BO BEAUTY ORIGINS opposition rejected

The registrar of trademarks has issued a decision rejecting an opposition filed by Origins Natural Resources Inc (Origins) against an application by Beauty Origins Limited to register the figurative mark BO BEAUTY ORIGINS for cosmetics in Class 3 of the Nice Classification and health food in Class 5 (File 300239463, July 20 2007).

Origins claimed that in respect of cosmetics and health food for the enhancement of one's beauty, the word 'BEAUTY' is non-distinctive. It also argued that the only distinctive element in Beauty Origin's mark is the word 'ORIGINS', which is:

• identical to a number of Origins' earlier trademark registrations in Hong Kong in respect of toiletries, beauty products and vitamins; and
  
  
• confusingly similar to the family of marks registered by Origins in Hong Kong in Classes 3 and 5, which incorporates the word 'ORIGINS'.
  

Origins claimed that Beauty Origins' mark should not be registered under Section 12(3) of the Trademarks Ordinance, which provides that a trademark shall not be registered if:

• it is similar to an earlier trademark;
  
  
• the goods or services for which the application for registration is made are identical or similar to those for which the earlier trademark is protected; and
  
  
• the use of the trademark in relation to those goods or services is likely to cause confusion to the public.
  

Origins further claimed that its mark ORIGINS is entitled to protection under the Paris Convention for the Protection of Industrial Property as a well-known trademark, and the use of Beauty Origins' mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of this mark. Accordingly, it claimed that Beauty Origins' mark should be refused registration under Section 12(4) of the ordinance.

In addition, Origins claimed that registration of Beauty Origins' mark should be refused under Section 12(5) of the ordinance on the grounds of passing off.

The registrar held that the goods covered by Beauty Origins' application are similar to those protected under Origins' trademark registrations. However, the registrar concluded that the use of Beauty Origins' mark is not likely to confuse the public into thinking that the goods under the mark are Origins' goods. The registrar commented that while a mark incorporating a highly distinctive element of another mark would be more likely to give rise to confusion, Origins' mark ORIGINS comprises of a word of low inherent distinctiveness. The registrar rejected Origins' claim that the only distinctive element in Beauty Origins' mark is the word 'ORIGINS', reasoning that the figurative part of the mark is a prominent element. Referring to UK and European Court of Justice case law, the registrar held that Beauty Origins' mark is visually, aurally and conceptually different from the mark ORIGINS or Origins' other trademarks incorporating the word 'ORIGINS', such that confusion on the part of the public is unlikely to arise. Origins' opposition based on Section 12(3) therefore failed.

The registrar then examined the evidence submitted by ORIGINS and held that although there had been considerable sales and promotion of goods under the ORIGINS mark in Hong Kong, the submitted evidence was not conclusive as to whether the mark was well known in Hong Kong at the relevant time (ie, the date of filing of Beauty Origins' mark). Noting that the onus of proof under Section 12(4) was on Origins and that it had failed to provide sufficient evidence, the registrar dismissed Origins' claims under this section.

The registrar also rejected Origins' claim under the law of passing off, stating that Beauty Origins' mark was not so similar to Origins' marks as to lead or be likely to lead the public to believe that the goods under the Beauty Origins' mark are Origins' goods. As Origins had not been able to show that use of Beauty Origins' mark constituted a "misrepresentation to the public" that the goods under the mark were Origins' goods, the claim of passing off was not established and the opposition under Section 12(5) failed.

Finally, the registrar refused Origins' claims that:

• Beauty Origins' mark is contrary to accepted principles of morality or is likely to deceive the public; and
  
  
• the application for registration of the mark was made in bad faith.
  

The registrar held that nothing in Origins' evidence supported these claims.

Rebecca Lo, Rebecca Lo & Co, Hong Kong