefore made out in relation to the Applicant’s goods.

Conclusion and costs

56. For the reasons stated above, the opposition succeeds in respect of the

applied for goods in Class 5. As the subject proceedings were right from the start

not targeted at the applied for goods in Class 3 nor any submissions made thereon

at the hearing, those goods could proceed to registration.

57. As the opposition is successful, I award the Opponent costs. Subject to

any representations as to the amount of costs or calling for special treatment, which

either party makes 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 Rules of the High Court (Cap. 4A) as applied to trade mark matters,

unless otherwise agreed between the parties.

( Elsie Tse )

for Registrar of Trade Marks

9 May 2016