Court of First Instance addresses key aspects of trademark law

In the recent case Vita Green Health Products Company Limited v Vitasoy International Holdings Limited (HCMP 593/2014), the Hong Kong Court of First Instance has highlighted some important principles of trademark law which should be considered when applying for or opposing a trademark - in particular:

• While a mark may have an established reputation in respect of particular goods, this does not mean that such reputation will extend to other goods.
• It is important to consider the Hong Kong public when assessing whether a particular mark will be considered descriptive or distinctive. Decisions from other jurisdictions may not assist in this regard.
• The court will be slow to overturn a decision of a registrar where the conclusion was based on contextual assessment and evaluation.

Vita Green Health Products Company Limited (the appellant) applied under the Trademark Ordinance (Cap 559) for registration of two VITAGREEN marks in respect of three classes of goods, mainly beverage products. Vitasoy International Holdings Limited (the respondent) opposed the applications. The respondent was the owner of the trademarks VITA and VITASOY (the VITA marks). The registrar of trademarks refused the appellant’s application under Section 12(3) of the ordinance. The appellant appealed against the registrar’s decision.

The appellant appealed on two main grounds:

1. the registrar erred in finding that the word ‘vita’ was distinctive of the respondent’s business and the use of the VITAGREEN marks was therefore likely to cause confusion to the public; and
2. the registrar failed to give due regard to the commercial realities of the marketplace, in particular the existing reputation attached to the VITAGREEN marks, when considering the likelihood of confusion to the public.

The appellant argued that the word ‘vita’ was descriptive as it alluded to words such as ‘vitamin’ and ‘vitality’ in English, and the general public of Hong Kong would understand it to have these meanings. Therefore, by being descriptive, the word ‘vita’ could not be distinctive of the respondent’s products.

The court disagreed. The court reiterated the well-established principle of trademark law which requires the meaning of a trademark to be interpreted by reference to the appropriate target audience. Here, the relevant target audience was the Hong Kong public. The Hong Kong public speaks English and the word ‘vita’ does not have any English meaning in the Oxford English Dictionary. While ‘vita’ does have a meaning in Latin and in Spanish, the Hong Kong public could not be expected to be aware of the Latin or Spanish meaning. Accordingly, the appellant’s attempt to reference a decision by the Court of First Instance of the European Communities on the understanding of ‘vita’ in Spain was of no assistance. Therefore, since ‘vita’ was not an English word and would not be understood by the Hong Kong public, it was not descriptive.

The court also considered the years of sale and extensive promotion of the respondent’s beverage goods under the VITA marks and the numerous awards received by the respondent’s products. These factors further enhanced the distinctiveness of the VITA marks and the relationship of those marks to the respondent’s beverage goods.

Importantly, in reaching the decision that the VITA marks were distinctive, the court commented that questions relating to the distinctiveness of a given mark and the likelihood of confusion are matters of contextual assessment and evaluation. Therefore, a court should be slow to reverse the decision of an experienced registrar on appeal unless clear grounds for intervention are shown. Therefore, when considering whether to appeal a decision of the registrar, regard must be had to the reticence of the court to overturn a conclusion of the registrar on these issues.

The court also highlighted the importance of determining the goods and services for which the reputation can be attributed. In particular, the court accepted that the appellant had an established reputation in the VITAGREEN marks through extensive use. However, the marketing activities and the awards received by the appellant were in relation to other categories of goods, such as health food supplements, vitamin products and Chinese herbal remedies. The appellant had not established a reputation for the VITAGREEN marks in relation to beverage products. By contrast, the respondent’s VITA mark had a very strong reputation in relation to beverage products and the evidence showed that it was widely known by the Hong Kong public.

Therefore, the court concluded that the great degree of similarity between the marks (that is, the use of the word ‘vita’ by both marks) combined with the overlapping classes of goods meant there was likelihood that the Hong Kong public would be confused by the co-existence of both marks. Accordingly, the court dismissed the appeal and refused registration of the VITAGREEN marks with respect to beverage goods.

Nina Fitzgerald, Herbert Smith Freehills LLP, Hong Kong