"Fijian Septwolves"

Hong Kong
- Registrability
- Likelihood of deception
- Confusion to the public

 

Summary

Fijian Septwolves Group Corp. (the “applicant”) applied to register the trade mark “” for tobacco; cigars; cigarettes; tobacco pipes; cigarette cases, not of precious metal; cigarette holders, not of precious metal; matches; lighters for smokers; cigarette filters; cigarette paper and smoker's articles in class 34. (the “Mark”)

The Mark was accepted after examination and was advertised in the Government Gazette. Longyan Cigarette Factory (the “opponent”) objected to the registration of the 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 key issues are 1) whether the opponent's “”, “SEPTWOLVES” and “七匹狼” marks had established requisite reputation in Hong Kong at the application date of the Mark to trigger Section 12(1)? 2) Whether there is a 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 “SEPTWOLVES”, “七匹狼” and “SEPTWOLVES 七匹狼 and device” marks must be more than de minimus (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 cigarette export contracts and advertising activities including commercial TV advertisements on Phoenix TV Chinese Channel and advertisements in a Hong Kong Chinese newspaper to show that its “SEPTWOLVES”, “七匹狼” and “SEPTWOLVES 七匹狼 and device” marked cigarette products were launched in Hong Kong prior to the application date. Unsurprisingly, the Registrar found that the opponent's reputation in its “SEPTWOLVES”, “七匹狼” and “SEPTWOLVES 七匹狼 and device” marks were more than de minimis . The onus of proof then shifted to the applicant to convince the Registrar that there is 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 opponent use their marks in a normal and fair manner in respect of the goods covered by their registration ( Smith Hayden & Co's Application (1946) 63 RPC 97 at 101).

The opponent has used its “SEPTWOLVES”, “七匹狼” and “SEPTWOLVES 七匹狼 and device” marks in relation to cigarette products. The Registrar confirmed that the goods covered by the Mark are the same or of the same description to the goods covered by the opponent's marks and that the target customers (i.e. smoking population in Hong Kong ) are also the same.

Having compared the applicant's mark and the opponent's marks, the Registrar found that the opponent's composite mark and the applicant's mark are identical except for slight differences in color contrast. The Registrar observed that the applicant encountered a “triple identity” problem, which is near identical marks for the same goods in the same market.

The Registrar concluded that since both marks are nearly identical and cover the same goods in the same market, there is a reasonable likelihood that the registration of the Mark will cause deception or confusion to the public. The Registrar therefore refused the registration of the suit mark.

Decision of the Registrar of Trade Marks dated 13 June 2006 (unreported)