Introduction
Honest concurrent use is one of the uncommon grounds a trademark applicant in Hong Kong can rely on to overcome an objection to a trademark registration that conflicts with, or would take unfair advantage of, or would be detrimental to, an earlier mark.
An example of "honest concurrent use" is when the owner of a mark has obtained registration but has never used or has very limited use of it. However, during the term of the registration, another person or company has honestly and concurrently used an identical mark in similar goods or products. May the person or company then rely on the ground of "honest concurrent use" to support its trademark application to the Registry if the application is rejected due to its potential conflict with the registered mark?
Two-stage analysis in C.S.S. Jewellery Company Limited v The Registrar of Trade Marks (HCMP 2602/2008)
The above case is about a very famous jewellery brand in Hong Kong, Chow Sang Sang. In this case, the three brothers (周禹初, 周冠岳 and 周少明) and their three half brothers ( 周君令, 周君廉 and 周君任) inherited the business of two famous trading names, namely, "Chow Sang Sang" and "周生生", from their father周芳譜 ("Mr Chow"). In 1946, Mr Chow made a Chinese will in which it was stipulated that "all my descendants may use the name "周生生" but they shall not allow outsiders to join in their businesses and shall not sell the name to others" (translation). After the death of Mr Chow, the three brothers and their half brothers set up two separate companies and continued running successful businesses by using "Chow Sang Sang" and "周生生"as integral and distinctive parts of their business names.
In 1994, the company of the three half brothers ("the Proprietor") registered a trademark which consisted of the words "A CORPORATE GIFT IDEA BY CHOW SANG SANG" arranged in an oval, with the word "GOLD" and the Chinese character "金" in bigger fonts in the centre under Class 14 for gold pendants, gold medallions, gold pins and gold shields. The appellant, the company of the three brothers, subsequently applied for trademark registration of "Chow Sang Sang" under Classes 14 and 35 relying heavily on the ground of "honest concurrent use", the registration was rejected by the Registrar.
When determining whether registration should be allowed on the basis of honest concurrent use, the Hong Kong High Court applied a two-stage test :-
- whether there has been an honest concurrent use of the mark
applied for and the earlier mark;
- if the answer to (1) is in the affirmative, whether after
considering all relevant circumstances, including public interest,
the Registrar of the Trade Marks Registry has discretion to accept
the application for registration of the mark, despite the fact that
the use of the mark in relation to the goods or services in
question "is likely to cause confusion on the part of the
public".
Stage (1) involves an examination of the factual evidence of use, concurrent use as well as the honesty of the concurrent use.
When considering whether there was actual use of the trademark "Chow Sang Sang" by the appellant, the court found that the appellant had used and concurrently used the mark on its price tags and gold bullions. Although the mark was used together with the other mark "粵港澳湛周生生", it did not mean that the two were used together as a composite mark and there is no law against a trader applying more than one mark to his goods. Given that the three brothers and their half brothers were given authorities by their father to use the trademark "Chow Sang Sang" and their companies have been concurrently using the mark since then, the court found that honesty was not in issue.
In stage (2), the following factors as stated in the case of Alex Pirie and Sons Limited's Application (1933) 50 RPC 146 were considered :-
- the extent of use in time and quantity and the area of the
trade ;
- the degree of confusion likely to ensue from the resemblance of
the marks which is to a large extent indicative of the measure of
public inconvenience ;
- the honesty of the concurrent use ;
- whether any instances of confusion have in fact been proved ;
and
- the relative inconvenience which will be caused if the mark is
registered.
The court identified the issue lying at the heart of the matter is the likelihood of confusion to the public if registration is allowed. Since the three brothers and their half brothers had been using similar marks in the recent years, the possible confusion between goods and services supplied had existed for a long time, it would clearly be distinguished from a case where the registration of a mark may lead to confusion that did not exist before. Having considered the evidence as a whole and the aforesaid factors, the court allowed the appeal on the basis of honest concurrent use.
Conclusion
There are only a few cases in Hong Kong which succeeded in relying on the ground of "honest concurrent use" to overcome an objection to trademark registration. This is possibly due to the heavy burden on an applicant to satisfy the tests applied by the court.
The above is only intended to be a summary and does not purport to be a complete report on the case. Lawyers in our Intellectual Property Department will be happy to provide you with a copy of the above decision and assist you with any queries you may have on the any Intellectual Property registration, enforcement or advice matter.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
