The price of fame in Hong Kong

In determining whether a mark is well-known in Hong Kong, the registrar or the court should make references to a nonexhaustive list of factors laid down in Schedule 2 attached to the Trade Marks Ordinance. These factors are:

(a) The degree of knowledge or recognition of the trademark in the relevant sectors of the public;

(b) The duration, extent and geographical area of any use of the trademark;

(c) The duration, extent and geographical area of any promotion of the trademark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods or services to which the trademark applies;

(d) The duration and geographical area of any registrations, or any applications for registration, of the trademark, to the extent that they reflect use or recognition of the trademark;

(e) The record of successful enforcement of rights in the trademark, in particular, the extent to which the trademark has been recognised as a well-known mark by competent authorities in foreign jurisdictions; and

(f) The value associated with the trademark.

Section 2 of the schedule states that none of the following factors is necessary for the purpose of determining a well-known mark in Hong Kong:

(a) The trademark has been used or registered in Hong Kong;

(b) That an application for registration of the trademark has been filed in Hong Kong;

(c) That the trademark is well-known, or has been registered, in a jurisdiction other than Hong Kong;

(d) That an application for registration of the trademark has been filed in a jurisdiction other than Hong Kong; or

(e) That the trademark is well-known by the public at large in Hong Kong.

Section 12 of the Trade Marks Ordinance provides relative grounds for refusal of registration of a mark which is in conflict with an earlier trademark. The owner of a well-known mark may rely on the relative grounds under Section 12(1)-(4) of the Trade Marks Ordinance in a case where his mark is found to be well-known and thus regarded as an earlier mark in Hong Kong; no local use of the mark is needed.

“THE COURT WENT FURTHER TO CONSIDER WHETHER THE USE OF THE LATTER MARK TOOK UNFAIR ADVANTAGE OF, AND/OR WAS DETRIMENTAL TO, THE DISTINCTIVE CHARACTER OR THE REPUTE OF THE WELLKNOWN MARK AT ISSUE.”

So far, there is no decided case under which a mark has been found to be wellknown in Hong Kong. This is understandable because trademark owners could rely on their registered and/or unregistered trademark rights (arising from prior use of the mark in Hong Kong) to successfully oppose registration of a mark in respect of identical or similar goods/services of interest. Thus, the issue of well-known marks has not been examined thoroughly.

For protection of non-identical or similar goods/services covered by a wellknown mark, one must prove, inter alia, the following under the Section 12(4) of the Trade Marks Ordinance:

(i) The mark is well known; and

(ii) Use of the later trademark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trademark.

The case of Premier Brands UK Ltd v. Tyhoon Europe Ltd is concerned with trademark infringement of a well-known mark for non-identical or similar goods of interest. The UK court held that confusion was not a necessary ingredient for successful claim of trademark infringement under S.10(3) of the Trade Marks Act.

The words “without due cause” did not mean ‘in good faith’ or ‘for good and honest commercial reasons’. The court went further to consider whether the use of the latter mark took unfair advantage of, and/or was detrimental to, the distinctive character or the repute of the well-known mark at issue. And the stronger the distinctive character and reputation of a particular mark, the easier it would be to establish detriment to it.

Kenny Leung is an in-house counsel at Wenping & Co. He can be contacted at: kenny@wenping.com.hk