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Keywords: Registrar of Trade Marks, trademark,
registration, Hong Kong, Trade Marks Ordinance
Case Summary
In a recent opposition case, the Registrar of Trade Marks held
that the Applicant acted in bad faith by applying to register
"SOLOVE 雪狼湖" as a
trademark in various classes of goods and services, a decision
favourable to the producer of the local musical
雪狼湖 (or the Opponent)who does not
have "雪狼湖" registered as
a trademark in the same classes of goods and services but has
succeeded to defend the mark from third parties' registration
on the basis of the fame and reputation in the musical name
雪狼湖 accrued in Hong Kong. The
Opponent has demonstrated reputation and goodwill through use of
the name 雪狼湖 on souvenirs
(T-shirts, windbreaker, mouse pads, binoculars, mugs, watches,
telephone cards) and music CDs with an impressive sales of 240,000
copies in Hong Kong and over 600,000 copies worldwide.
The application knocked down by the opposition was filed on 13
May 2006, the relevant date for the Registrar to consider the
merits of the opposition. The musical
雪狼湖 was first staged in Hong Kong
on 28 March 1997 for 43 consecutive shows. The musical was then
performed seven shows in Singapore from 21 November 1997. The
mandarin version of the show was staged in over 20 provinces in
China between December 2004 and January 2006 for 54 shows and
during this interim period, six shows were staged in Hong Kong. The
musical was also performed in Zhengzhou Province of China, where
the Applicant resides.
Decision
The Registrar ruled the opposition in favour of the Opponent
under section 11(5)(b) of the Trade Marks Ordinance which provides
that an application to register a trade mark shall be rejected if
it is made in bad faith. The English case law suggests that
"bad faith includes dishonesty and 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". The Registrar held that the Applicant had
knowledge of the existence of the Opponent and its mark at the time
he filed the application to register the opposed mark and the
Applicant's intention to ride on the fame and reputation of the
Opponent's trademark and the musical
雪狼湖 is clear, and such behaviour
on the part of the Applicant would be seen as an act of bad faith
by those applying the reasonable man test.
Significance
It is a welcoming decision to owners of unregistered trade marks
and trade names whose rights may be usurped or taken unfair
advantage of by third parties in bad faith. It is believed that
well-known or legendary movie and musical titles would be entitled
to equivalent protection and recognition. From our experience, the
Registry generally imposes a high burden for the claimant to prove
the element of bad faith. The facts of the present case are
peculiar. If the Applicant had filed the application in 2011
instead of in May 2006, the Registrar might not have been so
liberal to extend the Common Law protection to the musical title
雪狼湖 given the musical was last
shown in 2006.
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Mayer Brown International LLP, a limited liability partnership
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This article provides information and comments on legal
issues and developments of interest. The foregoing is not a
comprehensive treatment of the subject matter covered and is not
intended to provide legal advice. Readers should seek specific
legal advice before taking any action with respect to the matters
discussed herein. Please also read the JSM legal publications
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