Hong Kong
- Registrability
- Likelihood of confusion
- Conceptual Similarity
- Honest concurrent use

 

Summary

Maglificio Barbara S.A.S. Di Magni Sergio & C. of Italy ("Applicant") applied for the trade mark "mirtillo" (with the letter 'o' presented in a stylized manner) (the "suit mark"). The Applicant claimed "clothing and clothing made of leather; suits; footwear;" amongst other things in class 25. The application was accepted and was advertised for opposition purposes. Creaciones Mirto S.A. of Spain ("Opponent") relying on its mark "MIRTO", which has been used and registered in Hong Kong and elsewhere in respect of "clothing, footwear, headgear", objected to the Applicant's mark on the basis that it is deceptively similar to its mark. The opponent also argued that use of the "mirtillo" mark on goods of the same description as their goods is likely to mislead consumers into believing that such goods are goods of or associated with the Opponent.

Both parties filed evidence. The Opponent exhibited excerpts from dictionaries to show that "mirtillo" means "bilberry" or "whortleberry" whilst "mirto" means myrtle in the Spanish language. "Myrtle-berry" is defined as the fruit of the myrtle or the bilberry or whortleberry. However this contextual similarity did not assist the Opponent's objection because the Registrar was of the view that this association would not be known to a substantial number of purchasers of ready-made clothing in Hong Kong.

Though the Opponent's proven sales were confined to men's shirts only (i.e. an item not included in the Applicant's specification), the Registrar was satisfied that the Opponent had shown a sufficiently substantial reputation for its mark "MIRTO" in Hong Kong to enable it to rely on an opposition under s.12(1) Trade Marks Ordinance (Cap. 43, Laws of Hong Kong) ("Old TMO"). The reason for this is that the reputation of the Opponent, for the purposes of the threshold test, is not confined to a reputation in the same or closely allied good. The fact that reputation is not in respect of the particular goods is a factor to be taken into account in assessing confusion, not a precondition for opposing the registration of the mark under s12 Old TMO.

Analysis

The Registrar observed that the threshold requirement (namely, the reputation of the Opponent's mark or trade name in Hong Kong must be established before the possibility of deception can be considered) is a judicial gloss and its application is not in doubt even though it is not specified in the s12(1) of Old TMO.

The test under s12(1) Old TMO is whether: "having regard to the reputation of "MIRTO" in Hong Kong, is the Registrar satisfied that the suit mark, if used in a normal and fair manner upon any goods in its specification, would not be likely to deceive or cause confusion (though the phrase "cause confusion" is missing from the Old TMO) among a substantial number of purchasers of the goods?" The test is that there must be a real tangible risk of confusion not just the possibility of confusion.

In determining whether two marks so nearly resemble each other that there is a tangible risk of confusion, the Registrar noted that the following non-exhaustive principles applied:

The Registrar also mentioned that conceptual similarity may increase the likelihood of confusion as may a reasonably held belief that both marks belong to the same family of marks.

The Registrar, having reviewed the two marks "MIRTO" and "mirtillo" in respect of their visual and aural resemblances found that the first impressions are quite different. This is because the marks are of different length and because the stress on the "MIRTO" mark is on the first syllable whilst the stress on the "mirtillo" mark was on the second syllable. Nonetheless because the goods are likely to be purchased by self selection rather than ordered orally, aural confusion was given little weight.

On the basis that the Applicant did not file sufficient information to identify its trade channel, the Registrar assumed that the Applicant's sales were and would be sold through similar outlets as those of the Opponent, to the same customers and at roughly the same prices. This was because, in the absence of evidence supporting the Applicant's future use of the suit mark, the Registrar could not discount the possibility that the Applicant might extend its range of sales to include men's shirts.

Nonetheless, the Registrar observed that the "mirtillo" mark is likely to be seen as the diminutive of the "MIRTO" mark particularly as the Applicant's sales relate to children's wear. This factor weighed most in favour of the Opponent. Especially when the Applicant's sales have been confined to children's wear and that of the Opponent is confined to men's shirts. In the absence of strong factors pointing against confusion, the association is too strong for the Applicant to succeed. The Registrar agreed with the Opponent counsel's submission that deception or confusion as to whether the goods come from the same source or that they appear to be related in a family of marks is sufficient for the purpose of s12(1) Old TMO.

Decision

It should be born in mind that there was insufficient evidence as to the proof of sales of the Applicant's goods. The tribunal was satisfied that not only were the Opponent's and the Applicant's goods of the same description but they were also available through the same trade channels. The application for the "mirtillo" mark was refused.

Observation

It is important to file evidence of the use of the trade mark and the trade channels through which those goods are sold both now and in future. The Registrar will consider all the surrounding circumstances, and will place different emphasis on each factor depending upon the circumstances.

By way of reference, s12 of the new Trade Marks Ord. (Cap. 559, Laws of Hong Kong) ("New TMO") has incorporated the above judicial gloss requiring that the 'earlier trade mark' be already on the register in respect of the goods or services for which the application for registration is made.

The omission of the phrase "cause confusion" has now been clarified by s7 of the New TMO, which is entitled - "References to use likely to cause confusion". The section states that in determining whether the use of a mark is likely to cause confusion the tribunal may take into account "all factors relevant to the circumstances, including whether use is likely to be associated with the earlier mark". Moreover, s12, "Relative grounds for refusal of registration", of the New TMO replaces the test 'likely to deceive' by the test 'likely to cause confusion'.

Decision of the Registrar of Trade Marks dated April 28, 2003 (unreported)