Hong Kong: "Honest Concurrent Use" as a Ground to Overcome the Refusal of Trademark Registration in Hong Kong

Last Updated: 4 January 2011

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 :-

  1. whether there has been an honest concurrent use of the mark applied for and the earlier mark;

  2. 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 :-

  1. the extent of use in time and quantity and the area of the trade ;

  2. 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 ;

  3. the honesty of the concurrent use ;

  4. whether any instances of confusion have in fact been proved ; and

  5. 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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions