Opposition to registration of SWISSBERNARD mark
The Federation of the Swiss Watch Industry FH (the opponent) has failed in its opposition to the registration of the SWISSBERNARD mark (below) applied for on January 31 2012 by Ayoub in Class 14 for “horological and chronometric instruments” and published for opposition on July 20 2012.
The opponent relied on the use and registration of its certification mark SWISS/Swiss, registered as a series of trademarks on July 11 2001 under Registration 2006C00140 in Class 14 for “horological and chronometric instruments; watches; clocks; parts and fittings for the aforesaid goods”.
The applicant filed a counterstatement on January 18 2013 denying all the opposition grounds, and no other evidence was filed in support of the application. At the hearing the registrar considered only the opponent’s evidence in which the opponent was described as a private, professional and non-profit organisation based in Bienne, Switzerland, formed in 1983 as a result of the merger between the Swiss Watch Chamber (established 1876) and the Federation of Swiss Watch Manufacturers (established 1924). It is the only trade association representing the Swiss watch industry working in close association with the Swiss government to promote and protect the industry throughout the world. According to the opponent’s evidence, it had 450 members representing around 90% of all Swiss watch manufacturers, including many well-known watch makers such as Rolex and Patek Philippe. The opponent promotes and defends the interests of the Swiss watch industry nationally and internationally, and does not itself manufacture watches, clocks or any other goods.
The opponent’s core argument was under Section 12(3) of the Trademarks Ordinance (Cap 559), which provides:
“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.”
Section 12(3) of the ordinance is similar in effect to Section 5(2) of the UK Trademarks Act 1994, which implements Article 4(1)(b) of the EU First Trademarks Directive (89/104/EC). In interpreting the directive, the European Court of Justice (ECJ) formulated the global appreciation test, the principles of which are laid down in the ECJ decisions in Sabel BV v Puma AG ( RPC 199), Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc ( RPC 117), Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV ( FSR) and Marca Mode CV v Adidas AG ( ETMR 72).
It was accepted that the opponent’s mark was an “earlier trade mark” as defined in Section 5 of the ordinance and, as both marks covered horological and chronometric instruments, the goods at issue were identical. The relevant consumers were members of the general public in Hong Kong interested in horological and chronometric instruments, who are considered to be reasonably well informed, observant and circumspect. The only issues concerned the similarity between the marks and the likelihood of confusion.
According to case law, the test under Section 12(3) can be summarised as whether there are similarities in the marks and goods which combine to create a likelihood of confusion. The comparison of marks must be appreciated globally by addressing:
- the degree of visual, aural and conceptual similarity between the marks;
- the importance attached to their differing elements; and
- the degree of similarity in the goods, including the marketing thereof.
The distinctive character of the marks, assuming the normal and fair use of each mark for their respective goods, must also be considered, all from the viewpoint of the average consumer of the goods.
The registrar considered that visually, the different elements in the marks contributed to their overall different impressions, mainly the significant device element in the SWISSBERNARD mark and the different word elements. The marks shared only the element 'Swiss', which the registrar opined had a weak impact in the overall impression of the SWISSBERNARD mark. However, as far as notional fair use of the mark was concerned, the element 'Swiss' was only part of the word 'Swissbernard' and was not used alone as it was in the opponent’s mark.
The word 'Swiss', meaning “of or relating to Switzerland or its people”, may serve as a geographical indication and can be registered only as a certification mark. The opponent’s mark was registered as a certification mark and consisted of the plain word mark 'SWISS' or 'Swiss', which was the sole distinctive and dominant component of the mark. On the other hand, the SWISSBERNARD mark comprised the word component 'Swissbernard' and the stylised wings device, neither of which was descriptive of the goods. While each element made a roughly even contribution to the overall impression of the mark, neither element strongly dominated the mark and at most, the word 'Swissbernard' could be taken to be slightly more significant. There was no dictionary meaning for the word 'Swissbernard', although it was accepted that it could refer to a breed of dog despite no evidence of this being presented at the hearing. Overall, the registrar considered the marks to be strikingly different, with only a modest degree of visual similarity.
The SWISSBERNARD mark was referred to as 'Swissbernard'. Although the frontal element 'Swiss' of 'Swissbernard' was shared with the opponent’s mark, the element 'bernard' would not go unnoticed. The registrar considered the degree of aural similarity to be moderate.
The registrar considered the marks to have different concepts and any conceptual similarity was low. The opponent’s mark SWISS served simply as a geographical indication and functioned to indicate that the goods were certified by the owner in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics “of or relating to Switzerland”. On the other hand, the wings device in the SWISSBERNARD mark was abstract and other than referring to a breed of dog, there is no obvious meaning for the term 'Swissbernard'. The opponent’s argument that conceptually the SWISSBERNARD mark referred back to Switzerland or Swiss origin was rejected, as the registrar opined that consumers would not dissect SWISSBERNARD into separate parts. Even if they read it as 'Swiss' and 'bernard', the word 'Swiss' was perceived to qualify the word 'Bernard'.
The registrar found the opponent’s mark to have good inherent distinctiveness and to have acquired an enhanced degree of distinctive character through use in respect of watches and clocks. Despite this, and the identical goods under the marks, as the overall degree of visual, aural and conceptual similarity between the marks found by the registrar was low, it was unlikely that the relevant consumers would erroneously believe the SWISSBERNARD mark used on clocks and watches would certify the goods as coming from Switzerland and confuse the mark with the SWISS/Swiss certification mark. Having taken all the factors into account, the opposition under Section 12(3) of the ordinance failed.
The other grounds of opposition also failed:
- under Section 11(4) of the ordinance relating to use or registration of a mark likely to deceive;
- Section 11(5)(b) relating to application of a mark made in bad faith; and
- Section 12(4) relating to opposition based on a well-known trademark.
Concerning the last ground, the degree of similarity between the marks merely needed to have the effect that the relevant section of the public “establishe[d] a link” between them, and did not need to rise to a “likelihood of confusion”. However, even with the presumption that the opponent’s mark was well known in Hong Kong, given the low degree of similarity between the marks the registrar determined that the relevant section of the public would not see a link between the two marks and was unlikely to be misled into thinking that the SWISSBERNARD mark certified goods coming from Switzerland.
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