Hong Kong
- Registrability
- No likelihood of confusion
- No similarity of marks

Vecent (China) Times Limited (the "applicant") applied for the mark "VCT and device" in class 14 claiming watches, watch cases, clocks and chronometric instruments, amongst other things (the "suit mark"). The suit mark was accepted in Part B of the register and was advertised in the Government Gazette. Queen Express Limited (the "opponent") objected to the registration of the suit mark on the ground that the suit mark was nearly identical to the design of the opponent's mark "GUT and device" which had not yet been applied for registration. Hence, the potential and current customers of the applicant were likely to be misled into thinking that the applicant's products were associated with the opponent's products. The applicant and the opponent each operated shops selling watches on the same floor in a business premises. The opponent argued that in about April or May 1999, the "GUT and device" mark was designed by the opponent. Some of the employees who had access to the design of the "GUT and device" mark were hired by applicant in the end of 1999. They had imparted the design of the opponent's mark to the applicant who then designed a substantially similar mark, the suit mark, and applied to register it.

In determining whether the suit mark led to deception or cause confusion, the test was whether "having regard to the reputation acquired by the name "GUT and device", is the Court satisfied that the suit mark if used in a normal and fair manner in connection with watches and other related products, will be reasonably likely to cause deception and confusion amongst a substantial number of persons?"¹The test was whether a substantial number of persons must be likely to be deceived or confused. The court must look at all the circumstances of the trade². The court also assumes that customers would have an imperfect recollection of the mark and must assess whether consumers would confuse one mark with another, although the two were not the same³. Aurally, the court considered that the mark "GUT" was pronounceable and had its own meaning whereas the mark "VCT" was not pronounceable and had no meaning. Consumers would describe the products of the opponent as "GUT" watches rather than "G-U-T" watches. On the other hand, the "VCT" mark was not pronounceable and the applicant's products were normally described as "V-C-T" watches. The opponent argued that visually the device incorporated in the applicant's mark was very similar to the opponent's. The court considers that when a mark combined a device with words or letters, people would normally refer to the words or letters rather than the device of the mark. A degree of similarity was tolerable, provided that the marks were not confusingly similar. The court was of the view that the similarity between the two marks was in the tolerable range.Further, the court identified customers of the opponent and the applicant as being mainly wholesale purchasers from overseas. As their customers were businessmen, they would assess the demand in their market for the styles and trade marks of various wholesalers very carefully. These businessmen would seldom make impulse purchases without ascertaining the source of the goods. Therefore the court was of the view that there was no reasonable likelihood of deception and confusion arising if the applicant's mark was entered into the register as the respective marks were both aurally and visually different.Lastly, the opponent argued that if the court was prepared to accept the registrability of the suit mark, a disclaimer should, at least, be imposed on the exclusive use of the device in the suit mark. The court held that the disclaimer should be required where the part in question was itself unregistrable but appeared to function as a trade mark or might be taken as an essential feature of the mark so that there could be doubt as to the proprietor's rights⁴. The court observed that the device in the suit mark was not an essential feature and therefore it was unnecessary to impose a disclaimer condition.

Decision of the Registrar of Trade Marks dated 8 September 2003 (unreported).

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Note:

1. Smith Hayden & Co Ltd's Application [1946] 63 RPC 97 at 101
2. Pianotist Co Ltd's Appln (1906) 23 RPC 774
3. Aristoc Ltd v Rysta Ltd (1945) 62 RPC 65
4. Australian Law of Trade Marks and Passing Off (2nd edition) at the top of p. 220 by Shanahan