Trademark invalidated for infringement of copyright

The Hong Kong registrar of trademarks has ordered the cancellation of the trademark CHOCOLATE BY THE BALD MAN MAX BRENNER and a device depicting a bald man registered in Class 30 of the Nice Classification in respect of, among other things, chocolate-based beverages, cocoa-based beverages, chocolate and cocoa.

Food product manufacturer Strauss-Elite Ltd sought to invalidate the mark under Section 12(5)(b) of the Trademarks Ordinance (Cap 559) for all of the goods in respect of which it was registered.

Section 12(5)(b) provides that:

"Subject to Subsection 6, a trademark shall not be registered if or to the extent that its use in Hong Kong is liable to be prevented ... by virtue of an earlier right other than those referred to in Paragraph (a) or in Subsections 1 to 4 (in particular by virtue of the law of copyright or registered designs) ... and a person thus entitled to prevent the use of a trademark is referred to in this ordinance as the owner of an earlier right in relation to the trademark."

Strauss-Elite submitted that the name Max Brenner was created in 1995 by Oded Brenner and Max Fichtman, when the company Max Brenner Ltd was established in Israel to manufacture and sell chocolate products. The company initially adopted a logo in the form of a signature incorporating the letters 'MB' and the words 'HANDMADE CHOCOLATE BY MAX BRENNER'. The company later added a drawing of Oded Brenner's face by Israeli artist Mira Fridman. The drawing was commissioned by Brenner on the basis that he would own all copyright in it. Brenner's rights in the trademark MAX BRENNER and the device were subsequently assigned to Strauss-Elite. The new logo consisted of a device depicting a bald man, a signature and the words 'CHOCOLATE BY THE BALD MAN MAX BRENNER'.

Strauss-Elite submitted that none of the successive owners of the copyright in the logo (ie, Fridman, Brenner or Strauss-Elite) had licensed the registered owner to use or apply to register the work or mark as a trademark in Hong Kong.

The registrar found that the logo was an original artistic work in which copyright subsisted and which qualified for protection under the Copyright Ordinance (Cap 528). At the time of its creation, the artist, an Israeli national, qualified as an individual or resident having a right of abode in Hong Kong or elsewhere. The evidence adequately accounted for the creation of Strauss-Elite's mark (ie, MAX BRENNER and the picture of Brenner).

The suit mark was identical in all respects to the logo in which Strauss-Elite owned copyright. As there was no account of the origin of the suit mark, its use in Hong Kong was liable to be prevented on the grounds of Strauss-Elite's earlier copyright; therefore, the suit mark was revoked under Section 12(5)(b). The registrar did not consider the alternative grounds, pleaded under Sections 11(5)(a) and (b), that use of the suit mark was liable to be prohibited by law and that the application had been made in bad faith.

If the registered owner had registered only the trademark MAX BRENNER (ie, without the device) in Class 30, Strauss-Elite might have had a more difficult case to make to have the mark invalidated before registering its mark (ie, MAX BRENNER and device) in Hong Kong. It would have had to have proved that:

• its MAX BRENNER mark was well known in Hong Kong;
  
  
• use of the mark was liable to be prevented on the grounds of passing off, which would have required Strauss-Elite to prove the reputation of the mark in Hong Kong; or
  
  
• the application for the mark was made in bad faith.

Mena Lo and Florence Lam, Wilkinson & Grist, Hong Kong