STICHTING BDO AND ANOTHER v. BANCO DE ORO UNIBANK INC AND ANOTHER

STICHTING BDO AND ANOTHER v. BANCO DE ORO UNIBANK INC AND ANOTHER

Claim dismissed. Court found plaintiffs’ goodwill confined to accountancy/professional services and not to banking/remittance; defendants’ services are not identical or similar to plaintiffs’ services; the relevant public for plaintiffs and defendants are distinct; defendants’ use of ‘BDO’ and logos would not mislead the relevant public into believing services were those of plaintiffs; plaintiffs failed to prove actual detriment under s18(4); and defendants established justifiable cause (longstanding use of 'Banco De Oro' and its acronym) so use was not 'without due cause'. Therefore passing off, s18(4) and s18(3) claims failed.

Citation
STICHTING BDO AND ANOTHER v. BANCO DE ORO UNIBANK INC AND ANOTHER
Parties
1st Plaintiff: STICHTING BDO; 2nd Plaintiff: BDO LIMITED; 1st Defendant: BANCO DE ORO UNIBANK INC; 2nd Defendant: BDO REMIT LIMITED
Court
Court of First Instance
Jurisdiction
Hong Kong
Judgment Date
14 December 2012
Case Number
HCA1162/2009
Procedural Posture
Passing Off and Trade Mark Infringement (trade Marks Ordinance Cap.559) / Judgment After Trial (court of First Instance)
Outcome
Plaintiffs' claim dismissed in its entirety
Legal Topics
Section 18(3) Trade Marks Ordinance, Section 18(4) Trade Marks Ordinance, Well‑known Mark Protection, Dilution/tarnishment, Misrepresentation (passing Off), Jurisdictional Scope of Website Advertising
Source Language
EN
Trade Mark Law Passing Off Intellectual Property Commercial Law Internet/advertising Law Section 18(3) Trade Marks Ordinance Section 18(4) Trade Marks Ordinance Well‑known Mark Protection +3 more

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Parties

STICHTING BDO

1st Plaintiff

BDO LIMITED

2nd Plaintiff

BANCO DE ORO UNIBANK INC

1st Defendant

BDO REMIT LIMITED

2nd Defendant

Procedural Posture

Passing Off and Trade Mark Infringement (trade Marks Ordinance Cap.559) / Judgment After Trial (court of First Instance)

Legal Issues

  1. 1 Whether plaintiffs proved misrepresentation for passing off (goodwill + misrepresentation + damage)
  2. 2 Whether defendants’ use of ‘BDO’ created a link under s18(4) (well‑known mark)
  3. 3 Whether defendants’ use caused detriment or unfair advantage under s18(4)

Ratio Decidendi

Claim dismissed. Court found plaintiffs’ goodwill confined to accountancy/professional services and not to banking/remittance; defendants’ services are not identical or similar to plaintiffs’ services; the relevant public for plaintiffs and defendants are distinct; defendants’ use of ‘BDO’ and logos would not mislead the relevant public into believing services were those of plaintiffs; plaintiffs failed to prove actual detriment under s18(4); and defendants established justifiable cause (longstanding use of 'Banco De Oro' and its acronym) so use was not 'without due cause'. Therefore passing off, s18(4) and s18(3) claims failed.

Court Disposition

Plaintiffs' claim dismissed in its entirety

Orders

  • Costs order nisi: plaintiffs to pay defendants' costs of the action; costs to be taxed if not agreed; certificate for two counsel