ATA opposition rejected

In Antonio Precise Products Manufactory Limited v ATA Corporate Formation & Management Limited, the Hong Kong Trademarks Registry has dismissed an opposition against ATA Corporate Formation & Management Limited's (ATA Corporate) application for registration of the device mark ATA CFM for consultation and management services relating to commerce, business and IP services in Classes 35 and 42 of the Nice Classification.

The opponent, Antonio Precise Products Manufactory Limited (APPM), based its opposition on two earlier ATA marks, registered in Class 9 for audio products, equipment and apparatus. It invoked statutory grounds against registration under Sections 2, 3, 11, 12 and 38 of the Trademarks Ordinance Cap 559. In addition, apart from relying on the above statutory grounds, APPM further asserted that the registrar should exercise discretion to refuse ATA Corporate's mark.

In evidence, APPM stated that it and its predecessor had been carrying on business involving industrial designing, licensing of intellectual property, handling of business enquiries, provision of business information and the conducting of price analysis of audio/visual products since 1982. It claimed that it had used its ATA marks since 1991. As well as adducing approximate turnover and advertising figures of its business under the ATA marks from 1999 to 2003, (but without breaking down such figures for turnover and expenditure in Hong Kong), APPM submitted, among other things, documentary evidence of the use of its marks on products such as headphones, earphones, speakers, microphones and portable headsets for mobile phones for the years 1992, 2002 and 2003.

ATA Corporate filed no evidence other than filing a counter-statement asserting that it had been in the business of corporate formation and management since 1997.

The registrar adopted the 'global appreciation' test and held the following:

• ATA Corporate's mark is not identical to APPM's earlier marks and hence opposition under Section 12(2) of the ordinance must fail.
  
  
• While ATA Corporate's mark is recognized to be similar to APPM's earlier marks, the applied for services are completely different from APPM's goods of interest. Consumers are unlikely to be confused into believing that the services provided under ATA Corporate's mark and the goods sold under APPM's mark have the same or a related source. Therefore the opposition under Section 12(3) must fail.
  
  
• APPM had failed to prove its marks to be well known among the relevant sectors of the public in Hong Kong. Accordingly, opposition under Section 12(4) must fail.
  
  
• There is insufficient evidence that APPM has established a goodwill or reputation in its marks in Hong Kong before the application date of ATA Corporate's mark. Further, following the ruling in point two above, there is no likelihood of confusion among the public that the applied for services provided under ATA Corporate's mark are those of APPM. The requisite elements of a passing off claim have not been established and hence opposition under Section 12(5) must also fail.
  
  
• No reasons have been advanced by the opponent to substantiate its opposition grounds under Sections 2, 3, 11 and 38 and hence these grounds also fail.
  
  
• The registrar has no power to refuse a trademark application that has met the registration requirements. In view of the compliance of those requirements by ATA Corporate's mark, the registrar has no discretion to refuse such mark.

This is a classic case illustrating that the legal and evidential burden to substantiate a trademark opposition is borne by the opponent. An opposition based on bare allegations without concrete and substantive proof falls short of meeting the pre-requisite or threshold as required by the Trademarks Ordinance, and would inevitably fail notwithstanding absence of any evidence from the applicant. In the present case, despite the fact that ATA is a prominent component common to both parties' marks, the dissimilarity of APPM's goods with ATA Corporate's services, as well as the inadequate level of proof of goodwill or reputation in APPM's marks in Hong Kong were fatal to APPM's case, justifying the dismissal of the opposition.

Thomas Tsang, Wilkinson & Grist, Hong Kong