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					TRADE MARKS ORDINANCE (Cap. 559)

APPLICATION NO.              : 301655875

MARK                         :



APPLICANT                    : BOTANI AUSTRALIA PTY LIMITED

CLASS                        : 3

____________________________________________________________________


STATEMENT OF REASONS FOR DECISION


Background

1.   On 5 July 2010, Botani Australia Pty Limited (“the applicant”) filed an application
     for registration of the mark shown below (“the subject mark”) under the Trade
     Marks Ordinance (Cap.559) (“the Ordinance”).




2.   Registration of the subject mark is sought in Class 3 in respect of the following
     goods (“the applied-for goods”):

         “Non medicated toilet preparations; cosmetics; non-medicated preparations and
         substances all for the care of the skin, face, lips, body, hair and scalp; skincare products;
         natural skincare products; skincare preparations; non-medicated natural preparations
         and substances all for the care of the skin, face, lips, body, hair and scalp; creams and
         lotions for the skin; non-medicated products and preparations for topical treatment of
         skin dryness, oiliness, chapping, blemishes and irritations; non-medicated skin care and
         treatment products and preparations containing botanical extracts; skin cleansing,
         hydrating, moisturising, protecting, freshening, softening, soothing, firming and toning
         creams, lotions, gels, balms, serums, scrubs, washes, oils and mists; essences for skin



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         care; skin emollients; massage preparations; after-shave; deodorants; antiperspirants;
         shampoos and conditioners; hair care treatments; exfoliants; scrubs; salt scrubs; facial
         scrubs; body scrubs; foot scrubs; balms; hair balms; skin balms; lip balms; foot balms;
         body lotions; body washes; cosmetic eye treatments.”


3.   At the examination stage, objection was taken to the subject application under
     section 12(3) of the Ordinance by virtue of the following registered trade mark (“the
     cited mark”) :


         Cited Mark


         Trade mark           :
         Registration no.     :     300951868
         Date of registration :     11 September 2007


     The cited mark is registered in respect of “soaps; perfumes, colognes, eau de toilette,
     essential oils; non-medicated toilet preparations; skin creams and lotions,
     preparations for the bath and shower, talcum powders; preparations for the hair,
     dentifrices; anti-perspirants, deodorants for personal use; cosmetic products, facial
     cleanser, body lotion, facial cream, facial masque, skin exfoliating preparation,
     makeup remover, non-medicated makeup to cover acne, lipstick, sunscreen, bar
     soap, hair shampoo, hair conditioner, toothpaste, non-medicated acne control cream,
     lip moisturizer, facial sunscreen, body wash, body lotion, body sunscreen, body
     soap, hand cleanser, hydrating tinted nourishing moisturizer, oil-free tinted
     nourishing moisturizer, skin whitening cream for day and night, hair styling gel” in
     Class 3 (“the cited goods”).


4.   In order to overcome the above citation, the applicant filed a statutory declaration of
     Barbara Filokostas dated 2 September 2011 (“the Filokostas Declaration”) for
     establishing honest concurrent use of the subject mark and the cited mark. Despite
     the filing of such evidence, the objection under section 12(3) was maintained.


5.   The applicant requested a hearing on the registrability of the subject mark. The
     hearing took place before me on 20 April 2012, at which Mr. Philips Wong, counsel,
     instructed by Messrs. Fairbairn Catley Low & Kong, appeared for the applicant. I
     reserved my decision at the conclusion of the hearing.



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6.    In addition to the evidence filed during the examination stage, the applicant filed a
      statutory declaration of Lau Fun Yi dated 11 April 2012 (“the Lau Declaration”) with
      a view to showing that there has been honest concurrent use of the subject mark and
      the cited mark under section 13 of the Ordinance.


The Ordinance

7.    Section 12(3) of the Ordinance reads as follows :

     “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.”


8.    As to the meaning of “earlier trade mark” as referred to in section 12(3), the relevant
      part of section 5 of the Ordinance states :

       “(1) In this Ordinance, “earlier trade mark”, in relation to another trade mark, means –
         (a)        a registered trade mark which has a date of application for registration earlier than
                    that of the other trade mark, taking into account the priorities claimed in respect
                    of each trade mark, if any…”


       The date of application for registration of the cited mark is earlier than that of the
       subject mark. The cited mark therefore constitutes an “earlier trade mark” in
       relation to the subject mark for the purpose of section 5 of the Ordinance.


9.    Another section to consider is section 7(1) of the Ordinance which throws light on
      how subsection (c) of section 12(3) is to be interpreted. It provides that :

              “For greater certainty, in determining for the purposes of this Ordinance whether the
              use of a trade mark is likely to cause confusion on the part of the public, the Registrar
              or the court may take into account all factors relevant in the circumstances, including
              whether the use is likely to be associated with an earlier trade mark.”




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10. The provisions on honest concurrent use can be found in section 13 of the Ordinance,
    which states :

         “(1) Nothing in section 12 (relative grounds for refusal of registration) prevents the
         registration of a trade mark where the Registrar or the court is satisfied-
                (a) that there has been an honest concurrent use of the trade mark and the earlier trade
                mark or other earlier right; or
                (b) that by reason of other special circumstances it is proper for the trade mark to be
                registered.
         (2) The registration of a trade mark under or by virtue of subsection (1) shall be subject to
         such limitations and conditions as the Registrar or the court thinks fit to impose.
         (3) Nothing in this section prevents the Registrar from refusing to register a trade mark on
         any of the grounds mentioned in section 11 (absolute grounds for refusal of registration).”


Section 12(3) of the Ordinance

11. Section 12(3) essentially precludes a mark from registration if the use of it is likely
    to cause confusion on the part of the public, as a result of its being similar to an
    earlier trade mark and that it is sought to be registered in respect of goods or services
    the same as or similar to those registered under the earlier trade mark. I must
    therefore consider whether there are similarities between the subject mark and the
    cited mark and between the goods covered by the two trade marks which would
    combine to create a likelihood of confusion.


12. The basic principles regarding the assessment of similarity between marks and the
    likelihood of confusion between them are set out in the cases of Sabel BV v Puma
    AG [1998] RPC 199, Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV
    [2000] FSR 77 and Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1999]
    RPC 117 and adopted in Guccio Gucci SpA v Gucci [2009] 5 HKLRD 28. These
    principles are:

          (a)       The likelihood of confusion must be appreciated globally, taking account
                    of all the relevant factors.

          (b)       The matter must be judged through the eyes of the average consumer of
                    the goods in issue, who is deemed to be reasonably well informed and



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              reasonably observant and circumspect.

        (c)   In order to assess the degree of similarity between the marks concerned
              one must determine the degree of visual, aural or conceptual similarity
              between them and, where appropriate, evaluate the importance to be
              attached to those different elements taking into account the nature of the
              goods in question and the circumstances in which they are marketed.

        (d)    The visual, aural and conceptual similarities of the marks must therefore
               be assessed by reference to the overall impressions created by the marks
               bearing in mind their distinctive and dominant components. The
               perception of the marks in the mind of the average consumer plays a
               decisive role in the overall appreciation of the likelihood of confusion.

        (e)    The average consumer normally perceives a mark as a whole and does
               not proceed to analyze its various details.

        (f)    There is a greater likelihood of confusion where the earlier trade mark
               has a highly distinctive character, either per se or because of the use that
               has been made of it.

        (g)    The average consumer 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; further the average consumer’s level of
               attention is likely to vary according to the category of goods in question.

        (h)    Appreciation of the likelihood of confusion depends upon the degree of
               similarity between the goods. A lesser degree of similarity between the
               marks may be offset by a greater degree of similarity between the goods,
               and vice versa.

        (i)    Mere association, in the sense that the later mark brings the earlier mark
               to mind, is not sufficient for the purpose of the assessment.

        (j)    But the risk that the public might believe that the respective goods come
               from the same or economically linked undertakings does constitute a
               likelihood of confusion within the meaning of the section.


Comparison of marks




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13. A comparison of the marks concerned has to be based on an overall appreciation of
    the visual, aural and conceptual similarities of the marks in question, taking into
    account the overall impressions given by the marks, and bearing in mind, in
    particular, their distinctive and dominant components.


14. In comparing the marks, I shall consider the perception of the marks in the mind of
    the average consumer of the goods in question. The applied-for goods are general
    cosmetic, hygienic and personal care products which can be used by everyone on a
    daily basis. The relevant consumers are therefore members of the general public in
    Hong Kong who are deemed to be reasonably well informed and reasonably
    circumspect and observant.


15. It was the applicant’s case that the subject mark was visually, aurally and
    conceptually dissimilar to the cited mark, as evinced in the following aspects:


     (a) Visually, the subject mark consists of 6 characters and a leaf device whereas the
         cited mark is constituted by a word with 9 alphabets. In the case of the subject
         mark, the first character is a “β” (beta) which is a Greek alphabet, and the
         fourth character contains an acute accent above the alphabet “a” (“á”). For the
          cited mark which is made up of two components “Botani” and “Zen”, the
          component “Zen” is distinguishing and distinctive and cannot be ignored.
          There is also a leaf device in the subject mark which is absent in the cited mark.


     (b) Aurally, the subject mark consists of 3 syllables whereas the cited mark
         contains 4 syllables. The average consumer will stress on the last syllable
         “Zen” when pronouncing the cited mark.


     (c) Conceptually, both the subject mark and the cited mark bear no recognized
         meaning, but the existence of the component “Zen” at the end of the cited mark
         generates an impression that it is related to the school of Buddhism.


16. I take a different view from that of the applicant. Visually speaking, both the
    subject mark and the cited mark contain the same word “Botani”, each of which has
    the first letter (i.e. “B”) in capital form and the remaining letters (i.e. “-otani”) in
    smaller case. I have not overlooked the presence of the word “Zen” in the cited



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    mark, but the word “Botani” occupies the frontal part of the cited mark and it has
    been recognized that consumers generally pay greater attention to the beginning of a
    mark than to the end (L’Oreal SA v Office for Harmonization in the Internal Market
    (Trade Marks and Designs) [2009] ETMR 48 (“SPA THERAPY”), at paragraph 30).
    In terms of relative prominence, the word “Botani” in the cited mark is also longer
    and more eye-catching than the word “Zen”. Despite the applicant’s submission
    that the first character of the subject mark is a Greek alphabet “β” and there is an
    accent above the alphabet “a”, these subtle differences will unlikely be noticed by
    consumers who normally perceive a mark as a whole and do not proceed to analyze
    its various details (see paragraph 12(e) above) and the overall impression cast by the
    subject mark remains to be the word “Botani”. As word speaks louder than device,
    consumers’ focus would unlikely be drawn to the leaf device which will primarily be
    seen as a decorative sign. Viewing the subject mark and the cited mark as wholes, I
    find that there is a considerable degree of visual resemblance between the two
    marks.


17. Aurally, I consider that the subject mark would be pronounced as “BO – TA – NI”
    whereas the cited mark would be referred in speech as “BO – TA – NI – ZEN”. In
    other words, the first three syllables of the respective marks, which contribute
    significantly towards the overall pronunciations of the marks, are identical. It has
    also been observed in many cases that the first syllable of a word mark is generally
    the most important, due to “the tendency of persons using the English language to
    slur the terminations of words” (London Lubricants Ltd’s Application (1925) 42
    RPC 264, followed in Glaxo Group Ltd v Neon Laboratories Ltd [2004] FSR 46).
    In the instant case, there is a possibility that the ending “-ZEN” will be dropped or
    neglected by the average consumer when he refers to the cited mark verbally. Even
    if the final syllable “ZEN” will be articulated, there is still a certain degree of
    similarity in the overall pronunciations of the two marks. With these points in mind,
    I consider that the subject mark and the cited mark are similar from a phonetic
    perspective.


18. Conceptually, both the words “Botani” and “BotaniZen” have no dictionary meaning.
    Thus, there is no conceptual difference between the two words which enables the
    average consumer to distinguish the subject mark from the cited mark by their
    meanings. The leaf device also adds nothing to the idea of the subject mark
    because it merely signifies the natural ingredients of the applied-for goods. In view



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     of the strong resemblance between the two marks in terms of spelling and visual
     appearance, the average consumer upon seeing the subject mark on the applied-for
     goods would readily call to mind the cited mark on first impression.


19. There is another point calling for consideration – that is – the applicant’s contention
    as to the distinctiveness of the word “Zen”. According to Collins English Dictionary
    (Millennium Edition), “Zen” refers to “a Japanese school, of 12th-century Chinese
    origin, teaching that contemplation of one’s essential nature to the exclusion of all
    else is the only way of achieving pure enlightenment”. To my mind, the word
    “Zen” in the cited mark is apparently not descriptive of applied-for goods, but it
    cannot be said to have a particularly strong distinctive character in relation to the
    applied-for goods such as natural skincare products and skin protecting, freshening,
    softening, soothing, firming and toning creams, lotions, gels etc because it may
    appeal to the pure and natural ingredients of the applicant’s goods or the relaxing and
    refreshing effects brought about by those goods. So the question is whether the
    existence of this “Zen” element in the cited mark will outweigh the overall similarity
    between the two marks arising from the commonality of the word “Botani” so as to
    make the cited mark distinguishable from the subject mark. In my view, it will not.


20. In SPA THERAPY (supra), the Court of First Instance of the European Communities
    found that the mark “SPA THERAPY” was confusingly similar to the earlier trade
    mark “SPA” in relation to various goods in Class 3. It was held that although the
    word “THERAPY” is a term which is not descriptive of cosmetic products, it does
    not have a particularly strong distinctive character with respect to those goods 1 and
    “the differences between the signs as a result of the presence of the word
    “THERAPY” in the mark applied for are not such as to outweigh the significant
    similarities between the signs at issue resulting from the presence of the earlier mark
    at the beginning of the mark applied for and from the independent distinctive role
    that it has there” 2 . The court also noted that “cosmetic manufacturers frequently
     put several lines of products on the market under different sub-brands” and “the fact
     that the mark applied for consists of the earlier mark “SPA” followed by the word
     “THERAPY” could lead consumers to believe that it relates to a line of products
     marketed by the [proprietor of the earlier mark]” 3 .

1
  Paragraph 31
2
  Paragraph 33
3
  Paragraph 32



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21. Turning to the subject application, I am of the view that the embodiment of the word
    “Botani” constituting the subject mark in the cited mark “BotaniZen” will lead the
    consumers to believe that the subject mark and the cited mark are different
    sub-brands relating to different lines of products provided by the same or
    economically-linked traders. Taking into account the visual, aural and conceptual
    similarities between the subject mark and the cited mark as well as the differences
    between them as a whole, and bearing in mind the perception of the average
    consumer of the goods in question, I find the subject mark and the cited mark to be
    substantially similar to each other.


Comparison of goods


22. In British Sugar v James Robertson and Sons Ltd [1996] RPC 281(at pages 296-7),
    Mr. Justice Jacob (as he then was) found that the following factors were relevant in
    considering whether or not there is similarity in the goods and services at issue.
    The factors are :
    (a)      The respective uses of the respective goods or services;
    (b)      The respective users of the respective goods or services;
    (c)      The physical nature of the goods or acts of services;
    (d)      The respective trade channels through which the goods or services reach the
             market;
    (e)      In the case of self-serve consumer items, where in practice they are
             respectively found or likely to be found in supermarkets and in particular
             whether they are, or are likely to be, found on the same or different shelves;
             and
    (f)      The extent to which the respective goods or services are competitive. This
             inquiry may take into account how those in trade classify goods, for instance
             whether market research companies, who of course act for industry, put the
             goods or services in the same or different sectors.


23. It was also held in Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (supra)
    that in assessing the similarity of the goods or services concerned, all the relevant
    factors relating to those goods or services themselves should be taken into account.
    Those factors include, inter alia, their nature, their end users and their method of use
    and whether they are in competition with each other or are complementary.



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24. At the examination stage, it was pointed out to the applicant that the applied-for
    goods were similar to the cited goods. The applicant did not make any counter
    arguments at the hearing on this point.


25. Bearing in mind the various factors listed in paragraphs 22-23 above, I find that:


     (a) “Non medicated toilet preparations; cosmetics; non-medicated preparations and
         substances for the care of the skin, face, lips and body; skincare products;
         natural skincare products; skincare preparations; non-medicated natural
         preparations and substances for the care of the skin, face, lips and body; creams
         and lotions for the skin; non-medicated products and preparations for topical
         treatment of skin dryness, oiliness, chapping, blemishes and irritations;
         non-medicated skin care and treatment products and preparations containing
         botanical extracts; skin cleansing, hydrating, moisturising, protecting,
         freshening, softening, soothing, firming and toning creams, lotions, gels, balms,
         serums, scrubs, washes, oils and mists; essences for skin care; skin emollients;
         massage preparations; after-shave; exfoliants; scrubs; salt scrubs; facial scrubs;
         body scrubs; foot scrubs; balms; skin balms; lip balms; foot balms; body lotions;
         body washes; cosmetic eye treatments” of the applied-for goods are identical or
         similar to “soaps; essential oils; non-medicated toilet preparations; skin creams
         and lotions, preparations for the bath and shower, talcum powders; cosmetic
         products, facial cleanser, body lotion, facial cream, facial masque, skin
         exfoliating preparation, makeup remover, non-medicated makeup to cover acne,
         lipstick, sunscreen, bar soap, non-medicated acne control cream, lip moisturizer,
         facial sunscreen, body wash, body lotion, body sunscreen, body soap, hand
         cleanser, hydrating tinted nourishing moisturizer, oil-free tinted nourishing
         moisturizer, skin whitening cream for day and night” of the cited goods;


     (b) “Non-medicated preparations and substances for the care of hair and scalp;
         non-medicated natural preparations and substances for the care of hair and scalp;
         shampoos and conditioners; hair care treatments; hair balms” of the applied-for
         goods are identical or similar to “non-medicated toilet preparations;
         preparations for the hair; hair shampoo, hair conditioner, hair styling gel” of the
         cited goods; and




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     (c) “Deodorants; antiperspirants” of the applied-for goods are identical or similar to
         “perfumes, colognes, eau de toilette, anti-perspirants, deodorants for personal
         use” of the cited goods.


26. In consequence, I consider that there is either an identity or a high degree of
    similarity between the applied-for goods and the cited goods.


Likelihood of confusion


27. Under section 12(3), likelihood of confusion refers to confusion on the part of the
    public as to the trade origin of the goods in question. This is a matter of global
    appreciation taking into account all relevant factors and judging through the eyes of
    the average consumer of the goods at issue.


28. As the applied-for goods are general consumer items, the relevant consumers of
    these goods are ordinary members of the public in Hong Kong. Given that the
    applied-for goods are not necessarily expensive and they are often used and
    replenished by consumers on a regular and frequent basis, the average consumer
    would merely exercise a moderate degree of care and attention in the purchase of
    such products. It should also be noted that the average consumer seldom directly
    compares marks side by side but rely upon his imperfect recollection of marks.


29. In addition, in assessing the likelihood of confusion, I have to be mindful of the
    principle established in the case of Canon Kabushiki Kaisha v
    Metro-Goldwyn-Mayer Inc. (supra) that a lesser degree of similarity between the
    marks may be offset by a greater degree of similarity between the goods or services,
    and vice versa. In the instant case, it is not disputed that there is either an identity
    or a high degree of similarity between the applied-for goods and the cited goods.


30. Having regard to the visual, aural and conceptual similarities between the subject
    mark and the cited mark, and the identity and high degree of similarity in the goods
    involved, bearing in mind the principles set out in paragraph 12 above and all
    relevant factors, I consider that when the subject mark is used in relation to the
    applied-for goods, the average consumer would be confused into believing that the
    respective goods provided under the subject mark and the cited mark come from the
    same or economically-linked undertakings. In the premises, the registration of the



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    subject mark is objectionable under section 12(3) of the Ordinance.


Section 13(1) of the Ordinance

31. Although the registration of the subject mark is objectionable under section 12(3) of
    the Ordinance, registration should nonetheless be allowed if I am satisfied that there
    has been honest concurrent use of the subject mark and the cited mark or there are
    other special circumstances justifying the registration of the subject mark under
    section 13(1) of the Ordinance.


32. According to Re CSS Jewellery Co. Ltd. [2010]2 HKLRD 890 at 901, the assessment
    of honest concurrent use under section 13(1)(a) of the Ordinance entails a two-stage
    determination, which is:


         (1) whether there has been an honest concurrent use of the mark in suit and the
         earlier trade mark;


         (2) If the answer to (1) is in the affirmative, whether after considering all
         relevant circumstances, including public interest, the Registrar's discretion
         should be exercised 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.


33. The applicant’s evidence for honest concurrent use comprises the Filokostas
    Declaration and the Lau Declaration (collectively, the “Declarations”). The
    Filokostas Declaration includes 12 exhibits and they are numbered as “BF-1” to
    “BF-12”, whereas the Lau Declaration includes 42 exhibits and they are numbered
    as “JL-1” to “JL-42”.


34. Having considered the Declarations and all the relevant circumstances of the case, I
    am prepared to find that there has been honest concurrent use of the subject mark
    and the cited mark in respect of the following goods (“the accepted goods”):

         “Non medicated toilet preparations; non-medicated preparations and substances for the
         care of the skin, face, lips and body; skincare products; natural skincare products;
         skincare preparations; non-medicated natural preparations and substances for the care




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         of the skin, face, lips and body; creams and lotions for the skin; non-medicated products
         and preparations for topical treatment of skin dryness, oiliness, chapping, blemishes and
         irritations; non-medicated skin care and treatment products and preparations containing
         botanical extracts; skin cleansing, hydrating, moisturising, protecting, freshening,
         softening, soothing, firming and toning creams, lotions, gels, balms, serums, scrubs,
         washes, oils and mists; essences for skin care; skin emollients; massage preparations;
         after-shave; deodorants; shampoos; exfoliants; scrubs; salt scrubs; facial scrubs; body
         scrubs; foot scrubs; lip balms; body lotions; body washes; cosmetic eye treatments.”


35. In respect of the remaining items of the specification, namely “cosmetics;
    non-medicated preparations and substances for the care of hair and scalp;
    non-medicated natural preparations and substances for the care of hair and scalp;
    antiperspirants; conditioners; hair care treatments; balms; hair balms; skin balms;
    foot balms” (“the objected goods”), the case for honest concurrent use is not
    established. Simply put, there is hardly any evidence to show that the subject mark
    has been used in relation to the objected goods.


36. When questioned about this at the hearing, the applicant’s counsel suggested that
    “cosmetics” in the specification was similar to the skin care products traded by the
    applicant, whereas “balms” was similar to lotions. He argued that the objected
    goods are sold at the same points of sale and are of the same categories as those of
    the applicant’s goods. In my view, the applicant’s attempt to draw a parallel
    between identifying the extent of honest concurrent use and the question of
    similarity between the goods claimed and the goods verified is flawed, because the
    issue of similarity simply does not arise in the context of section 13(1)(a) of the
    Ordinance. To allow an applicant to register a mark which would likely give rise to
    confusion with an identical or similar mark on the basis of honest concurrent use,
    very clear and specific evidence has to be filed in support. In the present
    application, use of the subject mark in respect of the objected goods has not been
    verified. None of the exhibits contained in the Declarations shows use of the
    subject mark on the objected goods at all. That being the case, the first limb of the
    two-stage determination in Re CSS Jewellery Co. Ltd. must be answered in the
    negative. It follows that the applicant has failed to establish a case of honest
    concurrent use of the subject mark and the cited mark under section 13(1)(a) of the
    Ordinance in relation to the objected goods.




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37. As a fallback submission, counsel for the applicant also addressed me on the issue of
    other special circumstances under section 13(1)(b) of the Ordinance. The heart of
    this submission is that the applicant, being the antecedent user of the subject mark
    which was created much earlier than the cited mark, should in all fairness be entitled
    to register the subject mark despite the subsequent registration of the cited mark.


38. Pursuant to section 13(1)(b) of the Ordinance, if by reason of other special
    circumstances it is proper for a trade mark to be registered, the objection under
    section 12 can be overcome.


39. In paragraph 34 above, I have allowed registration of the subject mark on the basis
    of honest concurrent use of the subject mark and the cited mark in respect of the
    goods for which the subject mark has been used. In respect of the objected goods
    for which the subject mark has never been used, I do not see there exists any special
    circumstances which would otherwise justify the registration of the subject mark.
    Thus, I cannot allow the subject mark to be registered in respect of the objected
    goods on the ground of other special circumstances.


Conclusion

40. I have considered all the oral and written submissions made by the applicant in
    respect of the subject application. For the reasons stated above, the subject mark is
    precluded from registration under section 12(3) of the Ordinance in respect of the
    objected goods. The application for registration of the subject mark in respect of
    those goods is accordingly refused under section 42(4)(b) of the Ordinance.


41. As I find that there has been honest concurrent use of the subject mark and the cited
    mark in respect of the accepted goods, the application for registration in respect of
    those goods can proceed to publication, provided that the applicant files, on or
    before 9 July 2012, a Form T5A to restrict the specification to the accepted goods
    only. If the applicant fails to do so by 9 July 2012, it will be deemed to have
    abandoned the application.


(Ryan Ng)
for Registrar of Trade Marks
7 June 2012



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