Dunhill claims victory over imitated mark

Hong Kong
On March 12 2009 the registrar of trademarks declared that the registration for the trademark DEERLU for goods in Class 25 of the Nice Classification was invalid.
 
The trademark DEERLU was registered by French Dunhill Clothing & Accessories Limited, a Hong Kong limited liability company, on October 30 2003 in respect of "clothing, shoes and hats" in Class 25 (Registration 300102905). On June 8 2005 Alfred Dunhill Limited relied on its trademark rights (including Registration 19913358 for DUNHILL, registered on May 26 1990 in respect of “clothing, footwear and headgear” in Class 25) to apply for a declaration of invalidity of French Dunhill’s mark.
 
The registrar considered only the grounds of invalidation pleaded by Alfred Dunhill under Sections 12(3) and 53(5)(a) of the Trademarks Ordinance (Cap 559).

Section 53(5)(a) of the ordinance provides that:
 
the registration of a trademark may also be declared invalid on the ground-

(a) that there is an earlier trademark in relation to which the conditions set out in section 12(1), (2) or (3) (relative grounds for refusal of registration) apply.
 
Further, Section 12(3) provides that:
 
A trademark shall not be registered if-

(a) the trademark is similar to an earlier trademark;
(b) the goods or services for which the application for registration is made are identical or similar to those for which the earlier trademark is protected; and
(c) the use of the trademark in relation to those goods or services is likely to cause confusion on the part of the public.
 
Registration of a trademark will be prohibited by Section 12(3) if the mark is likely to cause confusion on the part of the public due to its similarity to an earlier trademark and its registration in respect of goods or services identical or similar to those registered under an earlier trademark.

Alfred Dunhill’s mark is a rare surname in Hong Kong which is inherently distinctive for its registered Class 25 goods. The stems of the letters 'd', 'h' and 'l' in Alfred Dunhill’s mark are particularly elongated. According to the registrar, the four elongated stems catch the eye and contribute to the highly distinctive character of Alfred Dunhill’s mark. There is a greater likelihood of confusion where the earlier trademark has a highly distinctive character either per se or because of the use that has been made of it.

The registrar also noted that the stems of the letters 'd', 'r' and 'u' in French Dunhill’s mark were also particularly elongated and eye-catching.

The registrar pointed out that an average consumer is more likely to remember the distinctive and dominant components in a trademark (ie, the four stems in both marks) as they strike the consumer at first glance. The registrar found that the elongated stems in the respective marks of Alfred Dunhill and French Dunhill caught the eye and occupied similar relative positions in the marks. The structures of the two marks were very similar. Applying the global appreciation test, the registrar concluded that the overall impressions created by the two marks were also very similar, despite the phonetic difference.

In arriving at this decision, the registrar considered that the goods covered by French Dunhill’s mark were identical to some of the goods covered by Alfred Dunhill’s mark and that the degree of distinctiveness of Alfred Dunhill’s mark was high. Taking into account that the overall impressions created by the two marks were very similar, the registrar held that when French Dunhill’s mark was used in relation to Class 25 goods in a normal and fair manner, the average consumer would be confused into thinking that the goods of French Dunhill and Alfred Dunhill came from the same or economically linked undertakings. The registrar thus declared that French Dunhill’s mark was invalid pursuant to Sections 12(3) and 53(5)(a) of the ordinance.
 
Venus Lee, Wilkinson & Grist, Hong Kong

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