Introduction

In general, the registration of a trade mark would only be refused on relative grounds if it is considered, among others, that the applied-for goods or services are similar to those covered by a similar earlier mark (except the case of a well-known trade mark). What about the registration of a trade mark which is similar to an earlier mark, but applied-for in a class different? Does it necessarily mean that the goods or services are not similar and the registration of the trade mark would not be refused on relative grounds?

A recent case Megahong Pharmaceutical Company (a firm) v 醫藥易有限公司 [2023] CFI 930 provides a well-illustrated example that registration of a trade mark may still be refused on relative grounds even if the earlier mark covers a different class, provided that the applied-for goods/services are complementary to the goods/services covered by the earlier mark.

The relevant trade mark application and earlier mark

In this case, the Applicant filed an application for registration of the mark “金佛水” (the “Subject Mark”) under the specification of Class 35 for the following services:

“Wholesale and retail of medicines for human use; sales agency services for medicines and pharmaceuticals; retail and wholesale of medicines and medical supplies; sales of Chinese medicine, health food and Ganodermaceae family products; retail and wholesale of proprietary Chinese and western medicines, Chinese and western pharmaceuticals, Chinese and western medicines, cosmetics, skin care products, medicinal sprays, medicinal fumigants, medicinal soap products, food, health food and beverages; product promotion services for others, import and export agents, import and export agents for medical nutrition food, import and export agents, wholesale and retail for medical western herbal health food; advertising, organizing commercial advertising or advertising exhibitions, organizing technical exhibitions; all of the above are included in Category 35.”

The Opponent is the owner of an earlier mark “大佛水” (the “Earlier Mark”) which was registered under the specification of Class 5 for the following goods: “Chinese herbal medicine for treatment of allergic rhinitis; all included in Class 5” (the “Earlier Goods”).

Decision of the Registrar of Trade Marks

The Opponent opposed the registration of the Subject Mark on the ground of section 12(3) of the Trade Marks Ordinance (Cap. 559). In comparing the similarity of goods/services when deciding the opposition, the hearing officer stated the general legal principle that all factors relevant to the goods/services must be considered, including their respective uses, users, physical natures and trade channels and the extent to which the respective goods/services are competitive or complementary to each other.

Goods and services are only complementary for the purposes of trade marks law where they are closely connected, in the sense that one is indispensable or important for the other in such a way that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing such services.

In respect of the specifications which relate to wholesale, retail and sale of medicines and pharmaceuticals (the “Rejected Services”) of the applied-for services, the hearing officer held that although they are different from the Earlier Goods in terms of their natures and uses, they are nevertheless complementary with the Earlier Goods. Also, the services and the goods are usually provided/sold in the same place and target the same general public. Hence, the Rejected Services are similar to the Earlier Goods. Use of the Subject Mark in respect of the Rejected Services would result in likelihood of confusion and hence the application of the Subject Mark in respect of the Rejected Services was rejected.

The hearing officer allowed the registration of the Subject Mark in respect of the specifications which relate to sale of health foods and beverages, medical fumigants, medicinal soap products, cosmetics and skin care products (the “Objected Services Type 1”) because such services are not complementary to the Earlier Goods, and have different trade channels from those of the Earlier Goods.  Accordingly, they are not similar goods and services.

In respect of the remaining specifications of the applied-for services relating to, inter alia, product promotion, import and export and advertising services (the “Objected Services Type 2”), the hearing officer was of the view that they are not relevant to the wholesale and retail services.  Hence, the Objected Services Type 2 are not complementary to the Earlier Goods and will not be provided or sold in the same places, and hence they are not similar goods and services.

The Opponent appealed against the Decision with respect to the Objected Services Types 1 and 2. The appeal focused on the narrow issue about comparison of the goods and services concerned.

Are the Earlier Goods and the Objected Sales Services similar?

The Opponent complained that the hearing officer erred in finding that the Earlier Goods and part of the Objected Services Type 1 are dissimilar.  The complaint did not cover sale of cosmetics and skin care products but only those relevant to health foods and beverages, medical fumigants and medicinal soap products (the “Objected Sales Services”).

The Court accepted the Opponent’s complaint that the hearing officer had made an error in finding that the Objected Sales Services would not generally be provided or sold at the same locations as those of the Earlier Goods. In fact, the contrary should be the case because all the Objected Sales Services concern goods are medicated or medicinal goods and health foods and drinks with the same purpose of healing, curing and improving one’s health. In particular, a lot of Chinese medicines and pharmaceuticals are made from natural ingredients, and the general consumers may not be able to differentiate between medicinal goods on the one hand and health goods on the other.

The Court further held that the Earlier Goods and the Objected Sales Services clearly share the same sales and distribution channels. As the difference between medicinal and health foods may not be so apparent, they may be placed in the same shelf or nearby shelves. Confusion would result if the Applicant were to use the Subject Mark for operating the wholesale and retail services of health food.

While each case turns on its own facts, the Court considered the earlier decision of the Registrar in “天行健 HUMANFUEL” Mark to be relevant to the present case.  In that decision, the applicant applied for registration of a mark for “food for babies; dietary supplements for humans and animals” in Class 5 while the opponent had registered an earlier mark for “distributorship; importing and exporting of pharmaceutical preparations, Chinese medicines, health products and health food”. In allowing the opposition, the hearing officer observed that these two goods/services are complementary to each other and the public may believe that the undertaking which provides the earlier services is the same as the undertaking providing the applied-for goods.

Are the Earlier Goods and the Objected Agency Services similar?

The Opponent also complained that the hearing officer erred in finding that the Earlier Goods and some of the Objected Services Type 2, namely product promotion services for others and import and export agents for medical nutritional food and herbal health food, are dissimilar.

In accepting the Opponent’s complaint in this regard, the Court cited the EU case of Muñoz Arraiza v OHIM, which held that there is a close link between any products and its marketing activities which includes import and export services.  The dicta in “天行健 HUMANFUEL” is also applicable.  The Court held that the relevant public is likely to believe that the Applicant, which provides the services of importing and exporting of health products under the Subject Mark if the registration is allowed, is the same or a connected undertaking with the Opponent which sells the Earlier Goods which are some kind of Chinese herbal medicine.

Likelihood of confusion

Because of the similarity between the Earlier Mark and the Subject Mark and the similarity between the Earlier Goods, the Objected Sales Services and the Objected Agency Services, the Court observed that the public may believe that the Objected Sales Services and the Objected Agency Services come from the same or economically-linked undertakings as the Earlier Goods.

On the basis of the above, the Court allowed the appeal and refused the registration of the Subject Mark for the Objected Sales Services and the Objected Agency Services.

Takeaway

This case demonstrates that even if a mark in an application covers goods/services in a class different from that of a similar earlier mark, registration of the subject mark may still be refused on relative grounds if the applied-for goods/services are complementary to those goods/services covered by the earlier mark.

Typical examples of such complementary goods/services include any products and its marketing activities or any products and its wholesale or retails services. However, each case depends on its facts. When in doubt, you are always advised to consult an intellectual properties lawyer.

 

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Important: The law and procedure on this subject are very specialised 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.

Published by ONC Lawyers © 2023