TRADE MARK APPLICATIONS IN HONG KONG: USING UK TRADE MARKS AS PRECEDENT

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Anthony Parrish
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1 TRADE MARK APPLICATIONS IN HONG KONG: USING UK TRADE MARKS AS PRECEDENT Introduction - historical Hong Kong s Trade Marks Ordinance (Cap. 43) was repealed on 3 rd April Cap. 43 was based largely on the UK Trade Marks Act 1938 and the provisions as to registrability of trade marks in Part A & Part B of the Register were identical to the 1938 Act. The UK Trade Marks Act 1994 revoked and replaced the Trade Marks Act 1938, although decisions made under the 1938 Act both as concerns the registrability of trade marks and the infringement provisions continued to have very considerable persuasive value in Hong Kong. That position died in respect of decisions made/applications filed under the UK 1994 Act. The reason for this was that the 1994 Act was predicated on an entirely different legal basis than was the case in Hong Kong under Cap. 43. The Current Position With effect from 4 th April 2003, the position has reverted to the status quo ante with the coming into operation of the Trade Marks Ordinance (Cap. 559) which is almost a copy of the UK s 1994 Act. Some provisions of the 1994 Act have been judicially critisised (see eg. the difficulties encountered by Jacob J. in construing certain provisions of the Trade Marks Act 1994 in British Sugar v. James Robertson [1996] R.P.C. 281) but despite such comments, Cap. 559 generally follows the same wording mutatis mutandis as has been used in the 1994 Act: the Hong Kong legislature apparently did not review the judicial comments before following the 1994 Act s provisions in enacting Cap A careful analysis of the judicial decisions might have enabled the drafters of Cap. 559 to remove ambiguities perceived to exist in the 1994 Act. We would assert, therefore, that it is reasonable to assume that the Hong Kong legislature wanted to do more than use the 1994 Act as a role model, but intends UK decisions to act as a beacon for the development of trade mark law in Hong Kong. Moreover, since the trade mark laws of European Union countries has been "approximated" under the 1988 Trade Marks Directive, it also seems feasible to assert that precedents from other EU member states might, in appropriate cases, be filed in support of trade mark applications filed in Hong Kong. This article will examine the practicalities of using those precedents to support 1

2 Hong Kong trade mark applications. Before proceeding, it is perhaps instructive at this point to remember the refrain contained in the 12 th Edition of Kerly: "Where trade marks laws in countries are framed on the same lines, it is desirable that there should be conformity in decisions, provided local circumstances are the same." (Law of Trade Marks & Trade Names, 12 th Edition paragraph 19-25). Benefit from UK application The question arises as to how a UK trade mark application or registration can be of benefit to a Hong Kong application. There are three aspects to examine: 1. Settling the specification(s) of goods and/or services; 2. Overcoming objections raised by the Registrar on the grounds of descriptiveness or alleged deceptiveness of the mark; 3. Overcoming citations of supposedly conflicting prior trade mark registrations or applications. Specifications The specification of goods or services is clearly a very important element in ascertaining the scope of infringement rights in a trade mark and overly restrictive specifications should therefore be avoided. On the other hand, the Registrar in Hong Kong will not allow an application to proceed in respect of a prima facie overly broad specification: a broad claim may impinge upon the legitimate rights of other traders. It is accordingly necessary to strike a balance. If a particular applicant has already satisfied the UK Registrar of Trade Marks as to its trading capacity and intentions, the specification agreed in the UK can be used as a precedent to persuade the HK Registrar that the claim of goods or services is not unduly broad or vague. The filing at the Hong Kong Trade Marks Registry of official correspondence issued by the UK Registrar may obviate the need to re-argue the case with the Hong Kong Registrar. If the UK Registrar has been satisfied that a particularly broad specification is justifiable in a given case, the Hong Kong Registrar might, on the basis of the position in the UK, be prepared simply to follow that precedent. Distinctiveness guidelines The Hong Kong Registrar has published a work manual which contains guidance as to the acceptability of trade marks in various circumstances. It is probably true to say that 2

3 the Hong Kong Registrar s examination of trade mark applications in relation to distinctiveness (or deceptiveness) has hitherto been more conservative than the UK Registrar s. However, the decision of the UK Registrar is often persuasive in seeking to overcome official objections of this kind. In the circumstances, when applying for registration of a trade mark in Hong Kong, it is desirable that the corresponding copy of the trade mark applied for registration in Hong Kong should, if it has been advertised in the UK Trade Marks Journal, be supplied together with, or as soon as possible after, the form of applications: T2 & T2S. (The UK registration certificate is only of marginal assistance because that document does not show the terms and conditions of acceptance). In an unusually difficult case, The Trade Marks Journal advertisement might not give a full picture leading to the acceptance of the trade mark in the UK and copies of official correspondence might also be required. Such a course of action might pre-empt an official objection from the Hong Kong Registrar and thereby be conducive to the efficient prosecution of the Hong Kong application. Overcoming citations Where the Hong Kong Registrar cites an earlier mark as an objection to registration, it may be beneficial to cause a search to be made of the records of the UK Registry. If it is found that the two (or more) cited marks co-exist on the Register in the UK, this may be persuasive as evidence that the trade marks should co-exist on the Register in Hong Kong. In such circumstances, the filing of the relevant Trade Marks Journal advertisements may be of assistance in overcoming the citation in Hong Kong. It might be the case that the corresponding UK trade mark was accepted only on the basis of honest concurrent use (1994 Act section 7) with the earlier right, in which case one would presume that honest concurrent use would also be required in Hong Kong under Cap. 559 section 13. Persuasive precedent It must be remembered that UK trade marks are persuasive in respect of registrability in Hong Kong and different factors may apply in Hong Kong that leads to a decision contrary to that which has been reached in the UK. A straightforward illustration is where the Hong Kong Registrar simply believes that UK Registrar has simply been too liberal. Under the old regime (Hong Kong Cap. 43/UK Trade Marks Act 1938) it was rare for the 3

4 Hong Kong Registrar to refuse to follow a UK decision although in a borderline case, a copy of all official correspondence in relation to a particular case was sometimes requested. It appears that only where a decision was plainly wrong would the Hong Kong Registrar refuse to accept the position in the UK. Other factors also have to be taken into account. It seems trite to point out that a surname in the UK may be uncommon in Hong Kong such surname being a foreign surname; vise versa an unusual Chinese surname in the UK may be quite common in Hong Kong. Here, there would be objectively justifiable circumstances for the Hong Kong Registrar coming to a different conclusion as to registrability than that reached in the UK. Extant Hong Kong Registry Circulars can be accessed at the following web site: For the Hong Kong Registry work manual see Following representations from the trade in the UK, female Christian names are not prima facie allowed to be registered in respect of perfumes and cosmetics in class 3 and ladies clothing in class 25. No such representations have been made in Hong Kong and the trading circumstances therefore do not apply. It follows that a trade mark properly refused registration in the UK may be accepted in Hong Kong. The Hong Kong Registrar s Circular No. 15 of 1991 at paragraph 5.1 states: The UK practice of refusing male and/or female proper names for prima facie registration in respect of certain services, for example, hairdressing, cafes, beauty salons and massage etc will not be followed in Hong Kong. Conclusions Judicious and selective reliance on the position in the UK can ease the path of obtaining trade mark registrations in Hong Kong filed under Cap However, the use of precedents should not be slavish. Care must be taken, for example, to ensure that specifications of goods or services are not automatically restricted to the same as the UK application. It may be the case that a limitation to the claim was necessary to overcome a citation that does not apply in Hong Kong. It could also be the case that the UK Registrar is considered to be too harsh in examining a particular application and the matter should properly be re-argued afresh before the Hong Kong Registrar. In the absence of an 4

5 accepted trade mark in the UK, trade marks based on similar systems as those set out in the UK Act of 1994, such as Australia, may provide suitable precedents. Adopting trade mark precedents from other systems is not relevant: the laws would be regarded as too dissimilar to Cap. 559 to be of any assistance. One possible, but untested, exception would be the registration of a "borderline" (from a registrability point of view) geographical name. If that geographical name has been registered as a trade mark in the country in which the place is situated, it seems incongruous to refuse registration in Hong Kong bearing in mind that such a place would, from the Hong Kong standpoint, be a foreign name. STEPHENSON & CO. 5

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