trade marks ordinance (cap. 559) opposition to trade … · 2014-05-23 · appraisals of diamonds,...

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TRADE MARKS ORDINANCE (Cap. 559)

OPPOSITION TO TRADE MARK APPLICATION NO. 301346841

MARK:

CLASSES:

16, 36, 42

APPLICANT: GEMOLOGY HEADQUARTERS INTERNATIONAL, LLC

OPPONENT: GEMOLOGICAL INSTITUTE OF AMERICA, INC.

STATEMENT OF REASONS FOR DECISION

Background

1. On 20 May 2009, Gemology Headquarters International, LLC (the

“applicant”) filed an application (the “subject application”) under the Trade Marks

Ordinance, Cap. 559 (the “Ordinance”) for registration of the following mark:-

(“The subject mark”).

2. Registration is sought in respect of the following goods and services

(“subject goods and services”) in Classes 16, 36 and 42:-

Class 16

Certificates of authenticity and certificates of grading for diamonds, gemstones, pearls

and jewelry; certificates; printed certificates; printed award certificates.

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Class 36

Appraisals of diamonds, gemstones, pearls and jewelry.

Class 42

Gemological services, namely, providing identification, authentication, and grading of

diamonds, gemstones, pearls and jewelry, and issuing certificates related to such

grading; inscriptions on diamonds and gemstones (gemological services); precious

metal assaying.

3. Particulars of the subject application were published on 21 August 2009.

On 20 January 2010, Gemological Institute of America, Inc. (the “opponent”) filed a

Notice of opposition attached with a Statement of Grounds of Opposition. That

Statement of Grounds of Opposition was later deemed to have been replaced with an

Amended Statement of Grounds of Opposition filed on 1 March 2010 (“Grounds of

Opposition”).

4. The opposition hearing took place before me on 20 November 2013. Ms.

Mok Yee Ting of ONC Lawyers represented the applicant. Mr. Sebastian Hughes of

Counsel, instructed by DLA Piper, represented the opponent.

Grounds of Opposition

5. In the Grounds of Opposition, the opponent opposes registration of the

subject mark under sections 11(1)(b) and (c), 11(5)(b), 12(3), 12(4) and 12(5)(a) of

the Ordinance. A Schedule attached to the Grounds of Opposition lists out the trade

marks relied upon by the opponent in launching the opposition against the subject

application. That Schedule is reproduced in this decision as Annex 1 hereto.

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Counter Statement

6. The applicant filed a Counter Statement on 20 April 2010, denying all the

grounds of opposition.

Preliminary issues

7. An issue arose just days before the hearing on 20 November 2013. The

issue was raised by the applicant in ONC Lawyers’ letter to the Registrar dated 8

November 2013, alleging that the Statutory Declaration of Seung-Hae Moon dated 2

March 2012, which forms part of the opponent’s evidence, made reference to a

settlement agreement and contained related materials which were made on a without

prejudice basis, as such the statutory declaration should be amended by re-execution

in order that all reference and materials in that regard would be removed. In the said

letter, ONC Lawyers further suggested that the hearing officer assigned for the

hearing should be changed to another one who had not previously perused the

evidence.

8. DLA Piper’s letter in reply came to the Registrar on 15 November 2013.

They disagreed that the alleged materials in the Statutory Declaration of Seung-Hae

Moon were privileged, and submitted that the same were admissible as evidence in

the proceedings. They also disagreed that there should be a change of the hearing

officer.

9. The Registrar issued a letter on 18 November 2013 indicating that the above

two issues cannot be determined without giving full opportunity to the parties to

address the hearing officer, hence they would be dealt with as preliminary issues at the

scheduled hearing before substantive hearing of the proceedings is to take place.

10. As it turned out, at the hearing on 20 November 2013 Ms. Mok of ONC

Lawyers representing the applicant agreed not to further pursue the two issues upon

my preliminary indication that the subject matters of the alleged materials, as

mentioned in the Statutory Declaration of Seung-Hae Moon, appeared not relevant to

the core issues of these proceedings. The hearing of the case then proceeded

accordingly.

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The opponent’s evidence in support

11. The opponent’s evidence in support comprises a statutory declaration of

Seung-Hae Moon dated 20 January 2011 (“Moon’s statutory declaration”) and a

statutory declaration of Robert Frank dated 14 January 2011 (“Frank’s statutory

declaration”).

12. Ms. Seung-Hae Moon has been employed by the opponent for over 30 years,

acting as its Managing Director (for Asia Pacific) since 2007. The facts she deposed

to in her statutory declaration are from her personal knowledge or from the opponent’s

records, and she has been duly authorized by the opponent to make the statutory

declaration in these proceedings.

13. According to Ms. Moon, Mr. Robert M. Shipley founded the Gemological

Institute of America in 1931 in Los Angeles, the United States of America, which was

incorporated in October 1943 under the laws of the State of Ohio. The opponent,

which got the current name in January 1999, is a result of a series of mergers of a

number of corporations which focused on different streams of the gem industry.

From Moon’s statutory declaration, it seems the merger had involved the following

entities and their subsequent merged entities:- the said Gemological Institute of

America founded in 1931, GEM Instruments incorporated in 1976 which later

changed name to GIA Gem Instruments, Gem Trade Laboratory incorporated in 1978

which later changed name to GIA Gem Trade Laboratory.

14. The Gemological Institute of America had adopted “GIA” and “Gemological

Institute of America” as the corporation’s house marks since its foundation. It

follows that the opponent is alleged to have first used the trade marks “GIA” and

“Gemological Institute of America” in 1931 and has used the marks continuously

since then in the United States of America for goods in Class 16 goods. It is also

alleged that these opponent’s marks have been and continue to be used in relation to

grading services for precious gems in Class 36 and services in respect of services of

grading precious gems and gemological services, identifying, grading, registering and

inscribing precious gems and pearls identification in Class 42 since as early as 1996 in

Hong Kong. For the purposes of all the latter discussions, the opponent’s marks

including the marks “GIA” and “Gemological Institute of America” are hereinafter

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loosely and collectively referred to as the “GIA Trade Marks”.

15. Moon’s statutory declaration is painstaking in showing that Hong Kong is

among one of the places in the world where the GIA Trade Marks have a long and

extensive history of use. For example, Exhibit-D and Exhibit-E to Moon’s statutory

declaration contain copies taken from the quarterly magazine “Gems & Gemology”

allegedly showing use of the GIA Trade Marks. It is alleged that the magazine has

been in distribution to key members of the Hong Kong jewelry community from 1977

through to today. Exhibit-F contains what is said to be a list of the Hong Kong

subscribers to the magazine, with their personal data redacted.

16. Ms. Moon alleged that the GIA Trade Marks had been used in the United

States since 1931 for services in respect of correspondence courses in the field of

gemology. Exhibit-H contains copies of the 1958 course materials and 1986 Lab

Manual. It is said that in 1980, the opponent provided the first one-week gemology

classes in Hong Kong and Singapore. Exhibit-I to Exhibit K contain copy computer

printout showing classes taught in Hong Kong from 1980 to 1988, a list of 1995-2000

Hong Kong courses and monthly enrolment, a summary of enrolment, copy of a

diploma awarded by the opponent to a Hong Kong student, and enrollment figures for

the residence classes and courses in Hong Kong over the years. It is alleged that the

GIA Trade marks were used on course materials and other handouts given to student,

as well as on brochures and catalogs advertising gemology classes and soliciting

students to enroll in these courses since 1980.

17. Ms. Moon further said that in July 1994, the opponent licensed certain right

to Gemological Institute of America – Hong Kong as licensee for promotion,

marketing and solicitation of enrolments in distance education courses, extension

classes and seminars of instruction in jewelry sales, gemology and jewelry

manufacturing arts offered and taught by the opponent under the GIA Trade Marks.

Exhibit-L is copy of the licence agreement, and copies of the letterhead, business

cards, envelopes, writing pad, etc. used by the licensee since 1994 were exhibited in

Exhibit-M. Exhibit-N contains copies of brochures and catalogs using the GIA

Trade Marks and distributed by the licensee since 2003; Exhibit-O shows the Hong

Kong enrolment figures and worldwide enrolment figures of the extension classes

since 1980.

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18. Moon’s statutory declaration gives the gross revenue figures for educational

services provided under the GIA Trade Marks in Hong Kong for 2003-2010. Except

for the year 2003, the rest all have an annual gross revenue between US$1,000,000

and 2,000,000.

19. Exhibit-Q shows the numbers of grading reports issued to customers in

Hong Kong each year since 1996 to 2007. Exhibit-R contains sample diamond

grading reports and explanations about grading reports from the opponent’s website.

The annual figures of the gross revenue for diamond or precious gem grading

laboratory services rendered by the opponent under the GIA Trade Marks to clients in

Hong Kong for 2004-2010 are shown to be in the region between US$2,496,133 in

2004 to US$8,072,300 in 2010, with a peak in 2008 at US$9,664,767. Exhibit-S

contains copies of various invoices issued by the opponent in that connection.

20. The opponent established its new laboratory and diamond grading facility in

Hong Kong in 2010. Although this took place a bit after the subject application was

filed in 2009, there were other preceding promotional activities of the opponent’s

goods and services in Hong Kong, as evidenced by Exhibit-U to Exhibit-Y. I do not

propose to go into detail here but would refer to the relevant ones as and when

appropriate.

21. Mr. Robert Frank has been the owner, President and Founder of Illuminor

LLC (“Illuminor”) which was retained by the solicitors for the opponent to provide

data to support the oppositions in these proceedings. Frank’s statutory declaration,

as well as the various exhibits attached to it, was made with large chunks of it being

devoted to detailing Mr. Frank’s qualifications and professional profile, awards and

honours received by him, his research methodology and training practice, features of

the database he would use – all that having no direct relevance to the issues of these

proceedings. I am conscious that this tribunal should not get caught up in the thick

of these and lost sight of the main issues, and I do not propose to summarize them

here.

22. Having said that, it is noted that search results conducted on the internet as

well as on the database known as Dialog in respect of words such as “Gemological

Institute”, “GIA”, “Gemological Headquarters International”, “GHI”, or combinations

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of these words with “Hong Kong”, are set out in Exhibits “C” to “F” to Frank’s

statutory declaration. Claiming to be basing on these results, Mr. Frank formed the

following opinions:-

(1) The acronym GIA is strongly associated with the corporate name Gemological

Institute of America;

(2) The acronym GIA is more often used than is the full company name of the

Gemological Institute of America;

(3) The acronym GIA has a long association in Hong Kong with the company

Gemological Institute of America;

(4) GIA/Gemological Institute of America is the leader and most frequently

referenced business in the world that is involved in the diamond grading industry;

(5) There appears no brand association of the acronym GHI with the company

Gemological Headquarters International anyway in the world with respect to

magazine and newspaper stories or articles in magazines, professional

publications, journals, etc.;

(6) The acronym GHI does not appear to be associated with the jewelry business in

Hong Kong.

The applicant’s evidence

23. The applicant’s evidence comprises a statutory declaration of Nachum

Krasnianski dated 24 June 2011 (“Krasnianski’s statutory declaration”). Mr.

Krasnianski is the President of the applicant since the founding of the company in

January 2006. Mr. Krasnianski has thirty years of experience in lab work related to

the field of gemology and has operated and owned gem laboratories in the United

States of America since 1986, Canada since 2002 and India since 2007. The facts he

deposed to in his statutory declaration are from his personal knowledge or from the

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applicant’s books and records, and he has been duly authorized by the applicant to

make the statutory declaration in these proceedings.

24. In gist, according to Krasnianski’s statutory declaration, the applicant is a

corporation organized and existing under the laws of Delaware with offices in the

United States of America and India. The applicant operates advanced laboratories

specializing in identification, grading and certification of diamonds and research

services. It is claimed that the applicant is a leader in gemological and research

services and offers gemological services comprising identification, authentication and

grading of diamonds and jewellery under the applicant’s mark, which he identifies to

be the subject mark.

25. It is also alleged that the applicant has offered a variety of basic and

advanced education programs in the field of gemology under the subject mark in India.

A list of education programs offered by the applicant in India are given in

Krasnianski’s statutory declaration.

26. The applicant also offered certificates of authenticity as well as certificates

of grading of diamonds, gemstones, pearls and jewellery under the subject mark. It

is alleged that certificates offered under the subject mark have been available in the

US and India since 2007, exhibit “NK-3” to Krasnianski’s statutory declaration is said

to contain copies of representative gem identification reports produced by the

applicant in the ordinary course of business in association with its goods and services.

27. Exhibit “NK-4” is said to contain copies of representative gem identification

cards produced by the applicant and transferred to its customers in the ordinary course

of its business since 2007 in the US and in India. Exhibits “NK-5” and “NK-6” are

said to contain copies of representative brochures and pamphlets distributed by the

applicant.

28. A book entitled “Laboratory-grown Diamonds” by Branko Deljanin and

Dusan Simic, which explains the different methods used to grow diamonds and

educates about the characteristics to be observed in examining laboratory grown

diamonds with standard gemological equipment, is alleged to have been published by

the applicant under the subject mark. Copy of the book is exhibited as “NK-7” to

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Krasnianski’s statutory declaration. Exhibit “NK-8” is said to contain printout of

EGL Canada’s website which advertised the book in Canada, and exhibit “NK-9”

contains printout from the applicant’s website which is said to have been available

since 2007. Exhibit “NK-10” contains copies of pictures of a representative business

card stationery and redacted invoice of the applicant.

29. The rest of Krasnianski’s statutory declaration deal with the alleged

co-existence of the subject mark with the opponent’s marks in the United States of

America and the applicant’s other marks in other jurisdiction. I do not propose to

summarize them here.

30. There is attached an expert report of Carole E. Ghaski as exhibit “NK-19” to

Krasnianski’s statutory declaration. Carole E. Ghaski, a PHD, prepared the report on

behalf of the applicant in respect of the lack of linguistic similarities of the GHI mark

and other representative trade marks of the opponent.

The opponent’s evidence in reply

31. The opponent’s evidence in reply comprises another statutory declaration of

Seung-Hae Moon dated 2 March 2012 (“Moon’s second statutory declaration”), a

statutory declaration of Dr. Arthur McNeill dated 2 March 2012 (“McNeill’s statutory

declaration”), a statutory declaration of Albert Chan dated 1 March 2012 (“Chan’s

statutory declaration”), a statutory declaration of Ephraim Zion dated 6 March 2012

(“Zion’s statutory declaration”) and a supplemental statutory declaration of Robert

Frank dated 27 February 2012 (“Frank’s supplemental statutory declaration”).

32. Moon’s second statutory declaration was filed as evidence in reply to the

applicant’s evidence, namely, Krasnianski’s statutory declaration, casting doubt on

many of the claims made by Mr. Krasnianski as discussed above. I do not propose to

summarize the points here but would refer to the relevant parts only as and when

appropriate.

33. Dr. Arthur McNeill is the Director of the Language Centre, Hong Kong

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University of Science and Technology. He has over 40 years of experience in

English language teaching, second language vocabulary, language awareness and

policy, of which more than 20 of those years were in Hong Kong. McNeill’s

statutory declaration is expressed to be offered in reply to the expert report of Carole

E. Ghaski (which is exhibit as “NK-19” to Krasnianski’s statutory declaration). I do

not propose to summarize the contentious points between the two expert views here

but would refer to the relevant parts as and when appropriate in the latter discussions.

34. Mr. Chan Hiu-Sang, Albert, who made Chan’s statutory declaration, is an

Executive Director of Chow Tai Fook Jewellery Group Limited and a director of

Chow Tai Fook Jewellery Co., Ltd. (the two companies are referred to collectively as

“Chow Tai Fook”). Mr. Chan has his career in the diamond and jewellery business

started in 1977 when he joined Chow Tai Fook as a diamond procurement staff.

Drawing on his considerable experience in grading and procuring diamonds, he

testified to the use and reputation of the GIA Trade Marks. I do not propose to

summarize his testimony here but would refer to the relevant parts as and when

appropriate.

35. Mr. Ephraim Zion is the Managing Director of Dehres Limited which is a

Hong Kong based company in the jewellery and diamond industry. Mr. Zion’s

career in the diamond and jewellery business started in 1960 when serving an

apprenticeship as a diamond cutter in a diamond factory in Isreal. Having

accumulated significant experience in procuring and dealing in diamonds and

precious gems, and recognizing the demand for large certified diamonds in Asia, Mr.

Zion came to Hong Kong in 1971 and set up his own diamond and gem business.

Dehres is a company he founded in 1985. He testified to the use and reputation of

the GIA Trade Marks. I do not propose to summarize his testimony here but would

refer to the relevant parts as and when appropriate.

36. The supplemental statutory declaration of Robert Frank was made only to

rectify certain minor technical deficiencies of Frank’s statutory declaration. There is

nothing significant of that.

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Findings on goodwill and reputation of the GIA Trade Marks

37. The opponent oppose registration of the subject mark under sections 11(1) (b)

and (c), 11(5)(b), 12(3), 12(4) and 12(5)(a) of the Ordinance. At the hearing, Mr.

Sebastian Hughes, counsel for the opponent, made it clear that the opponent would

only be proceeding on sections 11(5)(b), 12(3), 12(4) and 12(5)(a). I would

therefore treat the opposition based on the other pleaded grounds as no longer being

pursued by the opponent.

38. Mr. Hughes said in the opponent’s skeleton argument that the opponent

relies on its registered trade marks in Hong Kong as listed in the Schedule to the

Grounds of Opposition (see Annex 1) and the goodwill and reputation in these marks.

That has connotations of the opposition being premised in large part on sections 12(3),

12(4) and 12(5)(a) of the Ordinance where the opponent’s marks must be assessed

with reference to any enhanced distinctive character, or reputation and goodwill, that

it has acquired or generated. It is convenient for me to first investigate the evidence

and make the relevant findings in this connection.

39. I have outlined the opponent’s evidence in support of the opposition in

paragraphs 11 to 22 above. In gist, evidence is produced to show that the opponent

has been using the GIA Trade Marks, namely, “GIA” and “Gemological Institute of

America”, since 1931 in the United States of America for goods in Class 16, and in

relation to grading services for precious gems in Class 36 and services in respect of

services of grading precious gems and gemological services, identifying, grading,

registering and inscribing precious gems and pearls identification in Class 42 since as

early as 1996 in Hong Kong.

40. From the various exhibits to Moon’s statutory declaration, there is no doubt

about the use of the GIA Trade Marks or related marks by the opponent in the US as

well as in Hong Kong as claimed. The following is extracted from the 2001 issue of

the quarterly magazine “Gems & Gemology” (Exhibit-E to Moon’s statutory

declaration) where the GIA Trade Marks featured:-

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41. That magazine is said to have been in distribution to key members of the

Hong Kong jewelry community from 1977 through to the present. Exhibit-F to

Moon’s statutory declaration is produced to support this.

42. The mark or marks were used in Hong Kong more directly in residence

classes and courses being run here. The marks reproduced below are extracted from

the letterhead, business cards, envelopes, writing pad, etc. exhibited in Exhibit-M:-

43. The one appearing on the left above also appears in the brochures and

catalogs (exhibited in Exhibit-N) distributed by the opponent’s Hong Kong licensee.

On the last page of the brochure, which lists the opponent’s campuses over the world

including Hong Kong, the mark or marks below appear at the top corner of the page:-

44. It seems the marks being used in Hong Kong are more or less the same as

the marks used by the opponent in the US and over the world. More importantly, the

marks in use always come together – in the manner as shown by the various pictures

above. But first it must be identified that the following three marks are always in

use together: (1) the logo which has a crown-like outer layer with the words

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“GEMOLOGICAL INSTITUTE OF AMERICA” and the word “KNOWLEDGE”

displaced concentrically in it (the “Opponent’s Logo”), (2) the mere word mark

“GEMOLOGICAL INSTITUTE OF AMERICA”, and (3) the letter mark “GIA”.

The three marks are always put together such that the Opponent’s Logo is on the left,

and the “GIA” together with the “GEMOLOGICAL INSTITUTE OF AMERICA” on

the right, with the “GIA” usually on top of or go before the “GEMOLOGICAL

INSTITUTE OF AMERICA”. I am aware of the picture on the right under

paragraph 40, where “GEM TRADE LABORATORY” was used in place of

“GEMOLOGICAL INSTITUTE OF AMERICA”. Given the corporate history of

the opponent as given in paragraph 5 of Moon’s statutory declaration (which I

summarized in paragraphs 13 and 14 above), in particular the fact that the opponent

was the result of various mergers that took place over a long span of time, it’s not

surprising to find in some cases or occasions that this is so. Nevertheless, taking all

the materials exhibited by Moon’s statutory declaration into consideration, I find a

pattern of use of the marks, as discussed above, has been clearly established.

Moreover, beneath “GIA” and “GEMOLOGICAL INSTITUTE OF AMERICA” on

the right of such a combination of marks, there are usually descriptive words which

give information about the locality or the occasion or event in which the marks are

being used. I shall hereinafter refer to this way of use of the three said marks

alongside certain descriptive words to be the “GIA Trade Marks Combination”.

45. The GIA Trade Marks Combination also appear in all the grading reports

issued to customers in Hong Kong and the promotional activities of the opponent in

Hong Kong and elsewhere. In view of the gross revenue figures for educational

services provided under the GIA Trade Marks in Hong Kong for 2003-2010, the

numbers of grading reports issued to customers in Hong Kong each year since 1996 to

2007, the annual figures of the gross revenue for diamond or precious gem grading

laboratory services rendered by the opponent under the GIA Trade Marks

Combination to clients in Hong Kong for 2004-2010, and the various advertising and

promotional activities of the opponent’s goods and services in Hong Kong, as

evidenced by Exhibit-U to Exhibit-Y to Moon’s statutory declaration, I have no doubt

that the GIA Trade Marks Combination has become the distinguishing feature of the

opponent, and has undeniably acquired through it a substantial reputation and

goodwill in its goods and services offered and promoted in Hong Kong since 1980s.

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46. As to the three individual trade marks that comprise the GIA Trade Marks

Combination, from the evidence filed I find they are under different treatments. I am

not aware of any independent use or appearance of the Opponent’s Logo. The mere

word mark “GEMOLOGICAL INSTITUTE OF AMERICA” is virtually the corporate

name of the opponent and has been used as such, its rare use outside the context of the

GIA Trade Marks Combination is nothing more than that. I do not find any goodwill

or reputation have been established on the Opponent’s Logo or the mere word mark

“GEMOLOGICAL INSTITUTE OF AMERICA” outside the context of the GIA

Trade Marks Combination.

47. The use of the letter mark “GIA” is another story. There is evidence

showing that “GIA” had independently appeared or been used, say for example in the

opponent’s booths at various jewellery trade fairs in Hong Kong (Exhibit-X2 to

Moon’s statutory declaration), in advertising for the “GIA courses” offered in Hong

Kong as advertised in the jewellery magazine “Hong Kong Jewellery” (Exhibit-W3).

More importantly, the three letters mark GIA featured in numerous textual context,

say for example in advertisements and articles in magazines (Exhibits-W2 to W7),

and its appearance constituted not only as an acronym for referring to the opponent

but as a branding in itself.

48. The opponent has produced in its evidence certain testimony of people in the

trade or industry of gemstone and other jewellery. Mr. Chan Hiu-Sang, Albert is a

director of Chow Tai Fook, a famous local jewellery retail brand. Mr. Chan’s

experience is that many consumers on buying a diamond ring or any other piece of

diamond jewellery would look to buy certified diamonds, in respect of which he cited

the “GIA” certified diamonds as a symbol of credibility, to get the assurance that they

are purchasing high quality diamonds.

49. Another people in the trade, Mr. Ephraim Zion, who has dealt with diamond

and jewellery manufacturers, dealers, retailers and certification laboratories on a daily

basis for half a century globally including Hong Kong, said that diamond certification

by a reputable gemological laboratory to authenticate a diamond’s attributes is

integral to its valuation, and he cited GIA to be generally regarded by the industry and

consumers as the most prestigious and authoritative gemological laboratories and the

widely recognized authority in diamond certification. Mr. Zion also mentioned that

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GIA has made considerable effort in educating the gem and jewellery industry and the

general public through its publication, for example the quarterly publication of the

magazine “Gems & Gemology” and the monthly electronic newsletter “GIA Insider”.

50. Again taking all the evidence as a whole, I have no doubt that the letter mark

“GIA” has become the distinguishing feature of the opponent and has acquired

through it a substantial reputation and goodwill in its goods and services offered and

promoted in Hong Kong.

Assessment of use of the applicant’s subject mark in Hong Kong

51. Though not strictly required at this stage to do so, I find it useful to also give

an assessment on the applicant’s evidence in relation to the use of the subject mark in

Hong Kong.

52. I have summarized the applicant’s evidence in paragraphs 23 to 30 above.

Given that the applicant is a corporation organized and existing under the laws of

Delaware with offices in the United States of America and India, it is assumed that the

applicant operates its laboratories specializing in identification, grading and

certification of diamonds and research services also in these areas unless it is shown

otherwise. It is the opponent’s case that the applicant has not commenced business

in Hong Kong and has not used the subject mark in Hong Kong, and I would say the

applicant has not produced any credible evidence to counter this allegation.

53. As mentioned above, a list of education programs offered by the applicant in

India are given in Krasnianski’s statutory declaration. There is no evidence that the

applicant has run similar programs in Hong Kong.

54. The applicant also offered certificates of authenticity as well as certificates

of grading of diamonds, gemstones, pearls and jewellery under the subject mark. It

is alleged that certificates offered under the subject mark have been available in the

US and India since 2007, exhibit “NK-3” to Krasnianski’s statutory declaration is said

to contain copies of representative gem identification reports produced by the

applicant in the ordinary course of business in association with its goods and services.

Exhibit “NK-4” is said to contain copies of representative gem identification cards

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produced by the applicant and transferred to its customers in the ordinary course of its

business since 2007 in the US and in India. Exhibits “NK-5” and “NK-6” are said to

contain copies of representative brochures and pamphlets distributed by the applicant.

55. All the above, however, have no Hong Kong connection.

56. In the applicant’s evidence, a book entitled “Laboratory-grown Diamonds”

by Branko Deljanin and Dusan Simic is alleged to have been published by the

applicant under the subject mark. Exhibit “NK-8” contains printout of EGL

Canada’s website which advertised the book in Canada, and exhibit “NK-9” contains

printout from the applicant’s website which is said to have been available since 2007.

Exhibit “NK-10” contains copies of pictures of a representative business card

stationery and redacted invoice of the applicant. In these there is no suggestion that

the book has any sale in Hong Kong.

57. As there is no evidence to show the use of the subject mark in Hong Kong, I

conclude that the subject mark is not known in the Hong Kong market as far as the

goods and services in question are involved.

58. Mr. Hughes further pointed out that aside from the miniscule total annual

sales figure of US$150,000 from the year 2005 for the applicant’s predecessor in title,

namely, Gem House International of USA, Inc., the applicant has filed no evidence of

turnover under the subject mark, nor is there any evidence of advertising expenditure.

Indeed Moon’s second statutory declaration, filed as evidence in reply to the

applicant’s evidence, cast doubt on many of the claims made by Mr. Krasnianski in

relation to the various use of the subject mark. For the present purposes of

examining the use of the subject mark, I find that it has not been used in Hong Kong.

Decision

59. I just record that for any of the grounds of opposition discussed in this

decision, it’s not in dispute that the relevant date is the date the subject application

was filed, viz., 20 May 2009 (“the relevant date”).

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Section 12(3) of the Ordinance

60. Section 12(3) of the Ordinance provides as follows:

“(3) 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.”

61. Under section 7(1) of the Ordinance, in determining whether the use of a

trade mark is likely to cause confusion on the part of the public, the Registrar may

take into account all factors relevant in the circumstances, including whether the use

is likely to be associated with an earlier trade mark.

62. Section 12(3) of the Ordinance is similar in effect to section 5(2) of the U.K.

Trade Marks Act 1994, which implements Article 4(1)(b) of the First Council

Directive 89/104 of 21 December 1998 of the Council of the European Communities

(“the Council Directive”). In interpreting Article 4(1)(b) of the Council Directive,

the European Court of Justice (“ECJ”) has formulated the “global appreciation” test,

the principles of which can be found in the ECJ decisions in Sabel BV v Puma AG

[1998] R.P.C. 199, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. [1999]

R.P.C. 117, Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel B.V. [2000] F.S.R.

77 and Marca Mode CV v Adidas AG [2000] E.T.M.R. 723.

63. In essence, the test under section 12(3) is whether there are similarities in

marks and goods which would combine to create a likelihood of confusion. The

likelihood of confusion must be appreciated globally and I need to address the degree

of visual, aural and conceptual similarity between the marks, evaluating the

importance to be attached to those differing elements, and taking into account the

degree of similarity in the goods and how they are marketed. I must compare the

marks at issue, having regard to the distinctive character of each and assuming normal

and fair use of the marks across the full range of the goods within their respective

specifications. I must do all of this from the standpoint of the average consumer for

18

the goods in question.

Earlier trade marks

64. The term “earlier trade mark” is defined in section 5 of the Ordinance.

References to an earlier trade mark shall be construed as including a trade mark in

respect of which an application for registration has been made under the Ordinance

and which, if registered, would constitute an earlier trade mark under or by virtue of

section 5(1)(a), subject to its being so registered.

65. As I have pointed out, the Schedule attached to the Grounds of Opposition,

reproduced in this decision as Annex 1 hereto, lists out the trade marks relied upon by

the opponent in launching the opposition against the subject application. There are

many of them and it is just impracticable and unnecessary for me to consider each of

them here, suffice to say that I find the only mark that really matters for the present

purposes is the following mark which has been registered in Classes 9, 16 and 41:-

Registration No. Trade Mark Class

Specification &

Disclaimer

2005B00434

GEMOLOGICAL

INSTITUTE OF

AMERICA

161 printed matter,

periodical

publications, books,

instructional and

teaching materials

(other than

apparatus); all relating

to gemology or to

gems.

300399033

GEMOLOGICAL

INSTITUTE OF

AMERICA

412 in-residence, on-site

and correspondence

courses in

gemological including

jewelry design, sale

1 It is stated in the Trade Marks Registry record that this Trade Mark has been accepted for registration

by reason of use pursuant to Section 10(2) of the Trade Marks Ordinance 2 It is stated in the Trade Marks Registry record that this trade mark has been accepted because of

distinctiveness acquired through use.

19

and promotion of

gems, pearls and

jewelry, investigation

of genuineness of

gems and valuation of

gems and pearls; all

included in Class 41.

300584488

GEMOLOGICAL

INSTITUTE OF

AMERICA

93 video tapes, compact

disc read only

memories, audio

tapes; all being

educational materials

relating to gemology;

all included in Class

9.

66. The word mark chosen above, which I shall call “the opponent’s word mark”,

is the mark that I can reasonably say is the mark, among the various marks listed out

at the Schedule to the Grounds of Opposition or Annex 1 here, closest to the subject

mark in terms of appearance and the goods and services concerned. As to the other

marks including those identified by the opponent to constitute the GIA Trade Marks,

though they may be used alongside the opponent’s word mark or form part of the GIA

Trade Marks Combination as discussed above, they are just marks that are rather

different from that mark and from the subject mark, hence I would ignore them as

they practically could not stand a better chance of success against the subject mark

than the “GIA” mark for the present purposes of section 12(3). The opponent’s word

mark has obtained registrations in Hong Kong in respect of goods and services in

Classes 9, 16 and 41 and meets the criteria of “earlier trade mark” as defined under

section 5(1)(a) of the Ordinance.

The average consumer

67. As the case law indicates, in the global assessment of the likelihood of

confusion, account should be taken of the average consumer of the category of goods

and services concerned, who is reasonably well informed and reasonably observant

and circumspect. It should also be borne in mind that the average consumer’s level

3 It is stated in the Trade Marks Registry record that this trade mark has been accepted because of

distinctiveness acquired through use.

20

of attention is likely to vary according to the category of goods or services in question

(Mundipharma AG v Office for Harmonisation in the Internal Market (Trade Marks

and Designs) (OHIM) – Altana Pharma (RESPICUR) (T-256/04) [2007] E.C.R.

II-449 at [42] and the case law cited), and I have to determine the manner in which

these goods and services are likely to be selected by the average consumer in the

course of trade.

68. The goods at issue in this case, take for example the applicant’s applied for

goods, are “certificates of authenticity and certificates of grading for diamonds,

gemstones, pearls and jewelry; certificates; printed certificates; printed award

certificates”. Although they are mere printed matters, they are all related to the

appraisals service in Class 36 and in providing identification, authentication and

grading services in Class 42 of diamonds, gemstones, pearls and jewelry such that

relevant certificates would be issued in respect of the services rendered. More

generally, the applicant’s applied for goods and services can be said to be rendered in

relation to the field of gemology, which has a market for both professional

gemologists and non-professional gemstone or jewellery buyers.

69. I would say that the relevant public is comprised of members of the general

public in Hong Kong interested in those goods and services, which means it is made

up of the general public in Hong Kong. As goods and services rendered in relation

to the field of gemology is not one that would be required by an average consumer on

a daily basis, and the costs and expenses involved is usually high, the public

concerned is therefore one which is reasonably well informed and reasonably

observant and circumspect.

Comparison of goods and services

70. According to settled case-law, in order to assess the similarity between

goods or services, all the relevant features of the relationship between them should be

taken into account. Those features include, inter alia, their nature, their intended

purpose, their method of use and whether they are in competition with each other or

are complementary. Other factors may also be taken into account such as the

distribution channels of the goods or services concerned (see for example British

Sugar Plc v James Robertson and Sons Ltd [1996] R.P.C. 281; Canon Kabushiki

21

Kaisha v Metro-Goldwyn-Mayer Inc. See also Case T-443/05 El Corte Inglés v

OHIM – Bolaños Sabri (PiraÑ AM diseño original Juan Bolaños) [2007] ECR II-2579,

paragraph 37 and the case-law cited).

71. As I have discussed above, the applicant’s applied for goods and services

can be said to be rendered in the field of gemology. This also suits the description of

the goods and services covered by the opponent’s word mark in Classes 9, 16 and 41

as set out above.

72. In Gérard Meric v Office for Harmonization in the Internal Market (Trade

Marks and Designs) (OHIM) Case T-133/05, at paragraph 29 the General Court said:

“In addition, the goods can be considered as identical when the goods designated by the

earlier mark are included in a more general category, designated by the trade mark

application (Case T-388/00 Institut für Lernsysteme v OHIM – Educational Services (ELS)

[2002] ECR II-4301, paragraph 53) or when the goods designated by the trade mark

application are included in a more general category designated by the earlier mark (Case

T-104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II-4359, paragraphs 32

and 33; Case T-110/01 Vedial v OHIM – France Distribution (HUBERT) [2002] ECR

II-5275,paragraphs 43 and 44; and Case T-10/03 Koubi v OHIM – Flabesa (CONFORFLEX)

[2004] ECR II-719, paragraphs 41 and 42.”

73. The comparison of the goods and services must concern the description of

the goods and services covered by the marks at issue and not the goods and services

for which the trade marks are actually used. In this connection, although the

applicant’s goods and services are more in relation to the provision of identification,

authentication and grading services in respect of diamonds, gemstones, pearls, jewelry

etc., whilst the goods and services covered by the registrations of the opponent’s word

mark seem to be more inclined to providing educational service in respect of

gemology, it can still be said that they are all goods and services that are rendered in

relation to the field of gemology. I am of the view that the goods and services

covered by the marks at issue were similar.

Comparison of marks

74. According to consistent case law, in order to assess the degree of similarity

22

between the marks concerned, it is necessary to determine the degree of visual, aural

and conceptual similarity between them and, where appropriate, to determine the

importance to be attached to those different elements, taking account of the category

of goods or services in question and the circumstances in which they are marketed

(see Lloyd Schuhfabrik Meyer v Klijsen Handel, paragraph 27).

75. In addition, the global assessment of the likelihood of confusion must, as

regards the visual, aural and conceptual similarity of the marks in question, be based

on the overall impression created by them, bearing in mind, in particular, their

distinctive and dominant components. The perception of the marks in the mind of

the average consumer of the goods or services in question plays a decisive role in the

global assessment of the likelihood of confusion (see Sabel BV v Puma AG, para 23;

Lloyd Schuhfabrik Meyer, para 25; and the order in P Matratzen Concord v OHIM

(Case C-3/03), para 29). In that regard, the average consumer normally perceives a

mark as a whole and does not proceed to analyze its various details (see Office for

Harmonisation in the Internal Market (Trade Marks and Designs) v Shaker di L.

Laudato & C. Sas, Limiñana y Botella, SL (C-334/05 P) [2007] E.C.R. I-4529 at [35]

and the case law cited).

76. I should point out here that both the applicant and the opponent had tried to

introduce expert evidence into the comparison of marks here. The applicant’s is an

expert report of Carole E. Ghaski which is exhibit as “NK-19” to Krasnianski’s

statutory declaration. But they deal largely of the “GIA” and “GHI” marks rather

than the subject mark or the opponent’s word mark here. The reference value of

these reports for the present proceedings is therefore very minimal.

77. Whilst the comparison must be made by examining each of the marks in

question as a whole, that does not mean that the overall impression conveyed to the

relevant public by a composite trade mark may not, in certain circumstances, be

dominated by one or more of its components (see OHIM v Shaker [2007] E.C.R.

I-4529 at [41] and the case law cited). It is only if all the other components of the

mark are negligible that the assessment of the similarity can be carried out solely on

the basis of the dominant element (OHIM v Shaker [2007] E.C.R. I-4529 at [42]).

23

Distinctive and dominant components of the opponent’s word mark and the subject

mark

78. As discussed at paragraphs 65 and 66 above, among the earlier trade marks

that are relied upon by the opponent in the present proceedings, I have chosen the

opponent’s word mark to be the mark for consideration. This is a word mark

consisting of the following words: GEMOLOGICAL INSTITUTE OF AMERICA.

79. The words “INSTITUTE”, “OF” and “AMERICA” are obviously ordinary

words and indistinctive. As to the word “GEMOLOGICAL”, it is an adjective,

meaning that it is of or relating to gems or gemology. It is therefore directly

descriptive of any goods or services rendered in relation to the field of gemology.

The fact that the opponent’s word mark could obtain registration in Classes 9, 16 and

41 but all with the disclaimer that the trade mark has been accepted for registration by

reason of use speaks for itself that this mark lacks inherent distinctiveness, it’s only

because of its combination of words that works through use could it be regarded as a

mark that somewhat is capable of distinguishing the goods or services offered by the

opponent.

80. Similarly, the subject mark, namely, “GEMOLOGY HEADQUARTERS

INTERNATIONAL”, is also a combination of indistinctive and descriptive words.

The words “HEADQUARTERS” and “INTERNATIONAL” are obviously common

and indistinctive words, and the word “GEMOLOGY” is clearly descriptive of any

goods or services rendered in relation to the field of gemology. Nonetheless, the

combination of these words may bestow certain distinctive character on the mark as a

whole.

81. Putting aside the question of whether the marks have acquired an enhanced

degree of distinctive character through use, I consider that both trade marks to be at

the very same low level of inherent distinctiveness, and that minimal distinctiveness

must find its place in the very combination of words constituting the mark, rather than

any individual indistinctive or descriptive word. Taking into consideration that all

word elements are descriptive and non-distinctive, they cannot be the dominant

elements of the marks. I conclude that for either of the marks, there is no word

which is able to dominate the entire mark, and all elements have the same value.

24

Visual similarity

82. Visually speaking, taking each of the marks as a whole, the only similarity

between them is that they contain either the word “GEMOLOGICAL” or

“GEMOLOGY” as the head word of the combination of words.

“GEMOLOGICAL” and “GEMOLOGY” are said to be the same word in its variant

forms, but both are descriptive of goods or services rendered in relation to the field of

gemology. As I have analyzed above, no word in either mark is able to dominate the

entire mark and that each and every word within them cannot be overlooked, the

overall effect is that there is low degree of visual similarity between the opponent’s

word mark and the subject mark.

Aural similarity

83. Aurally the same reasoning applies, and I would add that

“HEADQUARTERS INTERNATIONAL” would sound very different from

“INSTITUTE OF AMERICA”, this would reduce any similarity between the

sounding of the first word.

84. I find there is low degree of aural similarity between the marks.

Conceptual similarity

85. Conceptually speaking, both marks adopt the very descriptive word of the

field of gemology, and then relate it to certain organizational structure, say, an

international headquarters or an institute of America. I consider they share certain

degree of conceptual similarity.

Distinctiveness of the opponent’s word mark

86. A mark may be particularly distinctive either per se or because of the

reputation it enjoys with the public. The more distinctive an earlier mark, the greater

will be the likelihood of confusion (Sabel BV v Puma AG).

87. In determining the distinctive character of an earlier trade mark, I must make

25

an overall assessment of the greater or lesser capacity of the mark to identify the

goods or services for which it has been registered as coming from a particular

undertaking, and thus to distinguish those goods or services from those of other

undertakings. In making that assessment, account should be taken, in particular, of

the inherent characteristics of the mark, including the fact that it does or does not

contain an element descriptive of the goods or services for which it has been

registered; the market share held by the mark; how intensive, geographically

widespread and long standing use of the mark has been; the amount invested by the

undertaking in promoting the mark; the proportion of the relevant section of the

public which, because of the mark, identifies the goods or services as originating from

a particular undertaking; and statements from chambers of commerce and industry or

other trade and professional associations (Windsurfing Chiemsee v Huber and

Attenberger [1999] E.C.R. I-2779; Lloyd Schuhfabrik Meyer v Klijsen Handel [1999]

E.T.M.R. 690).

88. As I have analyzed above, the letter mark “GIA” as well as the GIA Trade

Marks Combination (of which the “GIA” mark forms part) have become the

distinguishing feature of the opponent, but the mere word mark “GEMOLOGICAL

INSTITUTE OF AMERICA” is rarely used outside the context of the GIA Trade

Marks Combination or as the corporate name of the opponent. Nonetheless, through

the aforesaid context of use, it’s fair to say it has acquired an enhanced degree of

distinctive character, though overall this mark is still weak in distinctive character.

Likelihood of confusion

89. The global assessment that I am required to undertake implies some

interdependence between the relevant factors. Thus, a lesser degree of similarity

between those goods or services may be offset by a greater degree of similarity

between the marks, and vice versa.

90. It has been said that the more distinctive the earlier mark, the greater the risk

of confusion (SABEL, paragraph 24). Marks with a highly distinctive character,

either per se or because of the reputation they possess on the market, enjoy broader

protection than marks with a less distinctive character (see Canon, paragraph 18, and

Lloyd Schuhfabrik Meyer, paragraph 20). In the present case, although I have found

26

that the opponent’s word mark has acquired certain enhanced degree of distinctive

character through use in the field of gemology, and hence it has certain distinctiveness

to distinguish the goods and services of the opponent’s, the opponent has largely

relied upon the GIA Trade Marks Combination and the “GIA” mark to promote and

operate its business. I consider that both the opponent’s word mark and the subject

mark are of weak distinctive character anyway.

91. In the evidence there had been discussions about how consumers would

make a purchase of gemstone or jewellery products. According to Chan Hiu-Sang,

Albert, who is a director of Chow Tai Fook, a famous local jewellery retail brand, for

most people, buying a diamond ring or any other piece of diamond jewellery would

qualify as one of the largest purchases they will ever make; many purchasers of

diamond and jewellery would therefore undertake research before making such a

purchase, and because of the internet, finding and evaluating standards and

laboratories is freely and easily available and allows consumers to make smarter

purchasing decisions.

92. Mr. McNeill said that diamonds are of very high value, their significance as

precious gemstones are generally purchased for special occasions such as engagement,

weddings, or other significant occasions in life.

93. All this suggest that the goods and services involved will be expensive, and

of a kind to which potential purchasers would give careful and due consideration

before purchase. But would the fact that consumers would pay a high level of

attention to the selection of the goods and services means that they would also pay

high attention to the marks involved?

94. Mr. Ephraim Zion, a person experienced in the field of gemology, said that

diamond certification by a reputable gemological laboratory to authenticate a

diamond’s attributes is integral to its valuation. Mr. Chan said many consumers

would look to buy certified diamonds to get the assurance that they are purchasing

high quality diamonds. Mr. McNeill is of the view that the public’s ability to discern

two similar marks will be greatly influenced by their emotional state, and this is

particularly relevant in the case of diamonds given the special value and the occasions

as mentioned above.

27

95. With regard to the global assessment of the likelihood of confusion, how

such a high level of attention paid to the goods and services as well as the marks

would fare in the case of low degrees of similarity between two descriptive marks is a

question that the present case must answer.

96. How a tribunal like ours should approach the global assessment under such

circumstances had been explored in the case Digipos Store Solutions Group Ltd v.

Digi International Inc [2008] R.P.C. 24, though in a somewhat different context.

The English Chancery Court in that decision has the following observation:-

“….A weak mark is, in practice, likely to have a reduced scope because there is a lesser

likelihood that other marks will be confused with it, if all that the respective marks have in

common is the descriptive element. That, in turn, is because, as a matter of fact, the

common element would not be thought by the average consumer to signal that the goods in

relation to which the respective marks are used come from the same trade source, not

because of any special approach under section 5(2)(b) to marks composed of descriptive

elements: Reed Executive [2004] RPC 767 and L'Oréal SA v OHIM (Case C-235/05P) 27

April 2006.” (paragraph [42])

97. Going back to the present case, having found that the parties’ goods and

services are similar, I find that visually and aurally the opponent’s word mark and the

subject mark are of a low degree of similarity. As to the conceptual similarity, I

found they share certain degree of similarity because they both adopt the very

descriptive word of the field of gemology and then relate it to an international

headquarters or an institute of America – they have a common convenient point of

referencing to a structure or organization that proffer to have high standing in

gemology. But that common point of reference is something considered to be of

weak distinctive character. I believe the argument about descriptiveness could apply

equally to something which is considered non-distinctive. As said in Reed Executive,

“Where you have something largely descriptive the average consumer will recognize

that to be so, expect others to use similar descriptive marks and thus be alert for detail

which would differentiate one provider from another.”

98. On the other hand, I also bear in mind what is said in Air Products and

Chemicals, Inc. v Office for Harmonisation in the Internal Market (Trade Marks and

Designs) (OHIM) (In Jointed Cases T-305/06 to T-307/06):-

28

“With regard to the weak distinctiveness of the common components and of the earlier

marks as a whole, it should be recalled that the finding of a weak distinctive character for

the earlier trade mark does not preclude a finding that there is a likelihood of confusion.

While the distinctive character of the earlier mark must be taken into account when

assessing the likelihood of confusion (see, by analogy, Canon, paragraph 24), it is only one

of a number of elements entering into that assessment. Even in a case involving an earlier

mark of weak distinctive character, there may be a likelihood of confusion on account, in

particular, of a similarity between the signs and between the goods or services covered

(Case T 134/06 Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM) [2007] ECR

II-5213, paragraph 70; see, to that effect, Case T-112/03 L’Oréal v OHIM – Revlon (FLEXI

AIR) [2005] ECR II 949, paragraph 61).” (paragraph [59])

99. Whilst it is not inconceivable that the marks’ conceptual similarity alone

could create a likelihood of confusion, it must be recalled that the conflicting marks

are still similar to a low degree, and that their similarity is limited to the common

descriptive and non-distinctive element “gemology” or “gemological”.

100. The opponent’s word mark and the subject mark coincide only in a

non-dominant, descriptive and non-distinctive element and are dissimilar with respect

to all the other aspects. It would be against established case law to give too much

importance in the assessment of likelihood of confusion to non-distinctive elements,

otherwise this would result in an unduly broad protection of descriptive and

non-distinctive elements.

101. In the present case, even though the goods are similar, the other factors, such

as the non-distinctive character of the earlier trade mark and the low visual and aural

similarities, are sufficient to exclude any likelihood of confusion, including the risk of

association; a risk of association cannot be based on a non-distinctive element.

102. It follows that the ground of opposition under section 12(3) fails.

Section 12(4) of the Ordinance

103. Section 12(4) of the Ordinance, like section 12(3), requires the existence of

an earlier trade mark which is identical or similar to the mark in question. Moreover,

29

section 12(4) requires that the earlier trade mark is entitled to protection under the

Paris Convention as a well-known trade mark.

104. As in the case of section 12(3), I identify the opponent’s word mark

registered in Classes 9, 16 and 41 to be the possible earlier trade mark. But that

mark has also to be a well known trade mark.

105. Section 4 of the Ordinance provides that a trade mark which is entitled to

protection under the Paris Convention as a well-known trade mark shall be construed

as references to a trade mark which is well known in Hong Kong, and further provides

that in determining whether a trade mark is well known in Hong Kong, the Registrar

or the court shall have regard to Schedule 2 to the Ordinance.

106. I have examined and evaluated all the evidence of use of the opponent’s

word mark filed in these proceedings, as summarized in paragraphs 37 to 50 above.

I simply cannot find sufficient evidence to hold that the opponent’s word mark is well

known in Hong Kong.

107. I must therefore also hold that the ground of opposition under section 12(4)

fails.

Section 12(5)(a)

108. Section 12(5)(a) concerns the protection of “an unregistered trade mark or

other sign used in the course of trade or business” by virtue of the law of passing off

vis-à-vis the mark in question.

109. A helpful summary of the elements of an action for passing off can be found

in Halsbury’s Laws of Hong Kong Vol 15(2) at paragraph 225.001. The guidance

takes account of speeches in the House of Lords in Reckitt & Colman Products Ltd v

Borden Inc [1990] R.P.C. 3414 and Erven Warnink BV v J Townend & Sons (Hull)

4 This has also applied in local cases, e.g. Ping An Securities Ltd v 中國平安保險 (集團) 股份有限公司, FACV 26/2008 (12 May 2009).

http://international.westlaw.com/find/default.wl?DB=UK%2DCASELOC&SerialNum=1990192877&FindType=Y&AP=&fn=_top&rs=WLIN6.08&mt=WestlawUK&vr=2.0&sv=Split

http://international.westlaw.com/find/default.wl?DB=UK%2DCASELOC&SerialNum=1990192877&FindType=Y&AP=&fn=_top&rs=WLIN6.08&mt=WestlawUK&vr=2.0&sv=Split

30

Ltd [1979] A.C. 731, and is as follows :

“The House of Lords has restated the necessary elements which a plaintiff has to establish

in an action for passing off:

(1) the plaintiff’s goods or services have acquired a goodwill or reputation in the market

and are known by some distinguishing feature;

(2) there is a misrepresentation by the defendant (whether or not intentional) leading or

likely to lead the public to believe that goods or services offered by the defendant are goods

or services of the plaintiff; and

(3) the plaintiff has suffered or is likely to suffer damage by reason of the erroneous

belief engendered by the defendant’s misrepresentation.

The restatement of the elements of passing off in the form of this classical trinity has been

preferred as providing greater assistance in analysis and decision than the formulation of

the elements of the action previously expressed by the House of Lords. However, like the

previous statement of the House of Lords, this latest statement should not be treated as akin

to a statutory definition or as if the words used by the House of Lords constitute an

exhaustive, literal definition of ‘passing off’, and in particular should not be used to

exclude from the ambit of the tort recognized forms of the action for passing off which

were not under consideration on the facts before the House of Lords.”

110. The element of misrepresentation necessarily means that the relevant

members of the public will mistakenly infer from the use of the mark in question

which is the same or sufficiently similar to the name or marks of the plaintiff that the

goods on which the mark in question is used or proposed to be used are from the same

source or are connected. From my analysis so far, the only mark of the applicant that

is of relevance here is the opponent’s word mark. Again, without repeating myself,

after examining all the evidence of use of the opponent’s word mark filed in these

proceedings, I am not satisfied that the opponent has established that by the Filing

Date (i.e., the date when registration of the subject mark was applied for), it enjoys a

goodwill or reputation attached to its goods and services in the mind of the purchasing

public by association with the opponent’s word mark. It follows that there is no

relevant goodwill or reputation of the opponent’s word mark which could be damaged

by any misrepresentation (if any) on the part of the applicant. The ground of

opposition under section 12(5)(a) fails.

31

Section 11(5)(b)

111. Section 11(5)(b) of the Ordinance provides that a trade mark shall not be

registered if the application for registration of the trade mark is made in bad faith.

The term “bad faith” is not defined in the Ordinance.

112. In Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd [1999] R.P.C. 367

at 379, Lindsay J. said in relation to section 3(6) of the U.K. Trade Marks Act 1994

(equivalent to section 11(5)(b) of the Ordinance):

“I shall not attempt to define bad faith in this context. Plainly it includes dishonesty and,

as I would hold, includes 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. Parliament has wisely not attempted to explain in detail what is or is not

bad faith in this context: how far a dealing must so fall-short in order to amount to bad faith

is a matter best left to be adjudged not by some paraphrase by the courts (which leads to the

danger of the courts then construing not the Act but the paraphrase) but by reference to the

words of the Act and upon a regard to all material surrounding circumstances.”

113. In Harrison v Teton Valley Trading Co (CHINAWHITE) [2005] F.S.R. 10, the

Court of Appeal in the United Kingdom said (at paragraph 26):

“The words “bad faith” suggest a mental state. Clearly when considering the question of

whether an application to register is made in bad faith all the circumstances will be relevant.

However the court must decide whether the knowledge of the applicant was such that his

decision to apply for registration would be regarded as in bad faith by persons adopting

proper standards.” (Emphasis added)

114. Further, in Ajit Weekly Trade Mark [2006] RPC 25, the Appointed Person

said,

“The subjective element of the test means that the tribunal must ascertain what the

defendant knew about the transaction or other matters in question. It must then be

decided whether in the light of that knowledge, the defendant’s conduct is dishonest judged

by ordinary standards of honest people, the defendant’s own standards of honesty being

irrelevant to the determination of the objective element.”

32

115. The position is further summarized in the following passage in Melly’s Trade

Mark Application (Oppositions of Fianna Fail and Fine Gael) [2008] E.T.M.R. 41,

where it is said:

“53 The mental element required for a finding of bad faith has been much discussed. The

discussion has centred on the test for determining dishonesty in English law, that is to say

the “combined test” as explained by the House of Lords in Twinsectra Ltd v Yardley and

clarified by the Privy Council in Barlow Clowes International Ltd (In Liquidation) v

Eurotrust International Ltd. In her decision in Ajit Newspaper Advertising Marketing &

Communications Inc’s Trade Mark (No.2283796) Professor Annand considered whether

the “combined test” makes it necessary to give effect to the applicant’s belief in the

propriety of his own behaviour when deciding whether he applied for registration in bad

faith. She said not, on the basis that his own perception of propriety could not provide a

conclusive answer to the question whether he actually had applied for registration in bad

faith. I agree with her analysis. It supports the view that the relevant determination must

ultimately be made “on the basis of objective evidence” rather than upon the basis of

evidence as to the beliefs and opinions of the applicant with regard to the propriety of his

disputed application for registration. I note in this connection that in the Harrison v Teton

Valley Trading Co Ltd--CHINA WHITE the Court of Appeal upheld the Hearing Officer’s

finding of bad faith: (1) notwithstanding that the applicant for registration had deposed to

the fact that he “recognised no bad faith in my decision to develop and market the drink

CHINA WHITE” and was not cross-examined on the evidence he had given; and (2)

notwithstanding that the Registrar’s Hearing Officer had accepted the applicant’s evidence

and concluded that at the date of the disputed application for registration the applicant “saw

nothing wrong in his own behaviour”.” (footnotes omitted)

116. In essence, bad faith is a serious allegation that must be proved. An

allegation of bad faith should not be lightly made unless it can be fully and properly

pleaded and should not be upheld unless it is distinctively proved and this will rarely

be possible by a process of inference (ROYAL ENFIELD Trade Marks [2002] R.P.C.

24 at para. 31).

117. In the Grounds of Opposition, the opponent pleads the bad faith ground

based upon the following allegation: - that the applicant previously filed an identical

application under application no. 300578764, covering the same mark and the same

goods and services, on 10 February 2006, and such application was subsequently

withdrawn by the applicant on 9 May 2008 upon the opponent’s opposition thereto.

33

118. In the opponent’s evidence in support, the above alleged fact was just

repeated in paragraph 30 of Moon’s statutory declaration, with Ms. Moon just adding

that the applicant was well aware of the opponent’s prior use of, and prior rights in

and to, the GIA Trade Marks such that the subject application was made in bad faith.

119. In Krasnianski’s statutory declaration, which constitutes the applicant’s only

evidence, I am not aware that Mr. Krasnianski has made any reply to that.

120. In Moon’s second statutory declaration, which was filed as evidence in reply

after the applicant’s evidence, a settlement agreement was mentioned to have existed

and that seemed to shed light on the abovementioned scenario of the applicant having

once made an application for the same mark and later withdrawn it.

121. The settlement agreement and related materials were allegedly made on a

without prejudice basis, and hence this led to the preliminary issues I mentioned in

paragraphs 7 to 10 above that arose before the substantive hearing.

122. I do not think I need to go into any detail of the settlement agreement and

the related materials. If they are relevant to these proceedings at all, they should

have been filed in the opponent’s evidence in support, rather than as evidence in reply

when the applicant’s evidence did not contain any allegation or denial about the prior

evidence of the applicant in that connection.

123. Based on the fact that the applicant had previously filed an identical

application covering the same mark and the same goods and services and later

withdrawn such application, and assuming the applicant was well aware of the

opponent’s use of the GIA Trade Marks, could I take the bad faith claim any further?

124. I am afraid I cannot. There is too much that could explain or justify the

applicant in making the previous application and later withdrawing it, that fact alone

is not sufficient to make out a case of bad faith.

125. The ground of opposition under section 11(5) (b) fails.

34

Conclusion

126. As the opponent has not succeeded in any of the grounds of opposition, I

award the applicant costs. Subject to any representations, as to the amount of costs

or calling for special treatment, which either the opponent or the applicant makes

within one month from the date of this decision, costs will be calculated with

reference to the usual scale in Part I of the First Schedule to Order 62 of the Rules of

the High Court (Cap. 4A) as applied to trade mark matters, unless otherwise agreed.

(Frederick Wong)

for Registrar of Trade Marks

19 May 2014

35

Annex 1

Trade Mark

No.

Trade Mark Class

No.

Specification of Goods or Services

1. 19810813 GEMOLOGICAL

INSTITUTE OF AMERICA

16 paper and paper articles, cardboard and

cardboard articles, printed matter, periodical

publications, books, photographs, stationery,

instructional and teaching material (other than

apparatus); all relating to gemology or to

gems.

2. 1982B0478 GIA

16 printed matter, periodical publications, books,

instructional material (other than apparatus)

all relating to gemology or to gems.

3. 199900489AA GIA 9, 35 video tapes, compact disc

read-only-memories, audio tapes; all being

educational materials relating to gemology;

data carriers, transmitters and reproducers of

sound, images or data; all included in Class 9.

mail order services by product catalog;

computerized ordering via computer

terminals; all included in Class 35.

4. 200104503 GIA 42 gemological services; registration services

relating to precious gems; grading precious

gems; all included in Class 42.

5. 2002B08340 GTL 42 identifying, grading, registering, and

inscribing precious gems; pearl identification;

all being gemological services and included in

Class 42.

6. 2002B13902 GIA GEM TRADE

LABORATORY

INTEGRITY

42 gemological services; identifying, grading,

registering, and inscribing precious gems;

pearl identification; all included in Class 42.

7. 200306517 GIA GEM TRADE

LABORATORY

INTEGRITY

42 gemological services, registration services

relating to precious gems; grading of precious

gems; all included in Class 42.

36

Trade Mark

No.

Trade Mark Class

No.


8. 200315802 GIA 14 jewelry, jewelry boxes, jewelry cases, pearls,

gems, gem replicas, gem cases, beads, pins,

label pins, rings, ring stands; all included in

Class 14.

9. 200401163 GIA 41 conducting a school training people in the arts

of gem identification and jewelry making; all


10 200401909 GIA 9 scientific instruments and apparatus,

microscopes, measuring instruments, scales,

refractometers, lamps for the microscopes,

color testing equipment, ultraviolet and

fluorescent testing equipment and

photo-optical instruments and spectroscopes,

tubes, filters, color testing equipment, color

comparaturos, ultraviolet and fluorescent

testing equipment, photo-optical instruments,

spectroscopes, microscopes for grading gems,

and portable laboratory equipment; scientific

instruments and apparatus for examining,

testing, evaluating, and appraising pearls and

jewelry; all included in Class 9.

11. 200403770 GIA 9 microscopes, measuring instruments, scales,

refractometers, lamps for the microscopes,

color testing equipment, ultraviolet and

fluorescent testing equipment and

photo-optical instruments and spectroscopes,

tubes, filters, color testing equipment,

ultraviolet and

fluorescent testing equipment, photo-optical

instruments, spectroscopes, microscopes for

grading gems, and portable laboratory

equipment; scientific instruments and

apparatus for examining, testing, evaluating,

and appraising gems, pearls and jewelry; data

carriers, computer software, video tapes,

CD-ROMs, audio tapes; all featuring

educational materials; transmitters and

reproducers of sound images, data, telephonic

and digital transmitters of information; all in

the field of gemology, pearls and jewelry; all


37

Trade Mark

No.

Trade Mark Class

No.


12. 2004B08504 GEMOLOGICAL


KNOWLEDGE

41 conducting a school training people in the arts

of gem identification and jewelry making; all


13. 2005B00434 GEMOLOGICAL


16 printed matter, periodical publications, books,

instructional and teaching materials (other

than apparatus); all relating to gemology or to

gems.



KNOWLEDGE

9 video tapes, compact disc read only

memories, audiotapes; all being educational

materials relating to gemology; data carriers,

transmitters and reproducers of sound, images

or data; all included in Class 9.

15 300176823 GIA GEMOLOGICAL


9 data carriers, videotapes, CD-ROMs,

audiotapes and transmitters and reproducers

of sound, images or data; all featuring

educational materials in the field of

gemology; all included in Class 9.

16. 300176832 GIA GEMOLOGICAL


16 paper, paper articles, cardboard and cardboard

articles, printed matter, periodical

publications, books, photographs, stationery,

and instructional and teaching materials.

17. 300176841 GIA GEMOLOGICAL


41 in-residence, on-site and correspondence

courses in gemology including jewelry

design, sale and promotion of gems, pearls

and jewelry, investigation of genuineness of

gems and valuation of gems and pearls.



KNOWLEDGE

35 mail order services by product catalog;


terminals.

38

Trade Mark

No.

Trade Mark Class

No.



INSTITUTE OF

AMERICA

41 in-residence, on-site and correspondence

courses in gemological including jewelry

design, sale and promotion of gems, pearls

and jewelry, investigation of genuineness of

gems and valuation of gems and pearls; all




9 video tapes, compact disc read only

memories, audio tapes; all being educational

materials relating to gemology; all included in

Class 9.



35 mail order services by product catalog;


terminals.

~ End ~

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