BT Case suggests that marks with disclaimers should be reviewed

The Hong Kong trademark registrar has dismissed an application filed by British Telecommunications Plc which sought to remove a disclaimer imposed on two trademarks registered under the old Trademarks Ordinance (Decision issued on February 22 2007).

In 1991 and 1992 British Telecommunications obtained two registrations in Hong Kong for the word and device mark BT in Classes 9 and 38 of the Nice Classification. A disclaimer that British Telecommunications would not have exclusive use of the letters 'BT' was attached to the registrations, as required under the ordinance in force at the time. The current Trademarks Ordinance, which came into effect on April 4 2003, abolished disclaimer requirements. However, all trademark registrations and disclaimer requirements granted under the old law are deemed to have been transferred to the Trademarks Register.

In April 2003 Bticino SpA filed an application under the current law for registration of its BT logo mark for certain goods which overlap or are associated with the goods and services covered by British Telecommunications' two prior registrations. British Telecommunications' registrations were not cited against Bticino's application as the current law (unlike the old law) requires that the matter disclaimed be disregarded in assessing whether a mark for which an application is received is confusingly similar to an earlier mark in the register. Therefore, Bticino's mark was approved for registration in respect of Class 9 goods with no requirement to disclaim the letters 'BT'. However, when British Telecommunications filed an application for registration of the word mark BT in 2004, an objection was raised at the examination stage in respect of some of the goods covered by Bticino's BT logo mark. British Telecommunications claimed that the interplay between the registry's practices under the old and current laws caused injustice. It also sought to remove the disclaimer condition imposed on the letters 'BT' in its two marks granted under the old law on the grounds that the condition had ceased to have effect.

British Telecommunications argued that the letters 'BT' were not descriptive of the goods or services in question; as the registry had abandoned the disclaimer requirement, the condition had ceased to have effect and should be removed from the register. Furthermore, British Telecommunications was able to demonstrate a long period of use of the letters as a trademark. However, the registrar considered that the question before her was whether the disclaimer had ceased to have effect, not whether the letters would have to be disclaimed if registration of the letters were sought under the current law. Evidence of use filed by British Telecommunications did not show that the disclaimer had ceased to have effect and there was no other evidence to suggest this. British Telecommunications' rectification application failed.

The registrar found that the interplay between the registry's practice under the old and current laws had not caused unfairness to British Telecommunications, as there had been nothing to prevent it from taking advantage of the change in practice by applying for registration of the BT mark as soon as the current law came into effect. The current law applies equally to all applicants and the registrar considered that no unfairness had been caused to British Telecommunications.

It is advisable for trademark owners to review their portfolios for marks which were subject to disclaimer conditions under the old law to see whether fresh applications should be filed in order to take advantage of the Trademark Registry's change in practice.

Mena Lo and Venus Lee, Wilkinson & Grist, Hong Kong