The Paradox of TVB's Ownership of the "HKTV Trade Marks"

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When one speaks of “HKTV”, what comes to the mind would likely be the broadcaster commonly known as Hong Kong Television which has undergone a roller-coaster ride in the recent television broadcast licensing saga. It is therefore most surprising that the party which trade mark application for “HKTV” has just been accepted by the Hong Kong Trade Marks Registry is none other than its competitor, Television Broadcasts Limited (“TVB”). This article looks at the seeming abnormality which sheds light on the current trade marks law and practice.

Background The widely publicised application by television operators Hong Kong Television Network Limited (“HKTV”), Fantastic Television Limited (Fantastic TV) and Hong Kong Television Entertainment Company Limited (HKTVE) (respectively related to I-CABLE and Now TV) for Hong Kong domestic free television programme service licence and the rejection by the Hong Kong Government of HKTV’s application on 15 October 2013 was the subject of much controversy and heated public discussion during the past few months. Subsequent to the rejection, HKTV has announced that they have plans to challenge the Government’s decision by judicial review. After the acquisition of the mobile television network ultimately owned by state-owned China Mobile Hong Kong Company Limited, HKTV plans to launch its channels in 2014. The eventual outcome of the broadcasting battle between HKTV and other existing and future free television broadcasters, including TVB, waits to be seen. TVB’s trade mark registration of HKTV On 22 November 2013, TVB’s trade mark applications for registration of three marks, all of which incorporate its tricolour device:-

1.          “ ”;

2.          “ width=”; and

3.          “

respectively (“Marks”) were accepted for registration and published by the Hong Kong Trade Marks Registry (“Registry”). These applications were made on 20 May 2013, after HKTV officially applied for free television programme service licence in 2010. It transpires that TVB has also made application for registration of these marks: –

1.          “ ”;

2.          “ width=”; and

3.          “

in plain typeface on 13 March 2013, which are currently being examined by the Registry. It is not immediately obvious as to whether the Marks are currently in use by TVB, although the latter is commonly known to the public as TVB, or referred to by the name of its different channels, Jade Channel, Pearl Channel, J2 Channel, iNews Channel, or HD Jade. However, whether a mark is in use has limited bearing on whether the corresponding trade mark application may proceed to registration. Under the Hong Kong trade marks law, an application can be made on “intent to use” basis. Although it seems puzzling that TVB is able to assume ownership of the trade marks consisting of “HKTV”, “HONG KONG TELEVISION” or “香港電視” which HKTV appears to have a more legitimate claim to ownership, the successful registration of the Mark by TVB is not mystery but in fact sheds light on the applicable trade marks law and the examination standard in Hong Kong. After a trade mark application is filed by the applicant, it undergoes both formality and substantial examination by the Registry. The latter involves examining the application on both absolute and relative grounds, that is, whether the Mark is inherently registrable, and whether there exist prior identical or similar trade mark applications and/or registrations in relation to identical or similar goods or services that would pose as barrier to the present application. Where the prior marks or goods/services are only similar, not identical, objection would be raised only if there is a likelihood of confusion. TVB’s HKTV Trade Marks  The Marks consist of TVB’s tricolor device “” and word elements: (1) the letters “HKTV”, (2) the English words “HONG KONG TELEVISION”, or (3) the Chinese characters “香港電視” which means “Hong Kong Television”. The word elements would likely to be perceived by the general public to refer to “Hong Kong Television”. According to the Trade Marks Ordinance (Cap. 559), trade marks which consist exclusively of signs which may serve, in trade or business, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or rendering of services, or other characteristics of goods or services shall not be registered, unless if before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it. A trade mark application for the mere word element “HKTV”, “HONG KONG TELEVISION”, or “香港電視” alone, is likely to be refused by the Registry as designating the geographical origin and characteristics of services, short of sufficient proof of use of the marks. Generally speaking, use for 5 years prior to application is required. As the Mark is also composed of TVB’s tricolor device which has been registered since 1982 (at least for Class 16 goods), the Mark is not consisting exclusively of descriptive wordings thus was not refused on the ground of inherent registrability. On the other hand, turning to relative grounds examination, it appears that the Mark was accepted for registration notwithstanding the existence of a prior mark registered by HKTV “ width=” (in series) which consists of the stylised letters “HKTV” and a human brain/speech bubble device. The goods/services designated and protected by the Marks and HKTV’s mark are slightly different. The Marks are designated in respect of, inter alia, the goods of printed matter in Class 16, broadcasting services in Class 38, on-line computer services in Class 42 and licensing of digital data in Class 45. As for HKTV’s mark, it is registered in relation to, inter alia, television entertainment and publication services in Class 41. However, the difference in specifications is not the reason for their co-existence as prior marks in relation to identical and/or similar goods/services would also be cited. In this connection, reference can be sought from the Trade Mark Work Manual published by the Registry which provides guidance to both practitioners and the general public alike on various areas of its practice, including the similarity of goods/services. According to the Registry’s Cross Search Lists, services in Class 41 are cross-searched against TVB’s applications covering goods and services in Classes 16 and 38 which indicates that these goods and services are considered similar. Comparison of Marks That leaves only the comparison of marks to provide explanation for their co-existence.  Two marks are considered identical where the latter reproduces, without any modification or addition of all the elements constituting the earlier trade mark. As the Marks contain the additional tricolour device “”, they would not be considered identical marks to HKTV’s mark “ width=”. The applicable test is therefore, whether they are similar marks and whether there is a likelihood of confusion considering their respective goods/services. The oft-cited case of Sabel BV v Puma AG [1998] RPC 199 laid down a test of “global appreciation” of the likelihood of confusion, that the global appreciation of the visual, oral or conceptual similarity must be based on the overall impression give by the marks, bearing in mind their distinctive and dominant components. As the letters “HKTV” would be understood by the general public to mean “Hong Kong Television” and considered descriptive of the designated goods/services and non-distinctive of the trade origin, the comparison of marks should be made against the distinctive parts of the marks, namely, the tricolor device in the Mark and the brain/bubble device in HKTV’s mark, which are apparently visually and conceptually distinctive from each other. It is therefore no mystery that the Marks were accepted for registration by the Registry. However, currently the Marks have yet been officially registered. It was published by the Registry for opposition purpose and any person may within 3 months from the date of publication oppose the application by giving notice to the Registrar of Trade Marks. Whether the Marks will ultimately be registered would depend on whether any opposition is filed and the outcome of opposition proceedings, if any. Closing Remarks The foregoing serves to illustrate the intention of the trade marks law to avoid monopoly of a trader over relatively descriptive and non-distinctive words and/or devices as its trade mark, which sometimes creates difficulty from marketing and advertising perspective. However, if one such trader is able to show that the mark has been in use and has acquired distinctiveness, the mark shall be registrable as a result of use.

 
IMPORTANT:
The law and procedure on this subject are very specialized and complicated. This article is just a very general outline for reference and cannot be relied upon as legal advice in any individual case. If any advice or assistance is needed, please contact our solicitors.
 
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Published by ONC Lawyers © 2013