Decision - All instances of use referred to above were regarded as being trade mark use relating to goods since the Defendants' offered the goods for sale under and by reference to the mark.  In particular:  

1. the hang tags bearing the name GREEN PEACE symbolize to the person seeing it that these are the goods which have been selected and sold by the person who is the proprietor of the name GREEN PEACE.  The fact that some other trade mark was on the goods did not affect the issue.
   
   
2. the use on the Defendant's sales memos and credit card receipts indicated a connection between the goods identified on the documents and the defendants.  This is because the purpose of the invoice was to relate to the goods.  Such use was regarded as being in connection with the goods so was an infringement.
   
   
3. Use of a mark as a name outside the shop constituted use in relation to the goods in this case.  Whether such sue in other cases would constitute such use will depend on where the significant part of the business was carried on was use in relation to goods.  

Rogers J. noted that in a passing off action the public must be confused but in a trade mark action the plaintiff only needs to show that his rights have been infringed.  The Defendant's actions therefore constituted an infringement.  

The full case citation is Stichting Greenpeace Council v Income Team Limited and others [1997] FSR 149. 

Commentary - This is the first case in Hong Kong which clearly stated that use of a mark on a store, on hang tags, on business cards, sales memos, shopping bags and credit card receipts by a retailer was trade mark use on the goods sold in the store even if those goods bear another manufacturer's mark.  

Notwithstanding the decision the Defendant's continued to operate stores under the name GREEN PEACE in Hong Kong up till September 20, 1997.  On that day the store will change its name to I.T. This is because a confidential settlement was reached between the parties.  As the Defendants did not proceed with their appeal, Rogers' J. decision stands as the current law in Hong Kong and is also binding on the Trade Marks Registry.  

The decision confirmed the role of the trade mark as an indicator of origin.  Origin is considered in its broader sense to include selection.  This view is reflected in recent opinions of Advocate-General Jacobs in two cases referred to the European Court of Justice.  

In this modern age where trade mark owners are holding trade marks in offshore companies for tax reasons, management reasons or to minimize the risk of expropriation the public commonly has little idea as to who owns the trade mark.  Quite often, the assignment from well-known operating companies to the holding companies are not publicized so consumers would not necessarily be aware of the change.  In practice trade marks probably best function as an indication of the quality of the goods or services.  Whilst consumers may have an impression of who owns a mark they could very well be mistaking an owner for a licensee or sub licensee.  To that extent perhaps Rogers J. did not go far enough in stating the modern function of the trade mark.  

Rogers J., at page 160, seeks to distinguish selection from offering goods for sale and states that the latter is in itself trade mark use.  The distinction is elusive since selection alone without reference to a trade mark could not be trade mark use.  

Whilst the Defendant's state that they import only from innovative, stylish and high quality labels it is more likely that consumers buy because of the manufacturer's trade mark on the item and all the related advertisements placed by the manufacturer alone in popular magazines and publicity given to fashion shows.  Where the items are, as in many cases available in different outlets a number of other factors effect the purchasing decision like price, store decor and service.  

But does the logic apply to all types of uses?  

Sales memos - it is not uncommon to be presented with a credit card receipt which bears a name apparently unrelated to the establishment.  This may be because;  

1. the operators have used an off the shelf holding company to start a business and have chosen a different trading name to operate the business under for marketing reasons;
   
   
2. the operator shave not yet amended the initial name of the holding company which they bought to operate the business; or
   
   
3. for tax planning reasons another company is being used to handle the billing aspect of the business.  

Shop names - what would happen to the local general store which is approached every day to stock confectionery, cigarettes, soft drinks, etc.?  The store operator is predominately, if not solely, interested in whether the product will sell.  Very little selection takes places in those cases but they would be held to be infringing.  

Nonetheless, the decision is consistent with the definition of infringement in s.9(5) of the draft Hong Kong Trade Marks Bill which states that a person uses a sign if he "offers or exposes goods for sale, puts them on the market or storks them for purposes under the sign, or offers or supplies services under the sign".  

Implications - The case has major repercussions on the way retailers conduct their business.  It will dramatically increase the cost of setting up any type of business which retails goods; this includes restaurants and bars, and mail order companies.  It will also give owners of trade marks registered in relation to goods the opportunity to bring infringement proceedings in relation to retailers.  The practical effect of the Greenpeace case is that:  

1. Retailers must be diligent to ensure that their trade mark is also available for use in relation to every product sold in their outlet.  In the past retailers, who did not intend to introduce their own house brand products, would simply conduct pre-use searches in international class 42 for retail store services and occasionally in class 16.  Retailers should now conduct searches in all the classes relevant to the goods sold or intended to be sold in their outlets.  The term retailers will also include hotels which have gift shops selling such things as film, cosmetics and books and also hair salons who commonly sell related items such as shampoos, combs, gel and brushes.  The term also applies to mail order sales operations and parties offering goods via internet or other electronic means.
   
   
2. Restaurateurs and bar operators must also search in the food and beverage classes (29 to 33) to ensure that their proposed mark is available for use and also for registration.  This is because the court confirmed that such outlets were selling the food and beverages listed on the menu.  If these outlets also sell cigarettes a search should be conducted in class 34.
   
   
3. These searches should be conducted now even if the service has been offered for some time since it is always open to a trade mark proprietor to commence infringement proceedings.
   
   
4. Retailers (including restaurant and bar operators, and mail order companies) should apply to register their marks in relation to all goods sold.  The fact that the retailer may have a registration in the class 42 for retail, restaurant or bar services is not a defense.  The retailer must have a separate registration for its mark in the goods class in which a potential plaintiff has a registration for its mark if it is to avoid a possible claim for infringement.
   
   
5. Owners of registrations in any goods class should be aware of the possibility of infringements by retailers selling goods in an outlet operating under an identical or similar mark.  There is therefore greater scope for commencing infringement proceedings and thereby preventing others from taking advantage of the rights in your mark.
   
   
6. If your "retail mark" is facing an objection in any goods classes, where you do not sell own brand goods, you will now be able to rely on your sale of other manufacturers' brands to support an application for your mark where use is required.

These comments are provided in general terms only.  Please contact Barry Yen on 28108912 or Alice Sin on 28108926 if you would like specific comments on how the case will effect your business.

Copyright June 1997
So Keung Yip & Sin - SKYS
Barry Yen