RE FEDERATION OF THE SWISS WATCH INDUSTRY FH

RE FEDERATION OF THE SWISS WATCH INDUSTRY FH

Given the identical goods, the Certification Mark SWISS' enhanced distinctiveness and the admitted evidence showing that the Opposed Mark is used in practice as "SWISS BERNARD"/"SWISSBERNARD" in contexts likely to convey Swiss origin, the average consumer would decompose the mark and attach significance to the element "Swiss", producing a likelihood of confusion under s12(3); therefore the application for registration must be refused and the Hearing Officer's decision set aside.

Citation
RE FEDERATION OF THE SWISS WATCH INDUSTRY FH
Parties
Opponent/appellant: Federation of the Swiss Watch Industry FH; Applicant/respondent: Ayoub; Interested Party/respondent: Registrar of Trade Marks
Court
Court of First Instance
Jurisdiction
Hong Kong
Judgment Date
6 March 2017
Case Number
HCMP1070/2016
Procedural Posture
Trade Mark Appeal Under the Trade Marks Ordinance (cap. 559) / Judgment on Appeal (court of First Instance)
Outcome
Opponent's appeal allowed; the Hearing Officer's decision dismissing the opposition is set aside; Applicant's application for registration of the Opposed Mark refused.
Legal Topics
Likelihood of Confusion, Certification Mark, Admissibility of Evidence, Distinctiveness, Use of Mark, Section 12(3) TMO
Source Language
EN
Intellectual Property Trade Mark Law Administrative Law Likelihood of Confusion Certification Mark Admissibility of Evidence Distinctiveness Use of Mark +1 more

Case Brief

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Parties

Federation of the Swiss Watch Industry FH

Opponent/appellant

Ayoub

Applicant/respondent

Registrar of Trade Marks

Interested Party/respondent

Procedural Posture

Trade Mark Appeal Under the Trade Marks Ordinance (cap. 559) / Judgment on Appeal (court of First Instance)

Legal Issues

  1. 1 Whether the Opposed Mark should be refused registration under s12(3) of the Trade Marks Ordinance because its use is likely to cause confusion with the Certification Mark SWISS
  2. 2 Whether the Hearing Officer erred in excluding the photographs and invoices attached to the Counter Statement as evidence

Ratio Decidendi

Given the identical goods, the Certification Mark SWISS' enhanced distinctiveness and the admitted evidence showing that the Opposed Mark is used in practice as "SWISS BERNARD"/"SWISSBERNARD" in contexts likely to convey Swiss origin, the average consumer would decompose the mark and attach significance to the element "Swiss", producing a likelihood of confusion under s12(3); therefore the application for registration must be refused and the Hearing Officer's decision set aside.

Court Disposition

Opponent's appeal allowed; the Hearing Officer's decision dismissing the opposition is set aside; Applicant's application for registration of the Opposed Mark refused.

Orders

  • Applicant to pay the Opponent's costs of the appeal, to be taxed if not agreed
  • No order as to costs between the Opponent and the Registrar