Use on allied goods allows registration of YUPIN mark

The High Court of Hong Kong has allowed Guangdong Foodstuffs Import and Export (Group) Corporation's application to register the trademark YUPIN (meaning 'of imperial quality') in Chinese characters (HCMP 2598/2003).

The case was decided under the provisions of the old Hong Kong Trademarks Ordinance, which applies to marks applied for before April 4 2003. Under these provisions the Trademark Register is divided into Part A and Part B. A trademark can be registered in Part B, if it is inherently or in fact "capable of distinguishing" goods or services from those of other traders. This can be established by use of the trademark or "any other circumstances". Other circumstances include use of another registered trademark in respect of goods of the same description or otherwise allied in some significant way.

Guangdong applied to register the YUPIN mark for goods in Class 35 of the Nice Classification and, specifically, Chinese rice wine. The trademark registrar refused registration, even though Guangdong (i) provided evidence that the mark was already registered in Class 29 in respect of various canned foods, and (ii) offered to include a disclaimer of the two separate Chinese characters making up the mark, in line with the existing registration. The registrar concluded that:

• the mark was not inherently capable of distinguishing because it was laudatory and descriptive of the quality of the goods;
  
  
• the mark did not have the necessary factual capacity to distinguish because it had not been used on rice wines or other alcoholic beverages; and
  
  
• use of the mark on canned or processed foods was not sufficient to constitute "any other circumstances" under the old Trademark Ordinance.

On appeal, the High Court allowed the registration. It held that although not necessarily "goods of the same description", Chinese rice wines and canned foods are allied goods. This was because Guangdong had been involved in the manufacture of canned foods and Chinese rice wines for about 50 years during which time it had used its other well-known marks on both sets of products. It was likely, therefore, that consumers seeing the YUPIN mark on Chinese rice wines would associate such rice wines with Guangdong. In addition, Chinese rice wines and canned foods share the same trade channels (eg, supermarkets, grocery stores and neighbourhood stores). They could also be regarded as complementary goods as they are both meant for human consumption and tend to be consumed together.

The dual Part A and Part B register has made way for a simplified single register under the new Trademarks Ordinance, which covers trademarks applied for on or after April 4 2003. Under the new ordinance, the threshold for registration is lower and extends to any sign (i) capable of distinguishing, and (ii) not devoid of any distinctive character. However, the latter objection may be overcome if the trademark has in fact acquired distinctive character "as a result of the use made of it". The new ordinance does not specify whether such use includes use in relation to similar goods (ie, goods of the same description) or use of a prior registered trademark for the same or allied goods. Therefore, if the case had been decided under the current law, the YUPIN mark might have been accepted as being capable of distinguishing, but if not, it is questionable whether the prior use and registration for canned foods would have been sufficient to establish factual distinctiveness in respect of rice wines.

For background information on Hong Kong's new Trademarks Ordinance, see Trademarks Ordinance implemented after three-year delay and Hong Kong introduces new Trademarks Ordinance.

Henry Wheare, Lovells, Hong Kong