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TRADE MARKS ORDINANCE (Cap. 559)

OPPOSITION TO TRADE MARK APPLICATION NO. 302852622

MARK:

CLASSES:

43

APPLICANT: SON, TAI YOUNG

OPPONENT: HOLIDAY HAMPERS LIMITED

STATEMENT OF REASONS FOR DECISION

Background

1. On 30 December 2013, Son, Tai Young (the “applicant”) filed an application

(the “subject application”) under the Trade Marks Ordinance, Cap. 559 (the

“Ordinance”) for registration of the following mark:-

(“the subject mark”).

2. Registration is sought in respect of the following services (“subject services”)

in Class 43:-

Class 43

Restaurant chain services; cafes; cafeterias; tea rooms; restaurants; bakery services for

the provision of food.

3. Particulars of the subject application were published on 7 March 2014. On

24 July 2014, Holiday Hampers Limited (the “opponent”) filed a Notice of opposition

attached with a “Grounds of Opposition”.

4. The opposition hearing took place before me on 21 June 2017. Mr. Philips

B.F. Wong of Counsel, instructed by Emily Yip & Co., represented the opponent.

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The applicant through their agent had informed the Registrar beforehand that they

would not attend the hearing.

Grounds of Opposition

5. In the Grounds of Opposition, the opponent opposes registration of the

subject mark under sections 11(1)(a), 11(4)(b), 11(5)( b) and 12(3) of the Ordinance.

Paragraph 4 of the Grounds of Opposition sets out the registration details of a trade

mark, namely, “COFFEE SMITH”, relied upon by the opponent in launching the

opposition against the subject application.1

Counter Statement

6. The applicant filed the Counter-statement with a grounds for

counter-statement entitled “Counter Statement” on 22 October 2014, denying all the

grounds of opposition.

The opponent’s evidence

7. The opponent’s evidence in support comprises a statutory declaration of

CHOY Po Yee dated 17 July 2015 (“Choy’s statutory declaration”).

8. Ms. Choy has been the Administration Manager of the opponent since 2004.

She has free access to the opponent’s records and is duly authorized by the opponent

to make the statutory declaration in these proceedings.

9. According to Ms. Choy, the opponent founded the opponent’s business in

1 An “Amended Grounds of Opposition” was filed by the opponent on 20 April 2015 to reflect the fact

that the trade mark relied upon by the opponent in launching the opposition has been deemed registered

as of 31 March 2011.

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Hong Kong in 1987 which started as a retailing business offering different kinds of

food and beverages for consumers in the Hong Kong and the mainland China markets.

The opponent is the proprietor of the trade mark “COFFEE SMITH” which the

opponent registered in Class 35 under registration number 301876212 with a

registration date of 31 March 2011. Exhibit HH1-01 to Choy’s statutory declaration

contains a copy of the certificate of registration of that mark in Hong Kong; and

Exhibit HH1-02 contains a copy of the certificate of registration of that mark in China

in respect of Class 35 under registration number 9295472. Furthermore, exhibit

HH1-03 contains copies of the official filing receipts issued by the Trade Marks

Registry in Hong Kong and the Trade Marks Office in China in respect of the said

trade mark applications for registration, and exhibit HH1-04 contains details of these

applications as obtained from the online database of the respective trade mark offices.

10. The rest of Choy’s statutory declaration is devoted entirely to refutation of

the assertions contained in the Counter Statement, and in the main they are in the

nature of arguments or submissions without evidential contents. I do not propose to

summarize them here and would only discuss them if and when appropriate in the

later analysis in this decision.

The applicant’s evidence

11. The applicant did not file any evidence in the proceedings.

Decision

12. Subject to any contrary indication below, for any of the grounds of

opposition discussed in this decision, the relevant date is the date the subject

application was filed, viz., 30 December 2013 (“the relevant date”).

13. Mr. Wong at the hearing indicated that he only wished to pursue the two

grounds of opposition based on section 12(3) and 11(5)(b) of the Ordinance, I will

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accordingly only rule on these two grounds.

Section 12(3) of the Ordinance

14. Section 12(3) of the Ordinance provides as follows:

“(3) A trade mark shall not be registered if-

(a) the trade mark is similar to an earlier trade mark;

(b) the goods or services for which the application for registration is made are

identical or similar to those for which the earlier trade mark is protected; and

(c) the use of the trade mark in relation to those goods or services is likely to

cause confusion on the part of the public.”

15. Under section 7(1) of the Ordinance, in determining whether the use of a

trade mark is likely to cause confusion on the part of the public, the Registrar may

take into account all factors relevant in the circumstances, including whether the use

is likely to be associated with an earlier trade mark.

16. Section 12(3) of the Ordinance is similar in effect to section 5(2) of the U.K.

Trade Marks Act 1994, which implements Article 4(1)(b) of the First Council

Directive 89/104 of 21 December 1998 of the Council of the European Communities

(“the Council Directive”). In interpreting Article 4(1)(b) of the Council Directive,

the European Court of Justice (“ECJ”) has formulated the “global appreciation” test,

the principles of which can be found in the ECJ decisions in Sabel BV v Puma AG

[1998] R.P.C. 199, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. [1999]

R.P.C. 117, Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel B.V. [2000] F.S.R.

77, Marca Mode CV v Adidas AG [2000] E.T.M.R. 723 and more recently, in

Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] F.S.R. 19.

17. Such principles have long been adopted in Hong Kong, as confirmed by the

Court of Appeal in Tsit Wing (Hong Kong) Co Ltd v TWG Tea Co Pte Ltd [2015] 1

HKLRD 414. In essence, the test under section 12(3) is whether there are

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similarities in marks and goods which would combine to create a likelihood of

confusion. The likelihood of confusion must be appreciated globally. In Tsit Wing,

Lam VP cited (at paragraph 35) the propositions endorsed by Kitchin LJ in

Specsavers (at paragraph 52) as follows:

“On the basis of these and other cases the Trade Marks Registry has developed the

following useful and accurate summary of key principles sufficient for the determination of

many of the disputes coming before it:

(a) the likelihood of confusion must be appreciated globally, taking account of all

relevant factors;

(b) the matter must be judged through the eyes of the average consumer of the goods or

services in question, who is deemed to be reasonably well informed and reasonably

circumspect and observant, but who rarely has the chance to make direct comparisons

between marks and must instead rely upon the imperfect picture of them he has kept in his

mind, and whose attention varies according to the category of goods or services in question;

(c) the average consumer normally perceives a mark as a whole and does not proceed to

analyse its various details;

(d) the visual, aural and conceptual similarities of the marks must normally be assessed

by reference to the overall impressions created by the marks bearing in mind their

distinctive and dominant components, but it is only when all other components of a complex

mark are negligible that it is permissible to make the comparison solely on the basis of the

dominant elements;

(e) nevertheless, the overall impression conveyed to the public by a composite trade

mark may, in certain circumstances, be dominated by one or more of its components;

(f) and beyond the usual case, where the overall impression created by a mark depends

heavily on the dominant features of the mark, it is quite possible that in a particular case an

element corresponding to an earlier trade mark may retain an independent distinctive role in

a composite mark, without necessarily constituting a dominant element of that mark;

(g) a lesser degree of similarity between the goods or services may be offset by a greater

degree of similarity between the marks, and vice versa;

(h) there is a greater likelihood of confusion where the earlier mark has a highly

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distinctive character, either per se or because of the use that has been made of it;

(i) mere association, in the strict sense that the later mark brings the earlier mark to mind,

is not sufficient;

(j) the reputation of a mark does not give grounds for presuming a likelihood of

confusion simply because of a likelihood of association in the strict sense;

(k) if the association between the marks causes the public to wrongly believe that the

respective goods [or services] come from the same or economically-linked undertakings,

there is a likelihood of confusion.”

Earlier trade mark

18. The term “earlier trade mark” is defined in section 5 of the Ordinance.

References to an earlier trade mark shall be construed as including a trade mark in

respect of which an application for registration has been made under the Ordinance

and which, if registered, would constitute an earlier trade mark under or by virtue of

section 5(1)(a), subject to its being so registered.

19. As I have pointed out above, paragraph 4 of the Grounds of Opposition sets

out the registration details of a trade mark, namely, “COFFEE SMITH”, relied upon

by the opponent in launching the opposition against the subject application. This

mark of the opponent (the “opponent’s mark”) is registered in Hong Kong in Class 35

under registration number 301876212 with a registration date of 31 March 2011,

which is earlier than the relevant date, it therefore meets the criteria of “earlier trade

mark” as defined under section 5(1)(a) of the Ordinance.

The average consumer

20. The concept of "average consumer" has been well discussed in many of the

case law of the UK and the European Union. As the case law shows, in the global

assessment of the likelihood of confusion, account should be taken of the average

consumer of the category of goods and services concerned, who is reasonably well

informed and reasonably observant and circumspect. It should also be borne in mind

that the average consumer’s level of attention is likely to vary according to the

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category of goods or services in question (Mundipharma AG v Office for

Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) – Altana

Pharma (RESPICUR) (T-256/04) [2007] E.C.R. II-449 at [42] and the case law cited),

and I have to determine the manner in which these goods and services are likely to be

selected by the average consumer in the course of trade.

21. Moreover, in Hearst Holdings Inc, Fleischer Studios Inc v A.V.E.L.A. Inc,

Poeticgem Limited, The Partnership (Trading) Limited, U Wear Limited, J Fox

Limited [2014] EWHC 439 (Ch), Birss J. described the average consumer in these

terms:

“60. The trade mark questions have to be approached from the point of view of the

presumed expectations of the average consumer who is reasonably well informed and

reasonably circumspect. The parties were agreed that the relevant person is a legal construct

and that the test is to be applied objectively by the court from the point of view of that

constructed person. The words “average” denotes that the person is typical. The term

“average” does not denote some form of numerical mean, mode or median.”

22. The applicant’s applied for services are “restaurant chain services; cafes;

cafeterias; tea rooms; restaurants; bakery services for the provision of food” in Class

43.

23. The opponent’s services are registered in Class 35 as follows:- “Advertising,

outdoor advertising, advertising services provided via the Internet, sales promotions

for others; business management; provision of public relations services; organizing

exhibitions for commercial or advertising purposes; provision of business information,

import-export agency services, purchasing goods and services for other businesses

(procurement services for others); wholesaling and retailing of meat, fish, poultry and

game, meat extracts, preserved, frozen, dried and cooked fruits and vegetables, jellies,

jams, compotes, eggs, milk and milk products, edible oils and fats, coffee, tea, cocoa,

sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals,

bread, pastry and confectionery, ices, honey, treacle, yeast, baking-powder, salt,

mustard, vinegar, sauces (condiments), spices, ice, beers, mineral and aerated waters

and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other

preparations for making beverages, the bringing together, for the benefit of others, of

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the aforesaid goods, enabling customers to conveniently view and purchase those

goods from a general merchandise catalogue by mail order or by means of

telecommunications, from a general merchandise Internet web site, or in a department

store”.

24. Whilst the applicant’s services can simply be categorized as restaurants and

cafes services, the opponent’s services, other than those of advertising and public

relations services, trade agency services and business management, could be

categorized as wholesaling and retailing of various kinds of food and drink. The

relevant public for all this is made up of the average consumers, who are reasonably

well informed and reasonably observant and circumspect, and whose degree of

attention must be regarded as average when they go for these services.

Comparison of goods or services

25. According to settled case-law, in order to assess the similarity between

goods or services, all the relevant features of the relationship between them should be

taken into account. Those features include, inter alia, their nature, their intended

purpose, their method of use and whether they are in competition with each other or

are complementary (As per Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc.).

Other factors may also be taken into account such as the distribution channels of the

goods or services concerned (see for example British Sugar Plc v James Robertson

and Sons Ltd [1996] R.P.C. 281; Case T-443/05 El Corte Inglés v OHIM – Bolaños

Sabri (PiraÑ AM diseño original Juan Bolaños) [2007] ECR II-2579, paragraph 37

and the case-law cited).

26. As noted above, in the present case, the applicant’s services can simply be

said to be restaurants and cafes services, whereas the opponent’s services, other than

those of advertising or promotional services, trade agency services and business

management, could be categorized as wholesaling and retailing of various kinds of

food and drink. Putting aside for the purpose of the present decision the former and

just focusing on the latter of the applicant’s services, I think the opponent’s services

and the applicant’s services are different in that although food and drink is

indispensable to or at the very least important for both, they are indeed different kinds

of services beyond the mere provision of food and drink.

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27. Restaurant, according to some online dictionaries such as Oxford Advanced

Learner's Dictionary and Cambridge Advanced Learner's Dictionary, means “a place

where you can buy and eat a meal”; “a place where meals are prepared and served to

customers”. The primary meaning of “restaurant” is a place where meals are served

or provided and eaten. In common parlance restaurant service includes as an

important element the provision of waitress or catering service for providing the food

and drink which customers would consume at the premises, though the food and drink

could also be taken away for later consumption. Cafes, cafeterias and tea rooms all

point to smaller restaurants where lighter meals and drinks are served and/or sold, in

nature they are similar, if not the same, as restaurants.

28. On the other hand, wholesaling and retailing, even of food and drink, is of a

different kind of service. The case law constituted by Praktiker Bau- und

Heimwerkermärkte AG (Case C-418/02 of ECJ) and Oakley, Inc v Office for

Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) Case

T-116/06 clearly establishes that the objective of retail trade is the sale of goods to

consumers, which includes, in addition to the legal sales transaction, all activity

carried out by the trader for the purpose of encouraging the conclusion of such a

transaction, and that that activity consists, inter alia, in selecting an assortment of

goods offered for sale and in offering a variety of services aimed at inducing the

consumer to conclude the transaction with the trader in question rather than with a

competitor.

29. I am therefore of the view that restaurants and cafes services are in their

nature, intended purpose and method of use different from the wholesaling and

retailing of food and drink.

30. Mr. Wong submitted that the respective trade channels through which the

applicant’s services and the opponent’s services reached the market are the same or

similar, as shops offering bakery services are likely to be shops selling bread. Whilst

I agree that bakery is “a place where bread and cakes are made or sold”,2 the

applicant’s applied for services in this connection is “bakery services for the provision

of food” which falls within the category of restaurants and cafes services I discussed

2 Extracted from online Oxford Advanced Learner's Dictionary. Online Cambridge Advanced Learner's

Dictionary has “bakery” meaning “a place where bread and cakes are made and sometimes sold”.

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above. Just like the situation of a restaurant where food and drink may sometimes be

taken away for later consumption and hence restaurant service may be taken to

include a take-away service, a cafe may have a bakery section or corner that besides

providing consumers eating in the cafe with bread and cakes would also sell bread and

cakes to consumers who just walk in to buy and then take away the food and drink.

So it is a rather mixed-up situations, on one hand, cafes, cafeterias, tea rooms,

restaurants and places where bakery services for the provision of food is offered are

places whose principal or customary function is not to provide wholesaling and

retailing services in respect of food and drink, and their trade channels are generally

different from those of the wholesaling and retailing of food and drink, but since in

these places take away services may be provided, it could be said that certain parts of

the applicant’s services, or more specifically the retailing of food and drink, may take

place at the same or similar trade channels as those of the opponent’s services through

which they reach the market.

31. The further questions I have to ask is whether they are in competition with

each other, or are complementary.

32. “Complementarity” was defined by the General Court (“GC”) in Boston

Scientific Ltd v Office for Harmonization in the Internal Market (Trade Marks and

Designs) (OHIM) Case T-325/06:

“82 It is true that goods are complementary if there is a close connection between them, in

the sense that one is indispensable or important for the use of the other in such a way that

customers may think that the responsibility for those goods lies with the same

undertaking…”.

33. In Oakley, it is found that the relationship between the services provided in

connection with retail trade in respect of certain goods and the very goods themselves

is complementary:

“54. Clearly, in the present case, the relationship between the retail services and the goods

covered by the earlier trade mark is close in the sense that the goods are indispensable to or

at the very least, important for the provision of those services, which are specifically

provided when those goods are sold. As the Court held in para.34 of Praktiker Bau- und

Heimwerkermärkte, para.17 above, the objective of retail trade is the sale of goods to

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consumers, the Court having also pointed out that that trade includes, in addition to the legal

sales transaction, all activity carried out by the trader for the purpose of encouraging the

conclusion of such a transaction. Such services, which are provided with the aim of selling

certain specific goods, would make no sense without the goods.

55. Furthermore, the relationship between the goods covered by the earlier trade mark and

the services provided in connection with retail trade in respect of goods identical to those

covered by the earlier trade mark is also characterised by the fact that those services play,

from the point of view of the relevant consumer, an important role when he comes to buy

the goods offered for sale.

56. It follows that, because the services provided in connection with retail trade, which

concern, as in the present case, goods identical to those covered by the earlier mark, are

closely connected to those goods, the relationship between those services and those goods is

complementary within the meaning of paras 54 and 55 above. Those services cannot

therefore be regarded, as the applicant claims, as being auxiliary or ancillary to the goods in

question.”

34. As between restaurants and cafes, on the one hand, and the food and drink a

restaurant or a cafe may offer, on the other hand, it’s a goods-and-services situation, I

would say more or less the same things regarding their relationship and come to the

view that it is complementary. But between restaurants and cafes services and

wholesaling and retailing of food and drink, it is another story. I do not think a

family planning to go to a restaurant or cafe to take their meal there would on that

occasion also go to a purely retail place to buy the same kind of food and drink, so

they are in a sense competitive to each other.

35. Mr. Wong is also of the view that retailers of food and drink nowadays are

competitors to cafes, tea rooms and restaurants in that both offer ready-to-eat food and

drink, and he cited the examples of City Super, Oliver’s and Great as retailers of

ready-to-eat food and drink.

36. The foregoing present me with a dilemma: on the one hand, the analysis of

the different factors recommended by cases such as Canon Kabushiki Kaisha v

Metro-Goldwyn-Mayer Inc., British Sugar Plc v James Robertson and Sons Ltd and El

Corte Inglés v OHIM, which as I had carried out above, lead one naturally to say that

restaurants and cafes services in Class 43 and wholesaling and retailing of food and

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drink in Class 35 are dissimilar in nature and intended purpose; on the other hand, it is

noted that in general the respective services may also to a certain extent be in

competition with each other, and certain parts of the respective services, or as far as

retailing of food and drink is concerned, may share the same trade channels. Mr.

Wong further submitted that nowadays, some famous chain stores such as City Super,

Oliver’s, Great can be categorized as retailers of food and drink, and they all sell

ready-to-eat food or drinks just like restaurants or cafes do.

37. Before the hearing on 21 June 2017, I have caused the Registry to issue a

letter to the parties inviting Mr. Wong as counsel for the opponent to get prepared to

address me on whether the previous decision of the Trade Mark Registry on

“PANDA” Trade Mark (9 July 2015), in particular its paragraph 66 and the cases cited

therein, is compatible with Mr. Wong’s skeleton submissions filed for the hearing.

38. Paragraph 66 of “PANDA” Trade Mark reads:-

“66. One of the cited cases touches on three classes of goods/services in question. In

“JENSON’S FOODS” trade mark, by applying “THAI SPA” trade mark (supra),the

Opposition Division of the OHIM carried out a detailed comparison between Class 43

services (“providing food and drink, restaurants, … cafes and bars…”) and the

goods/services in Class 29 (“…vegetables, meat, poultry and game, …meat extracts”), Class

30(“pastry and confectionery”) and Class 35 (“retail services in relation to foodstuffs”). It

was held that the mere fact that foods and drinks were consumed in a restaurant was not

enough reason to find similarity between them. The opposing goods/services in the said

three classes were categorically found to be dissimilar to contested services in Class 43.

While recognising that some foodstuff producers did provide restaurant services under their

brands (e.g. coffee and coffee shops, ice cream and ice cream parlours, beer and pubs), the

Opposition Division was of the view that such was not an established custom in the trade

but rather applied only to economically successful undertakings. This seems to echo the

examples cited by Mr Lam that one or two local sizable and well-known supermarket chains

allegedly produce and market from time to time their own line of products and/or venture

into café and/or restaurant business under their own brand names (paragraph 44 above), but

as an exception rather than a norm. Such exception, however, does not give rise to

similarity between the Class 43 applied for services and the Opponent’s goods/services in

the said three classes.” (footnote omitted)

39. Noting that the above-quoted paragraph of PANDA took much into account

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European Union Intellectual Property Office (EUIPO) decisions, Mr. Wong cited,

aptly in my view, three more recent decisions of the EUIPO or judgment of the

General Court which came later than or around the same time as PANDA, namely, Yoo

Holdings Ltd v Office for Harmonisation in the Internal Market (Trade Marks and

Designs) (OHIM) (Case T-562/14, decision of the General Court of the European

Union, 4 June 2015); Alois Dallmayr Kaffee oHG v HK4 Group Limited (OHIM

Opposition Division Case No. B. 2 696 246, 25/05/2017) and HMV (Brands) Limited

v Hua Qian (OHIM Opposition Division Case No. B. 2 562 208, 20/06/2017), to

show that the issue is still developing.

40. In Yoo Holdings, the General Court was of the view that it is common

knowledge that providers of restaurant or catering services often make their own

pastries or chocolate products, and bakers or pastry chefs have developed catering

services and snacks, and providers of fast food or tea and coffee shops sell pastries,

chocolate products and non-alcoholic beverages under their own trade mark, hence

consumers may think that the responsibility for the manufacture of those goods and

the provision of those services lies with the same undertaking. I note, however, the

court was there comparing food stuff and drinks of Classes 29, 30 and 32 with

restaurant and catering services of Class 43.

41. In Alois Dallmayr Kaffee, the Opposition Division, in considering the

contested services in Class 43 of “provision of facilities for the consumption of food

and beverages”, acknowledged “The mere fact that food and/or drinks are essential to

the services of facilities such as restaurants, bars, cafeterias, etc. does not in itself lead

consumers to think that responsibility for the production of those goods and provision

of those services lies with the same undertaking (e.g. salt in restaurants)”, but it went

on to say, “On the other hand, consumers may think that responsibility lies with the

same undertaking if the market reality is that the provision of food and drink and the

manufacture of such goods are commonly offered by the same undertaking under the

same trade mark (e.g. coffee in their coffee shops, ice cream in their ice cream

parlours, beer in pubs).”

42. Similarly, the HMV (Brands) case expressed the view that “consumers may

think that responsibility lies with the same undertaking if the market reality is that the

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provision of food and drink and the manufacture of such goods are commonly offered

by the same undertaking under the same trade mark (e.g. coffee and the producers’

coffee shops, ice cream and the makers’ ice cream parlours, beer and the brewers’

pubs). In such cases, there is a low degree of similarity”. But the goods and

services in contest in that case were “coffee; coffee-based beverages; coffee essences”

in Class 30 and “self-service restaurants; cafés; hotel restaurant services” in Class 43.

43. Although the citing of the said three cases could not directly help the present

opponent given that they were not comparing directly restaurants and cafes services in

Class 43 with the wholesaling and retailing of food and drink in Class 35, they

nonetheless spur me on to consider from a wider perspective and ask whether the

market reality is that the provision of food and drink and the manufacture of such

goods are commonly offered by the same undertaking under the same trade mark. In

doing so, I have to acknowledge that, as the General Court in Yoo Holdings did, it is

common knowledge that providers of restaurant or catering services may make their

own pastries or chocolate products, and bakers or pastry chefs have developed

catering services and snacks, and providers of fast food or tea and coffee shops sell

pastries, chocolate products and non-alcoholic beverages under their own trade mark,

even though it is arguable this has become an established custom or a norm in the

trade, and whether this applies only to economically successful undertakings.

44. Having regard to the foregoing, on balance, I find that the applicant’s

restaurants and cafes services in Class 43 and the opponent’s services in wholesaling

and retailing of food and drink in Class 35 are similar to a certain degree.

Comparison of marks

45. According to consistent case law, in order to assess the degree of similarity

between the marks concerned, it is necessary to determine the degree of visual, aural

and conceptual similarity between them and, where appropriate, to determine the

importance to be attached to those different elements, taking account of the category

of goods or services in question and the circumstances in which they are marketed

(see Lloyd Schuhfabrik Meyer v Klijsen Handel, paragraph 27).

46. In addition, the global assessment of the likelihood of confusion must, as

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regards the visual, aural and conceptual similarity of the marks in question, be based

on the overall impression created by them, bearing in mind, in particular, their

distinctive and dominant components. The perception of the marks in the mind of

the average consumer of the goods or services in question plays a decisive role in the

global assessment of the likelihood of confusion (see Sabel BV v Puma AG, para 23;

Lloyd Schuhfabrik Meyer, para 25; and the order in P Matratzen Concord v OHIM

(Case C-3/03), para 29). In that regard, the average consumer normally perceives a

mark as a whole and does not proceed to analyse its various details (see Office for

Harmonisation in the Internal Market (Trade Marks and Designs) v Shaker di L.

Laudato & C. Sas, Limiñana y Botella, SL (C-334/05 P) [2007] E.C.R. I-4529 at [35]

and the case law cited).

47. Whilst the comparison must be made by examining each of the marks in

question as a whole, that does not mean that the overall impression conveyed to the

relevant public by a composite trade mark may not, in certain circumstances, be

dominated by one or more of its components (see OHIM v Shaker [2007] E.C.R.

I-4529 at [41] and the case law cited). It is only if all the other components of the

mark are negligible that the assessment of the similarity can be carried out solely on

the basis of the dominant element (OHIM v Shaker [2007] E.C.R. I-4529 at [42]).

Distinctive and dominant components of the opponent’s mark and the subject mark

48. For easy reference I just reproduce the subject mark and the opponent’s mark

below:-

(subject mark) (opponent’s mark)

49. I do not think it could be seriously disputed that “coffeesmith”, being

presented in one word and in conspicuous size and place of the subject mark, is its

distinctive and dominant component. The bold line beneath this word inscribing

with much smaller words which read “A friendly hangout”, as Mr. Wong submitted, is

too simple to evoke any particular concept for the average consumer, and I would add,

the words are just too fine and small, and a bit descriptive for restaurants and cafes

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services, to get any meaningful real-life notice.

50. The opponent’s mark, being presented in two words, has a slightly

descriptive nature due to the word “COFFEE” in relation to any coffee or

coffee-related products and services. But I would also say the same about

“coffeesmith”. I think people would perceive and remember the opponent’s mark as

a whole by the two-word phrase “coffee smith”. I would regard “COFFEE SMITH”

as the distinctive and dominant component of the opponent’s mark.

51. Putting aside the question of whether the marks have acquired an enhanced

degree of distinctive character through use, as the opponent’s evidence show little use

of the opponent’s mark and the applicant did not file any evidence in the proceedings,

I consider that both marks have inherent distinctiveness and the level thereof is more

or less the same.

Visual similarity

52. Visually speaking, the respective distinctive and dominant components of

the subject mark and the opponent’s mark are “coffeesmith” and “COFFEE SMITH”,

which, following my interpretation of consumer’s perception of “COFFEE SMITH”

as a phrase, and disregarding the triviality that one is in capital letters and the other in

small letters, are very similar. That leads to strong similarity between the marks

which is not much mitigated by the insignificance of the bold line inscribing with the

hardly noticeable and slightly descriptive words “A friendly hangout”. The overall

effect is that there is high degree of visual similarity between the opponent’s mark and

the subject mark.

Aural similarity

53. Aurally, both will be pronounced as “coffee smith”, and are virtually

identical.

Conceptual similarity

54. Conceptually speaking, it does not matter whatever “coffeesmith” or

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“COFFEE SMITH” means or could be perceived to mean, the marks are virtually

identical.

Likelihood of confusion

55. The global assessment that I am required to undertake implies some

interdependence between the relevant factors. Thus, a lesser degree of similarity

between those goods or services may be offset by a greater degree of similarity

between the marks, and vice versa.

56. It has been said that the more distinctive the earlier mark, the greater the risk

of confusion (SABEL, paragraph 24). Marks with a highly distinctive character,

either per se or because of the reputation they possess on the market, enjoy broader

protection than marks with a less distinctive character (see Canon, paragraph 18, and

Lloyd Schuhfabrik Meyer, paragraph 20). I do not find that the opponent’s mark has

acquired an enhanced degree of distinctive character, given that there is little evidence

of use of the mark in Hong Kong. I am of the view that both marks only have a

moderate degree of inherent distinctiveness given the descriptiveness in relation to

coffee products or services, though the levels of distinctiveness are more or less the

same.

57. I have found that visually the marks are highly similar to each other, and are

virtually identical from the aural and conceptual perspectives. This, however, has to

be set against the backdrop that the applicant’s restaurants and cafes services in Class

43 and the opponent’s services in wholesaling and retailing of food and drink in Class

35 are found to be similar only to a certain degree.

58. Mr. Wong submitted that even low degree of similarity of the services in

issue could be compensated by the high degree of similarity between the marks. I

agree that if there is at least some similarity between the goods or services,

independently of the marks in issue but depending upon objective criteria, as

confirmed in Tsit Wing, a lesser degree of similarity between the goods or services

may be offset by a greater similarity between the marks.

59. In the present case, the objective criteria is that food and drink is an integral

18

part of the whole of the applicant’s restaurants and cafes services as well as the

opponent’s wholesaling and retailing services, such that although the kinds of services

provided or required are as analyzed above different in nature, intended purpose and

method of use, nowadays some famous chain stores such as City Super, Oliver’s,

Great, as Mr. Wong submitted, can be categorized as retailers of food and drink, and

they all sell ready-to-eat food or drinks just like restaurants or cafes do; there are also

some food and drink producers which would provide cafe or restaurant services under

the same trade marks (e.g. coffee and the producers’ coffee shops, ice cream and the

makers’ ice cream parlours, beer and the brewers’ pubs), even though that is arguably

not an established custom or a norm in the trade but may applied occasionally and

only to economically successful undertakings.

60. Mr. Wong also emphasized the importance of aural similarity or identity of

the marks in respect of the services in issue as choices of the service providers may be

recommended by friends or heard over from radio advertising. I agree this is also a

factor to consider. Taking all circumstances into account, I am of the view that given

the strong similarity between the marks in issue, even though the inherent

distinctiveness of both marks are not high and the distinctiveness of the opponent’s

mark has not been shown to have been enhanced through use, I think there is

nonetheless high risk that consumers recognizing the opponent’s “COFFEE SMITH”

mark used in relation to the wholesaling and retailing of food and drink would upon

seeing the applicant’s “coffeesmith” being used on cafe or restaurant services think

that they come from the same or economically-linked undertakings as the opponent’s.

61. It follows that the ground of opposition under section 12(3) succeeds.

62. As I have found in favour of the opponent on the ground of opposition under

section 12(3) of the Ordinance in respect of all that is within the subject services of

the applicant’s, it is not necessary for me to go on to consider the other grounds of

opposition. Nonetheless, for completeness, I would go on to consider the only other

ground of opposition that had been argued, which is, that based on section 11(5)(b) of

the Ordinance.

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Section 11(5)(b)

63. Section 11(5)(b) of the Ordinance provides that a trade mark shall not be

registered if the application for registration of the trade mark is made in bad faith.

The term “bad faith” is not defined in the Ordinance.

64. In Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd [1999] R.P.C. 367

at 379, Lindsay J. said in relation to section 3(6) of the U.K. Trade Marks Act 1994

(equivalent to section 11(5)(b) of the Ordinance):

“I shall not attempt to define bad faith in this context. Plainly it includes dishonesty and,

as I would hold, includes also some dealings which fall short of the standards of acceptable

commercial behaviour observed by reasonable and experienced men in the particular area

being examined. Parliament has wisely not attempted to explain in detail what is or is not

bad faith in this context: how far a dealing must so fall-short in order to amount to bad faith

is a matter best left to be adjudged not by some paraphrase by the courts (which leads to the

danger of the courts then construing not the Act but the paraphrase) but by reference to the

words of the Act and upon a regard to all material surrounding circumstances.”

65. In Harrison v Teton Valley Trading Co (CHINAWHITE) [2005] F.S.R. 10, the

Court of Appeal in the United Kingdom said (at paragraph 26):

“The words “bad faith” suggest a mental state. Clearly when considering the question of

whether an application to register is made in bad faith all the circumstances will be relevant.

However the court must decide whether the knowledge of the applicant was such that his

decision to apply for registration would be regarded as in bad faith by persons adopting

proper standards.” (Emphasis added)

66. Further, in Ajit Weekly Trade Mark [2006] RPC 25, the Appointed Person

said,

“The subjective element of the test means that the tribunal must ascertain what the

defendant knew about the transaction or other matters in question. It must then be

decided whether in the light of that knowledge, the defendant’s conduct is dishonest judged

by ordinary standards of honest people, the defendant’s own standards of honesty being

irrelevant to the determination of the objective element.”

67. The position is further summarized in the following passage in Melly’s Trade

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Mark Application (Oppositions of Fianna Fail and Fine Gael) [2008] E.T.M.R. 41,

where it is said:

“53 The mental element required for a finding of bad faith has been much discussed. The

discussion has centred on the test for determining dishonesty in English law, that is to say

the “combined test” as explained by the House of Lords in Twinsectra Ltd v Yardley and

clarified by the Privy Council in Barlow Clowes International Ltd (In Liquidation) v

Eurotrust International Ltd. In her decision in Ajit Newspaper Advertising Marketing &

Communications Inc’s Trade Mark (No.2283796) Professor Annand considered whether

the “combined test” makes it necessary to give effect to the applicant’s belief in the

propriety of his own behaviour when deciding whether he applied for registration in bad

faith. She said not, on the basis that his own perception of propriety could not provide a

conclusive answer to the question whether he actually had applied for registration in bad

faith. I agree with her analysis. It supports the view that the relevant determination must

ultimately be made “on the basis of objective evidence” rather than upon the basis of

evidence as to the beliefs and opinions of the applicant with regard to the propriety of his

disputed application for registration. I note in this connection that in the Harrison v Teton

Valley Trading Co Ltd--CHINA WHITE the Court of Appeal upheld the Hearing Officer’s

finding of bad faith: (1) notwithstanding that the applicant for registration had deposed to

the fact that he “recognised no bad faith in my decision to develop and market the drink

CHINA WHITE” and was not cross-examined on the evidence he had given; and (2)

notwithstanding that the Registrar’s Hearing Officer had accepted the applicant’s evidence

and concluded that at the date of the disputed application for registration the applicant “saw

nothing wrong in his own behaviour”.” (footnotes omitted)

68. In essence, bad faith is a serious allegation that must be proved. An

allegation of bad faith should not be lightly made unless it can be fully and properly

pleaded and should not be upheld unless it is distinctively proved and this will rarely

be possible by a process of inference (ROYAL ENFIELD Trade Marks [2002] R.P.C.

24 at para. 31).

69. In the Amended Grounds of Opposition, the opponent merely pleads the bad

faith ground without any elaboration of the reason for it. The evidence, as I have

discussed at paragraphs 7 to 10 above, does not provide anything concrete that could

give hint to any bad faith.

70. Mr. Wong submitted that both the subject mark and the opponent’s mark

bear no descriptive meaning except for the word “coffee” in relation to “coffee”

21

related service, it is highly unlikely that the applicant would have come up with the

subject mark by coincidence. In saying so he probably relied on the following

passage taken from the local case 深圳市德力康電子科技有限公司 v

Joo-Sik-Hoi-Sa LG [2014] HKEC 530 which, at its paragraph 32, quoting the Mila

Schon case,3 said the following:- “In considering Mila Schon's application, the

Learned Recorder had said that although the onus was on the applicant for

rectification, where the devices as they ultimately became were so similar, a court

could be forgiven for concluding that one was derived from the other unless there was

acceptable evidence from the originator of the idea to the contrary”.

71. I am afraid I could not draw the adverse inference in the present case as the

Learned Recorder did in the Mila Schon case. First, the same or common element of

the marks in issue in the present case is not devices but words which, as Mr. Wong

acknowledged, has descriptive meaning as far as the word “coffee” in relation to

coffee-related services are concerned. I think it is common occurrence that the

chance of coincidence of similar words is higher than that of similar devices, in

particular if the words are in a sense descriptive of certain goods or services in

relation to which the marks in issue are put to use. Secondly, as far as the evidence

goes, there is nothing to show that the opponent’s mark has attained any goodwill or

reputation in Hong Kong.

72. Without any hint whatsoever, it would be wrong to jump to the conclusion

that the applicant has copied the opponent’s mark.

73. The ground of opposition under section 11(5)(b) must necessarily fail.

Conclusion

74. Nonetheless, as the opponent has been successful in this opposition under

section 12(3) of the Ordinance in respect of the whole of the applicant’s subject

services, I award the opponent costs. Subject to any representations, as to the

amount of costs or calling for special treatment, which either the opponent or the

applicant makes within one month from the date of this decision, costs will be

calculated with reference to the usual scale in Part I of the First Schedule to Order 62

3 Mila Schon Group SpA and Lam Fai Yung (t/a Tung Kwong Co) [1998] 1 HKLRD 682.

22

of the Rules of the High Court (Cap. 4A) as applied to trade mark matters, unless

otherwise agreed.

(Frederick Wong)

for Registrar of Trade Marks

19 December 2017