RE BAUSCH AND LOMB INCORPORATED

RE BAUSCH AND LOMB INCORPORATED

The Registrar erred in treating phonetic equivalence as ipso facto unregistrable and in ignoring the applicant's two years' bona fide use and evidence of acquired distinctiveness; on the facts the mark 'SOFLENS' is capable of distinguishing the applicant's goods and registration must proceed subject to limiting the specification to soft contact lenses to avoid deception.

Citation
RE BAUSCH AND LOMB INCORPORATED
Parties
Applicant/appellant: Bausch and Lomb Incorporated; Respondent/registrar: Registrar of Trade Marks
Court
Court of First Instance
Jurisdiction
Hong Kong
Judgment Date
5 June 1979
Case Number
HCMP203/1979
Procedural Posture
Trade Mark Registration Appeal / High Court Appeal From Registrar Decision
Outcome
Appeal allowed; Registry ordered to proceed to registration subject to limitation to soft contact lenses; costs awarded to applicant.
Legal Topics
Distinctiveness, Part B Registration, Acquired Distinctiveness, Phonetic Equivalence, Use Abroad, Deceptive Similarity, Specification Limitation
Source Language
EN
Trade Mark Law Intellectual Property Administrative Law Distinctiveness Part B Registration Acquired Distinctiveness Phonetic Equivalence Use Abroad +2 more

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 5 Authorities cited 7 Party arguments 2 Amounts and remedies 1
Sign in to unlock

Parties

Bausch and Lomb Incorporated

Applicant/appellant

Registrar of Trade Marks

Respondent/registrar

Procedural Posture

Trade Mark Registration Appeal / High Court Appeal From Registrar Decision

Legal Issues

  1. 1 Whether 'SOFLENS' is capable of distinguishing the applicant's goods
  2. 2 Whether bona fide use for two years under Part B mandates registration or compels consideration of acquired distinctiveness
  3. 3 Whether phonetic equivalence to 'soft lens' renders the mark unregistrable as a matter of law

Ratio Decidendi

The Registrar erred in treating phonetic equivalence as ipso facto unregistrable and in ignoring the applicant's two years' bona fide use and evidence of acquired distinctiveness; on the facts the mark 'SOFLENS' is capable of distinguishing the applicant's goods and registration must proceed subject to limiting the specification to soft contact lenses to avoid deception.

Court Disposition

Appeal allowed; Registry ordered to proceed to registration subject to limitation to soft contact lenses; costs awarded to applicant.

Orders

  • Registry to proceed to registration in Part B of the Register for the trade mark 'SOFLENS' in Class 9 limited to soft contact lenses
  • Costs awarded to the applicant