RE N.V. SUMATRA TOBACCO TRADING CO

RE N.V. SUMATRA TOBACCO TRADING CO

The appeal is dismissed because the Hearing Officer's factual findings that the Subject Mark is visually, aurally and conceptually similar to the Opponent's earlier Double Happiness marks, that those marks enjoy at least enhanced distinctiveness through use, and that the Applicant acted with intention to cause...

Source-derived case information.

Citation
[2023] HKCFI 285
Parties
Applicant/appellant: N.V. Sumatra Tobacco Trading Company; Opponent/respondent: Nanyang Brothers Tobacco Company Limited
Court
Court of First Instance
Jurisdiction
Hong Kong
Judgment Date
2 February 2023
Case Number
HCIP9/2020
Procedural Posture
Trade Mark Opposition; Appeal to High Court / Appeal Judgment (decision on Registrar's Opposition Decision)
Outcome
Appeal dismissed; Registrar's decision allowing the opposition upheld; Subject Application refused
Legal Topics
Likelihood of Confusion, Bad Faith, Distinctiveness and Acquired Distinctiveness, Family of Marks, Well Known Mark, Costs
Source Language
en
Trade Mark Law Intellectual Property Passing Off Likelihood of Confusion Bad Faith Distinctiveness and Acquired Distinctiveness Family of Marks Well Known Mark +1 more

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Summary, issues, holding and outcome

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Parties

N.V. Sumatra Tobacco Trading Company

Applicant/appellant

Nanyang Brothers Tobacco Company Limited

Opponent/respondent

Procedural Posture

Trade Mark Opposition; Appeal to High Court / Appeal Judgment (decision on Registrar's Opposition Decision)

Legal Issues

  1. 1 Whether the Subject Mark is confusingly similar to the Opponent's Double Happiness marks (s 12(3) TMO)
  2. 2 Whether the Applicant applied for the Subject Mark in bad faith (s 11(5)(b) TMO)
  3. 3 Whether passing off can be established (s 12(5)(a) TMO)

Ratio Decidendi

The appeal is dismissed because the Hearing Officer's factual findings that the Subject Mark is visually, aurally and conceptually similar to the Opponent's earlier Double Happiness marks, that those marks enjoy at least enhanced distinctiveness through use, and that the Applicant acted with intention to cause confusing similarity (bad faith) are supported by the evidence and not plainly wrong; accordingly the opposition succeeds and the Subject Application must be refused.

Court Disposition

Appeal dismissed; Registrar's decision allowing the opposition upheld; Subject Application refused

Orders

  • Costs of the appeal to the Opponent with certificate for 2 counsel; costs order nisi to be made absolute 14 days after judgment