"Phytowhite"

Hong Kong
- Likelihood of confusion
- Similarity of the marks

 

Summary

A Kingstar International Trading Limited (the "applicant") applied to register the trade mark "Phytowhite" (script) for cosmetics and perfumes; all being made of plants or vegetal extracts and all for whitening the skin of the mark in class 3. (the "Mark").

The suit mark was accepted in Part B of the register and was advertised in the Government Gazette. C.F.E.B. Sisley ("the opponent") objected to the registration of the suit mark on the basis that use of the Mark will likely deceive or cause confusion or would be disentitled to protection in a court of justice under Section 12(1) of the old Trade Mark Ordinance (Cap 43) ("the Ordinance"). The opponent also argued that the applicant has acted in bad faith in registering the suit mark so the Registrar should exercise its discretion to refuse registration under Section 13(2) of the Ordinance.

The key issues were 1) whether the opponent's "PHYTO BLANC" mark had established requisite reputation in Hong Kong at the application date of the Mark to trigger Section 12(1)? 2) Whether there is reasonable likelihood of deception amongst a substantial number of persons if the Mark proceeds to registration?

In determining whether the opponent had established requisite reputation in Hong Kong , the Registrar relied on the requirement noted in DA VINCI Trade Mark [1980] RPC 237 that the opponent's reputation in its "PHYTO BLANC" mark must be more than de minimis (i.e. more than enough to be taken seriously). Only if the opponent discharges this evidential burden does the onus shift to the applicant to satisfy the Registrar that there is no reasonable likelihood of deception arising among a substantial number of persons if the mark proceeds to registration.

The opponent provided evidence of advertising activities and invoices issued in Hong Kong to show that its "PHYTO BLANC" marked range of skin care products was launched in Hong Kong in 2000. Unsurprisingly, the Registrar found that the opponent's reputation in its "PHYTO BLANC" mark was more than de minimis. The onus of proof then shifted to the applicant to convince the Registrar that there was no reasonable likelihood of deception amongst a substantial number of persons if the Mark proceeds to registration.

The test applied by the Registrar is whether there is a reasonable likelihood of confusion among a substantial number of persons if both the applicant and the opponent use their marks in a normal and fair manner in respect of the goods covered by their registration.

The opponent has used its "PHYTO BLANC" mark in relation to skin care products. The Registrar confirmed that the goods covered by the Mark are similar to the good covered by the opponent's mark and that the kinds of customers for both marks are also similar.

Regarding the aural comparison, the Registrar found that the Mark and the opponent's "PHYTO BLANC" mark are similar since both marks consist of three syllables and the first two syllables were identical to each other.

On the visual comparison, the applicant argued that both marks are different and distinguishable since the Mark consists of only one word with one capital letter and nine small letters whereas the opponent's mark consists of two words all in capital letters. On the other hand, the opponent argued that both marks are similar since both marks contain the same prefix "Phyto" and the suffix "Blanc" is the French word of "White". Taking into account the principle of imperfect recollection, the Registrar concluded that both marks are similar since both marks conjure up the idea that they have to do with plants and the color white. The Registrar observed that "Blanc" is a simple French word and that the consumers of cosmetics products are often exposed to French words used in relation to such products. Further, the opponent's evidence showed that the opponent has emphasized the whitening effect of its PHYTO BLANC marked products. The Registrar concluded that a significant number of people of Hong Kong would understand that the French word "Blanc" means "white" in English.

The Registrar concluded that since both marks look similar and both marks cover the same goods, there is a reasonable likelihood that the registration of the suit mark will cause deception or confusion to the public. The Registrar refused the registration of the suit mark.

The opponent also argued that the applicant registered the Mark in bad faith so the Registrar is duty bound to consider an exercise of discretion under Section 13(2) in each and every case where an opposition fails under other grounds. After noting that this argument was not in the Notice of Opposition, so did not have to be considered, the Registrar rejected the opponent's argument and emphasized that the Registrar is not duty bound in each and every case to consider whether or not he should exercise his discretion in favour of an opponent where the opposition fails on other grounds.

Decision of the Registrar of Trade Marks dated 22 February 2005 (unreported)