Montres Tudor S.A. v. Concord Watch Co. S.A.

Montres Tudor S.A. v. Concord Watch Co. S.A.

The appeal is dismissed because the opponent failed to establish the necessary threshold reputation under s.12(1) on the evidence before the acting registrar and, on the merits under s.20(1), the marks are not deceptively similar when assessed as a whole (appearance, sound and meaning); given the nature of the goods and notional fair use, there is no reasonable likelihood of deception or confusion.

Citation
Montres Tudor S.A. v. Concord Watch Co. S.A.
Parties
Appellant (opponent): Montres Tudor S.A.; Respondent (applicant): Concord Watch Co. S.A.; Interested Party: Registrar of Trade Marks
Court
Court of First Instance
Jurisdiction
Hong Kong
Judgment Date
25 July 2001
Case Number
HCMP5788/2000
Procedural Posture
Appeal Under the Trade Marks Ordinance (cap. 43) / Hearing and Judgment on Appeal to the Court of First Instance
Outcome
Appeal dismissed.
Legal Topics
Registrability, Likelihood of Confusion, Notional Fair Use, Opposition Proceedings, Burden of Proof, S.12(1), S.20(1)
Source Language
EN
Trade Mark Law Intellectual Property Civil Procedure Registrability Likelihood of Confusion Notional Fair Use Opposition Proceedings Burden of Proof +2 more

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Parties

Montres Tudor S.A.

Appellant (opponent)

Concord Watch Co. S.A.

Respondent (applicant)

Registrar of Trade Marks

Interested Party

Procedural Posture

Appeal Under the Trade Marks Ordinance (cap. 43) / Hearing and Judgment on Appeal to the Court of First Instance

Legal Issues

  1. 1 Whether the opponent established that its mark was known to a substantial number of persons in Hong Kong (threshold under s.12(1))
  2. 2 Whether the applicant's mark is a near resemblance likely to deceive or cause confusion with the opponent's mark (s.20(1))
  3. 3 Allocation and shifting of burden of proof between opponent and applicant

Ratio Decidendi

The appeal is dismissed because the opponent failed to establish the necessary threshold reputation under s.12(1) on the evidence before the acting registrar and, on the merits under s.20(1), the marks are not deceptively similar when assessed as a whole (appearance, sound and meaning); given the nature of the goods and notional fair use, there is no reasonable likelihood of deception or confusion.

Court Disposition

Appeal dismissed.

Orders

  • Order nisi that the costs of the proceedings be paid by the opponent to the applicant, to be taxed and paid forthwith.