Registrar considers whether internet use qualifies as trademark use

The Trademarks Registry has issued a decision relating to the revocation of the trademark WAVERLEY in Class 24 of the Nice Classification on the grounds of non-use. In the decision, the registrar considered whether the online promotion of the owner’s products on its own website and other independent websites where the trademark appeared qualified as genuine use within the meaning of Section 52(2)(a) of the Trademarks Ordinance.

The registrar looked to Paragraph 10-067 of "Kerly’s Law of Trademarks and Trade Names" (15th edition), which suggests that use of a mark on a website will constitute use in a particular territory only if the website is specifically aimed at, and used by, consumers in that territory, as supported by the judgment of Jacob J at Paragraph 12 in Euromarket Designs Inc v Peters and Crate & Barrel Ltd ([2001] FSR 20).

The evidence submitted for the internet promotion consisted of four printed pages, all dated after the date of the application for revocation, and one undated printed page from the owner’s website. As the internet promotion had not been carried out within the three years before the date of the application for revocation, this evidence failed to assist the owner. However, even overlooking this, the registrar concluded that the internet promotion did not amount to genuine use of the mark in Hong Kong. It was concluded that the websites referred to were not specifically aimed at and used by consumers in Hong Kong because:

• the number of hits on the webpages was unknown, from users in both Hong Kong and elsewhere around the world;
• there was no information about how a purchase could be made in Hong Kong, including payment and delivery information; and
• there was no mention of a Hong Kong agent or distributor.

Lily Cheung, Wilkinson & Grist, Hong Kong