"BEE (device mark)"

Hong Kong
- Registrability
- Likelihood of confusion
- Similarity of the marks

 

Summary

A Chapman Entertainment Limited (the applicant) applied to register the trade mark “ ” for clothing; footwear and headgear in class 25 (“the Mark”). The Mark was presented in a 3-dimensional manner and in combination with the crown device.

The Registrar objected to the application on the basis that the Mark was considered similar to an earlier registered “Bee & Device” mark “ ” (“the Cited Mark”) and that there was a likelihood of confusion to the public.

The applicant argued that the Mark consists of the character of a Bee Prince with a three-pronged crown device represented in a 3-dimensional manner, whereas the Cited Mark represented as a wingless grub or caterpillar in a 2-dimentional manner and no confusion is likely to arise.

In deciding whether there is likelihood of confusion, the Registrar applied the global appreciation test formulated by the European Court of Justice.

The Registrar considered that the likelihood of confusion depends on the overall effect of the similarity between the marks and the goods from the perspective of the average consumer, bearing in mind that he perceives the marks by overall impression, not by their various details.

Unsurprisingly the Registrar took the view that both marks claimed the same goods and that the target customers are also similar.

The Registrar then made comparisons between the marks. Although the Registrar accepted that there were notable differences between the two marks, namely the small three-pronged crown and the buoyancy aid in the Mark, the Registrar asserted that those differences are not apparent. The Registrar asserted that both marks created an overall impression that the marks are cartoon creatures or insects with a pair of antennae, big round eyes, thin limbs, portrayed in a standing posture and wearing a big smile. The Registrar was of the view that both marks are visually and conceptually similar, and that the use of the Mark in relation to the specified goods will likely cause confusion on the part of the public as to origin of the goods.

The applicant referred to numerous registered trade marks in Hong Kong which comprise insects or creatures with human attributes similar to the Cited Mark. However, the Registrar believed that the marks convey different impressions due to the different postures adopted by those cartoon devices.

The Registrar refused the registration of the Mark under section 12(3) and section 42(4) (b) of the Trade Mark Ordinance (Cap 559).

Decisions or Registrar of Trade Marks dated 26 June 2006 (unreported)