RE GUANGDONG FOODSTUFFS IMPORT AND EXPORT (GROUP) CORPORATION

RE GUANGDONG FOODSTUFFS IMPORT AND EXPORT (GROUP) CORPORATION

On the evidence GDF's pre-existing fields of activity included manufacture of both canned foods and Chinese rice wines and it had long used related Pearl River Bridge marks on both; this prior use and association render Chinese rice wines sufficiently closely allied to canned foods such that the subject mark, already registered and used for canned foods, is factually capable of distinguishing GDF's Chinese rice wines; accordingly the appellant's Part B registration succeeds but must be limited to Chinese rice wines and disclaimed as to the two Chinese characters individually.

Citation
RE GUANGDONG FOODSTUFFS IMPORT AND EXPORT (GROUP) CORPORATION
Parties
Applicant/proprietor: Guangdong Foodstuffs Import and Export (Group) Corporation; Respondent/registrar: Registrar of Trade Marks
Court
Court of First Instance
Jurisdiction
Hong Kong
Judgment Date
12 February 2004
Case Number
HCMP2598/2003
Procedural Posture
Trade Mark Registration Appeal Under the Trade Marks Ordinance (cap. 43) / Appeal to the Court of First Instance (judgment on Appeal)
Outcome
Appeal allowed in part; Registrar's decision set aside in part
Legal Topics
Registrability, Distinctiveness, Acquired Distinctiveness, Limitation of Specification, Classification of Goods
Source Language
EN
Intellectual Property Trade Mark Law Administrative Law Registrability Distinctiveness Acquired Distinctiveness Limitation of Specification Classification of Goods

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Parties

Guangdong Foodstuffs Import and Export (Group) Corporation

Applicant/proprietor

Registrar of Trade Marks

Respondent/registrar

Procedural Posture

Trade Mark Registration Appeal Under the Trade Marks Ordinance (cap. 43) / Appeal to the Court of First Instance (judgment on Appeal)

Legal Issues

  1. 1 Whether the subject mark is capable of distinguishing goods for registration in Part B under s.10(1) and s.10(2) of the Ordinance
  2. 2 Whether alcoholic beverages (Class 33) are goods of the same description as or closely allied to canned foods (Class 29)
  3. 3 Whether prior use and any other circumstances confer factual distinctiveness absent use on the specific goods applied for

Ratio Decidendi

On the evidence GDF's pre-existing fields of activity included manufacture of both canned foods and Chinese rice wines and it had long used related Pearl River Bridge marks on both; this prior use and association render Chinese rice wines sufficiently closely allied to canned foods such that the subject mark, already registered and used for canned foods, is factually capable of distinguishing GDF's Chinese rice wines; accordingly the appellant's Part B registration succeeds but must be limited to Chinese rice wines and disclaimed as to the two Chinese characters individually.

Court Disposition

Appeal allowed in part; Registrar's decision set aside in part

Orders

  • Set aside the Registrar's refusal and direct registration in Part B of the Register limited to Chinese rice wines (Class 33) only
  • Registration to be subject to a disclaimer of any exclusive rights in the two Chinese characters individually