Hong Kong follows EU's 'confusion' model

Hong Kong

The Hong Kong Intellectual Property Department has revised the Hong Kong Trademarks Registry Work Manual to provide clear and updated guidance on the test to determine the likelihood of confusion between competing marks.

Before the revision, the manual simply stated that a 'global appreciation' test had been formulated by the European courts and the registry would accordingly apply a three-stage test in examining a trademark application against earlier trademarks. This test required the registry to examine whether:

  • the marks are similar;

  • the goods or services are similar; and

  • confusion on the part of the public is likely.

The revision emphasizes that the registry will now follow the principles on this issue established by the European Court of Justice (ECJ). Three ECJ cases, Sabel BV v Puma AG, Rudolf Dassler Sport, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc and Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV, were cited in the manual.

On this basis, the registry will therefore determine whether there is any likelihood of confusion through a global appreciation of the visual, aural and conceptual similarities between the marks in question, based on the overall impression they produce, and bearing in mind their distinctive and dominant components. The registry will take into account that a likelihood of confusion is greater where the earlier mark is highly distinctive, even if there is a lesser degree of similarity between the goods or services. It will also consider whether the earlier mark has any inherent characteristics, including elements that are descriptive of the goods or services for which it has been registered. Nevertheless, even if the marks are identical and the earlier mark is highly distinctive, evidence of similarity between the goods or services is still necessary.

The ECJ cases suggest that association is an important factor to be considered but that this does not necessarily equate to confusion. The subsequent mark may bring the earlier mark to mind without any likelihood of the consumer being confused about the origin of the goods or services in question.

By discarding the earlier three-stage test, the revision aims to clarify that the 'global appreciation' test really requires consideration of all relevant factors as well as their interdependence. Many provisions of Hong Kong's new Trademarks Ordinance quite closely resemble the Community Trademark Directive and it will be no surprise to see more revision of the manual in line with the development of European case law.

For background information on the Trademarks Ordinance, see Hong Kong introduces new Trademarks Ordinance.

Yvonne Chua and Chloe Lee, Wilkinson & Grist, Hong Kong

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