SHARPVIEW refused registration under law of passing off

The Hong Kong Trademarks Ordinance prohibits registration of a trademark if its use in Hong Kong is likely to be prevented by virtue of any rule of law protecting an unregistered trademark or other sign used in the course of trade or business (in particular, by virtue of the law of passing off).

Sharp Corporation of Japan recently successfully opposed the SHARPVIEW (figurative) trademark (shown below) applied by an individual to, among other things, computer monitors, CCTV surveillance systems and colour surveillance cameras in Class 9.

Based on evidence submitted by Sharp, the Trademarks Registry held that goodwill was attached to its goods (which included televisions, CCD area sensors, infrared detectors, photocopiers, information display panels and copier printers) in the mind of the purchasing public by association with Sharp's mark (shown below), which the public recognise as distinctive of Sharp's goods.

On misrepresentation, the registry considered that visually the opposed mark incorporated the whole of Sharp's mark, with the word 'SHARP' immediately perceptible and having a dominant and distinctive role in the opposed mark. Despite the presence of the eye device and the letters 'IEW', the word 'SHARP' was likely to be remembered by the purchasing public on seeing the opposed mark. Thus, the registry found the overall impression created by the opposed mark to be similar to that created by Sharp's mark. Having regard to Sharp’s reputation and goodwill, the clear overlap between the respective fields of activity between Sharp and the applicant and the similarity between the respective marks, the registrar considered that when customers saw the opposed mark used in relation to the applicant’s goods, they would likely be misled into believing that the applicant's goods and those provided by Sharp were from the same source. Thus, damage to Sharp's goodwill was a reasonably foreseeable consequence of use of the opposed mark, particularly as the respective fields of activity overlapped or were closely associated.

In support of the opposition, evidence was submitted to show that Sharp's mark often appeared in red in advertisements and commercials (below left) and that the opposed mark also appeared in red on the applicant’s website (below right).