"Swiss" certification mark opposition - Hong Kong court finds actual use likely to confuse

by Hogan Lovells
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Hogan Lovells represented Federation of the Swiss Watch Industry FH ("Federation") in a successful appeal against a decision of the Hong Kong Registrar of Trade Marks in an opposition involving the "Swiss" certification mark[1]. Importantly, the Court's decision confirms the public interest in ensuring that certification marks are given the necessary protection in Hong Kong.   Courts are often slow to interfere with decisions of an experienced Registrar so the appeal decision is also significant in that it is one of the rare decisions in which the decision of the Registrar of Trade Marks has been set aside.The key issue raised in the appeal was whether the mark ""
("Opposed Mark") should be denied registration on the ground that its use in relation to goods in Class 14 for "horological and chronometric instruments" was likely to cause confusion with the Federation's "SWISS/Swiss" certification mark ("Certification Mark") in Class 14. 

The judge held on appeal that it was clear that the way in which the Opposed Mark was actually being used would confuse the average consumer that the watches were of Swiss origin and of the same quality as watches bearing the Certification Mark would suggest. The judge therefore allowed the Federation's appeal and rejected registration of the Opposed Mark.

Background

Pursuant to regulations governing the use of the Certification Mark, a watch is considered to be "Swiss" if its movement is made and cased up in Switzerland, and the manufacturer carries out the final inspection in Switzerland.  Watches made by the applicant for the Opposed Mark did not comply with these requirements.

Reasons for the Court's decision

In deciding that the use of the Opposed Mark was likely to cause confusion on the part of the public within the meaning of Section 12(3)(c) of the Trade Marks Ordinance ("TMO"), Chow J took into account the following factors:

  • The Certification Mark had become a unique and well recognized sign of the Swiss origin of the goods and thus acquired an enhanced degree of distinctive character through use.
  • The "Swiss" component in the Opposed Mark created an overall deeper impression on the average consumer because it had a specific meaning, preceded the word "bernard", which has no meaning, and was identical to the widely known Certification Mark.
  • The goods covered by the Opposed Mark and the Certification Mark were identical.
  • Photographs produced by the applicant showed both use of "SWISS BERNARD" (in two separate words) in conjunction with and directly above the word "SWISS" and "SWISSBERNARD" (in one word) on advertisements.  "SWISS BERNARD"/"Swiss Bernard" (in two words) was also shown on invoices in relation to watches.  Thus, the way in which the Opposed Mark was in fact being used was likely to confuse the average customer that the watches were of Swiss origin.

Key take-away points

  • Material attached to a counter statement ought to be admitted as evidence by the Registrar

The appeal turned on the issue of the refusal of the Hearing Officer for the Registrar of Trade Marks to admit as evidence material attached to the Counter Statement showing how the Opposed Mark was in fact being used. The Hearing Officer's refusal was based on the fact that the material was not in the form of a statutory declaration. 

Although it was not necessary to decide (because the material was admitted as evidence for the purposes of the appeal), Hon Chow J remarked that material attached to the Counter Statement ought to have been taken into account and admitted as evidence by the Registrar (noting also that pursuant to section 78 of the TMO the Registrar is not bound by rules of evidence).

  • TMO does not prescribe a minimum degree of similarity for a trade mark to be refused

An opposition under Section 12(3) of the TMO can only succeed if three conditions are satisfied, namely: (a) similarity between the marks, (b) similarity between the goods, and (c) the use of the mark is likely to cause confusion. With respect to the first condition, Chow J noted that Section 12(3) does not prescribe any "degree" of similarity which must be satisfied before a trade mark may be refused registration.

  • Use likely to cause confusion should be assessed globally, and this may include evidence of actual use of an opposed mark

Whether the use of the mark is likely to cause confusion must be assessed globally based on all circumstances, which in this case included the previously disregarded evidence of the actual use being made of the Opposed Mark. 

This is an important result for the Federation which is dedicated to promoting and defending the interests of the Swiss watch industry internationally.

The Hogan Lovells team advising the Federation was led by Hong Kong IP Counsel Henry Wheare, supported by associates Amy Zhang and PJ Kaur.

Douglas Clark, instructed by Hogan Lovells, appeared for the Federation.

 

 

 

[1]    Swissbernard TM (HCMP 1070/2016) Chow J, 6 March 2017

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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