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TRADE MARKS ORDINANCE (Cap. 559)

OPPOSITION TO TRADE MARK APPLICATION NO. 302149173

MARK:

CLASSES:

14

APPLICANT: Ayoub

OPPONENT: Federation of The Swiss Watch Industry FH

STATEMENT OF REASONS FOR DECISION

Background

1. On 31 January 2012, Ayoub (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 (“subject goods”) in

Class 14:-

Class 14

Horological and chronometric instruments.

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3. Particulars of the subject application were published on 20 July 2012. On 18

October 2012, the Federation of The Swiss Watch Industry FH (the “opponent”) filed

a Notice of opposition attached with a “Grounds of Opposition”.

4. The opposition hearing took place before me on 6 October 2015. Ms. Amy

Zhang of Hogan Lovells represented the opponent. The applicant did not appear at

the hearing.

Grounds of Opposition

5. In the Grounds of Opposition, the opponent relies on the use and registration of

its certification mark “SWISS/Swiss” under registration no. 2006C00140 in Class 14

for “horological and chronometric instruments; watches; clocks; parts and fittings for

the aforesaid goods” to oppose registration of the subject mark under sections 11(1)(a)

to (d), 11(4), 11(5)(a), 11(5)(b), 12(3), 12(4) and 12(5) of the Ordinance.

Counter Statement

6. The applicant filed a Counter Statement on 18 January 2013, denying all the

grounds of opposition.

7. The Counter Statement filed on 18 January 2013 has some attachments to it.

The registrar had by its letter dated 12 April 2013 to the applicant’s agent pointed out

that a counter-statement is not evidence and it should not stray into the area of

evidence, that any purported evidence should be filed instead by way of statutory

declaration or affidavit at the evidence stage, and any evidence attached to the

pleadings would not be uploaded to the Registry’s website for online inspection. I

would here make clear that the attachments to the Counter Statement filed on 18

January 2013 did not, do not and would not form any part of the evidence in the

present proceedings.

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The opponent’s evidence in support

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

Bugmann dated 13 January 2014 (“Bugmann’s statutory declaration”).

9. Mr. Bugmann is the Head of the Legal Department of the opponent, namely,

Federation of The Swiss Watch Industry FH which is an association incorporated in

Switzerland. Mr. Bugmann was authorized by the opponent to make the statutory

declaration on its behalf in these proceedings.

10. According to Mr. Bugmann, the opponent is a private, professional and

non-profit organisation based in Bienne, Switzerland, with offices in major countries

throughout the world. 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 currently the only trade association representing the Swiss

watch industry, working in close association with the Swiss Government and held

functions to promote and protect the industry throughout the world.

11. The opponent currently has 450 members, representing around 90% of all

Swiss watch manufacturers. Exhibit “YB-1” to Bugmann’s statutory declaration is a

copy of the opponent’s list of current members as at 16 October 2013, which includes

many of the well-known watch makers such as Rolex, Patek Philippe, etc.

12. Whilst not itself in the business of manufacturing watches, clocks or any other

goods, the opponent is dedicated to promoting and defending the interests of the

Swiss watch industry nationally and internationally. Exhibit “YB-2” to Bugmann’s

statutory declaration is a copy of the Bylaws adopted by the opponent on 1 July 1999

and last modified on 25 June 2009. Among the objectives of the opponent are to

protect and develop the Swiss watch industry, to promote its members’ interests

during consultations on the elaboration of national and foreign legislation, to represent

the sector as a whole, both in Switzerland and abroad, to actively combat

infringements of intellectual property and protect Swiss geographical indications by

registration of certification marks in places where that prove necessary to achieve that

aim.

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13. Mr. Bugmann alleges that watches that are “Swiss made” are not only

prominent and well-known in Switzerland but also internationally and in Hong Kong.

Exhibits “YB-3” to “YB-5” to Bugmann’s statutory declaration are copies of articles

published in magazines or on the internet that provide background information about

the history of the Swiss watch and clock industry. I do not propose to summarize

them here. Exhibit “YB-6” are copies of advertisement placed in trade magazines

circulated in Hong Kong, mainland China and Taiwan in the period between 2004 and

2013, which contain pictures or photos showing watches with “Swiss made” on the

dial.

14. Mr. Bugmann points out that the opponent has spent considerable effort at

promoting and raising awareness of the Swiss heritage associated with watches and

clocks, and at educating the trade and the public worldwide. For example, the

opponent has held exhibitions worldwide including Hong Kong; in particular, during

the period 2003 to 2013, it has presented in Hong Kong the travelling exhibition event

“Think Time ―Think Swiss Excellence” which is aimed at promoting the history and

strength of the Swiss watchmaking industry. Exhibit “YB-7” are copy extracts from

the opponent’s website about that exhibition and showing photos from some of the

exhibits worldwide (including the “Switzerland Greets Hong Kong” exhibit which

took place in Hong Kong in 2004).

15. Mr. Bugmann alleges that Hong Kong and mainland China have become

important markets for Swiss watch producers in Asia over the years. Exhibit “YB-8”

is a copy of an article on an interview with Jean-Daniel Pasche, the Chairman of the

opponent, published in the Chinese magazine BQ on 29 May 2008; it is mentioned

therein that Hong Kong is the region with the highest imports of clocks and watches

in the year 2007 worldwide (about USD 5,300 million).

16. Exhibit “YB-9” to Bugmann’s statutory declaration is a table showing the value

of watch exports to Asia (including Hong Kong) for the period between January to

September 2013, giving a sale figure of CHF 2,819.3 million (about USD 3,060.73

million) for exportation of Swiss watches from Switzerland to Hong Kong for the

period.

17. There are other exhibits attached to Bugmann’s statutory declaration containing

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materials that are largely to provide information about the legislative or treaty

frameworks upon or through which the opponent is supposed to work, or profile the

opponent and its protection of the “Swiss” geographical indications including

registration of it as certification mark in various jurisdictions, and the policy of and

action taken by the opponent in protecting all “Swiss” indications worldwide

including Hong Kong. I do not find them to be all directly relevant for the core

issues of the present proceedings, but for record purpose would just list them below

with brief descriptions:-

YB-10 – copy of a press release from the opponent dated 16 July

2013, relating to the signing of the Switzerland-China Free

Trade Agreement on 6 July 2013.

YB-11 – copy of the Swiss Federal Ordinance governing the use of

the appellation “Switzerland” or “Swiss” for watches of 23

December 1971.

YB-12 – copy of Article 22 of the the World Trade Organization

(“WTO”) Agreement on Trade-Related Aspects of

Intellectual Property Rights (“TRIPS”).

YB-13 – a list of WTO members.

YB-14 – a statement of the World Intellectual Property Organization

(“WIPO”) on geographical indications.

YB-15 – copies of Article 51 the Swiss Federal Law on the

Protection of Trade Marks and Indications of Origins and

Article 53 of the Ordinance on the Protection of Trade

Marks.

YB-16 – copy of a letter from the Swiss Federal Institute of

Intellectual Property (“IGE”) dated 22 May 2013 detailing

the role of the opponent in the protection of the “Swiss”

geographical indications.

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YB-17 – copy of the Additional Agreement to the Agreement

concerning products of the clock and watch industry

between the European Economic Community and its

Member States and the Swiss Confederation.

YB-18 – copy of guidelines for labelling requirements for watches as

set down by The Australian Customs Service.

TB-19 – copy of sections 2 and 3 of the UK Trade Descriptions Act

1986.

YB-20 – copy of Singapore Consumer Protection (Trade

Descriptions and Safety Requirements) Act 1975.

YB-21 – copy of the relevant provisions of the Australian Consumer

Law.

YB-22 – copy of the relevant provisions of the U.S. Trademark Act

(15 U.S.C. 1052).

YB-23 – copy of the Office Action issued by the USPTO preliminary

refusing registration of the mark “SWISS LEGEND” (serial

no.78/364789)

YB-24 – copy of the certificate issued by the USPTO for US

certification trade mark registration number 3038819.

YB-25 – copy of the certificate issued by the USPTO for US

certification trade mark registration number 3047277.

YB-26 – copy of the Regulation of the opponent on the US

certification marks “SWISS” and “SWISS MADE”.

YB-27 – website printout of the registration details of the opponent’s

certification mark “SWISS/Swiss”, registered in Class 14

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with registration no. 2006C00140 in Hong Kong.

YB-28 – copy of the Regulations of the opponent for the use of the

Hong Kong certification mark “SWISS/Swiss”.

YB-29 – copies from the Hong Kong Trade Marks Registry of the 55

records regarding alive marks (the “SWIS Marks”) and of

the 65 records regarding dead marks which contain the

component “SWIS” in Class 14. The opponent has taken

actions against these proprietors including the request for

the execution of undertaking (the “Undertaking”) and the

entering into of compliance condition (the “Compliance

Condition”) in respect of use of the SWIS Marks.

YB-30 – copy of the Undertaking from the proprietor of registration

no. 300381988 for “SWISS HORN” in Class 14.

YB-31 – copy from the records of the Hong Kong Trade Marks

Registry regarding registration no. 300381988 for “SWISS

HORN” in Class 14, against which the Compliance

Condition was entered.

YB-32 – copy from the records of the Hong Kong Trade Marks

Registry regarding the withdrawn application no.

300674983 for “ ” in Classes 14, 16, 28 and 25 in the name

of Sung-Yoon PNP Co., Ltd.

YB-33 – two schedules setting out the proprietors of the SWIS

Marks from which the opponent has secured the

Undertaking and/or the Compliance Condition; and the

actions which the opponent has taken against the

proprietors of the SWIS Marks in Hong Kong.

YB-34 – copy of a cease-and-desist letter sent to Dixmont Limited

on 11 August 2006 together with its reply dated 5

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September 2006.

YB-35 – copy of decision rendered by the China Trademarks Office

(“CTMO”) in 2009 and the official trade mark record of

application no. 3809297 showing the invalid status of the

mark.

YB-36 – a list of worldwide opposition proceedings successfully

concluded by the opponent in the period 2011 to June 2013.

YB-37 – copy of “Decision of the Panel of Baselworld 2008, World

Watch and Jewellery Show (3.-10.4.2008)”.

YB-38 – copy of the Regulations of the Panel of Baselworld.

YB-39 – copy of the undertaking signed by an exhibitor against

which a complaint has been filed by the opponent at the

Hong Kong Watch & Clock Fair 2013, on 7 September

2013.

18. The rest of Bugmann’s statutory declaration are his observations on the subject

mark, as compared with the opponent’s “SWISS/Swiss” certification trade mark

registered in Class 14 in Hong Kong. I do not propose to summarize them here but

may refer to the relevant points as and when appropriate in the latter part of this

decision.

The applicant’s evidence

19. The applicant did not file any evidence in the proceedings.

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Decision

20. 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., 31 January 2012 (“the relevant date”).

21. The opponent opposed registration of the subject mark under sections 11(1)(a)

to (d), 11(4), 11(5)(a), 11(5)(b), 12(3), 12(4) and 12(5) of the Ordinance. At the

hearing, Ms. Amy Zhang of Hogan Lovells representing the opponent indicated that

she would only focus on sections 12(3), 11(4), 11(5)(b) and 12(4). Although Ms.

Zhang did not expressly say so, I take it to mean that the opponent is not prepared to

pursue the opposition on those left out grounds anymore. Indeed I could see no

reasonable prospect of success for those grounds. Hence I would only deal with the

four mentioned grounds in this decision. First, I would deal with the ground based

on section 12(3) of the Ordinance, as it is the ground I could see forms the core of the

opponent’s arguments.

Section 12(3) of the Ordinance

22. 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.”

23. 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

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be associated with an earlier trade mark.

24. 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.

25. 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

the goods in question.

Earlier trade marks

26. 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.

27. The opponent relies on its mark “SWISS/Swiss” to oppose registration of the

subject mark. The mark has been registered in Hong Kong as a certification mark in

Class 14 for “horological and chronometric instruments; watches; clocks; parts and

fittings for the aforesaid goods” under registration no. 2006C00140, with effect from

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11 July 2001. As it is provided in section 3(4) of the Ordinance, unless the context

otherwise requires, references in the Ordinance to a trade mark shall be construed as

including references to a certification mark. This mark therefore meets the criteria

of “earlier trade mark” vis-a-vis the subject mark, as defined under section 5(1)(a) of

the Ordinance.

28. As it is expressly stated in the relevant Trade Marks Registry Record, it is a

condition of registration of this “SWISS/Swiss” certification mark that the mark shall

not be used in any printed advertisements or printed publicity matter directed

primarily to the market in Hong Kong and in retail point of sale display matter

distributed by the opponent as the registered proprietor for use within Hong Kong

without indicating that it is a Certification Trade Mark.1 The Record also expressly

stipulates that the Regulations approved by the Registrar of Trade Marks for

governing the use of this mark are open to inspection at the Trade Marks Registry, and

copies may be obtained (on notice) at the Trade Marks Registry on payment of the

specified fee.

29. Moreover, section 62(2) of the Ordinance provides that the Ordinance applies

to certification marks in the manner and to the extent specified in Schedule 4.

Whilst Schedule 4 of the Ordinance deals largely of registration matters in respect of a

certification mark, for the immediate purposes of the ground of opposition based on

section 12(3), it is noteworthy that a certification mark, by its very definition, is to

indicate that the goods or services in connection with which it is used are certified by

the owner of the sign in respect of origin, material, mode of manufacture of goods or

performance of services, quality, accuracy or other characteristics;2 furthermore,

section 2 of Schedule 4 provides that in relation to a certification mark, the reference

in section 3(1) of the Ordinance (meaning of "trade mark") to distinguishing goods or

services of one undertaking from those of other undertakings shall be construed as a

reference to distinguishing goods or services which are certified from those which are

not. I shall bear this in mind when assessing the likelihood of confusion between the

“SWISS/Swiss” certification mark and the subject mark.

1 The mark was originally registered as a certification trade mark under the now repealed Trade Marks

Ordinance, Cap. 43, which, by virtue of section 2 and section 18 of Schedule 5 of Cap. 559, is deemed

to have been transferred to the new register and registered as a certification mark under the Ordinance. 2 See section 62(1) of the Ordinance.

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The average consumer

30. 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

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.

31. In the present proceedings, since both the subject goods and the goods in

respect of which the opponent’s “SWISS/Swiss” certification mark is registered are or

include horological and chronometric instruments, I would say the relevant consumer

comprises members of the general public in Hong Kong who are interested in the

goods of horological and chronometric instruments. Typical goods of horological

and chronometric instruments such as clocks and watches can range from ordinary,

relatively inexpensive items of everyday wear to very expensive and infrequent

purchases. Whilst the average consumer of expensive clocks and watches will likely

pay higher attention to its selection, the position must also be considered from the

perspective of more ordinary clocks and watches, in selecting which the consumer

will pay just a normal degree of care and attention. Overall, consumers will

normally be taken to be reasonably well informed and reasonably observant and

circumspect. The purchasing of all these goods, whether through retail outlets or

order online, is a predominantly visual process, so visual aspects of the marks take on

more importance; but there may be some scope for aural or conceptual use of the

marks, so aural and conceptual aspects will not be overlooked in my comparison of

the marks.

Comparison of goods

32. 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

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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

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).

33. The comparison of the goods must concern the description of the goods

covered by the marks at issue and not the goods for which the trade marks are actually

used. 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.”

34. In this connection, since both the subject goods and the opponent’s goods are or

can all be included in the general category “horological and chronometric

instruments”, they are identical goods.

Comparison of marks

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

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).

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36. 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 analyse 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).

37. 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). But 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]).

38. It would be wrong, therefore, to artificially dissect the trade marks, although it

is necessary to take into account the distinctive and dominant components of the

marks and to give due weight to any other features which are not negligible and

therefore contribute to the overall impressions created by the marks.

39. In applying the above principles, the correct approach is to consider a notional

(or normal) fair use of the mark the subject of the application and a notional fair use

of the earlier mark, where the earlier mark is a registered mark.3 The marks to be

compared here are the opponent’s “SWISS/Swiss” certification mark and the subject

mark. I would first examine which components of the marks contribute to their

respective overall impressions made on the target public, before making a comparison

between the marks.

3 See Kerly’s Law of Trade Marks and Trade Names (“Kerly”), 15th Edition, at 9-084.

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40. The opponent’s “SWISS/Swiss” certification mark is in fact a plain word mark

of the word Swiss, represented as “SWISS” or “Swiss”, registered as a series of trade

marks in one registration.

41. Whilst the word Swiss, meaning “of or relating to Switzerland or its people”4,

may serve as a geographical indication and as such shall not be registered as a trade

mark by virtue of section 11(1)(c) of the Ordinance (absolute grounds for refusal of

registration), section 2 of Schedule 4 provides that notwithstanding section 11(1)(c), a

certification mark which consists of a sign which may serve, in trade or business, to

designate the geographical origin of goods or services may be registered. Hence the

opponent’s mark is registered as a certification mark, with the sole element ―

“SWISS” or “Swiss” ― constituting also its distinctive (in the aforesaid sense) and

dominant component.

42. On the other hand, the subject mark is a composite mark comprising the

following components: - a wings device and the word “Swissbernard”.

43. The word “Swissbernard” is not a dictionary word. Ms. Zhang representing

the opponent at the hearing accepted that there might be a breed of dog known or

referred to by that name. There is, however, nothing in the evidence filed to suggest

that. As apparent from my discussion at paragraph 50 below, I do not think

“Swissbernard” bears any descriptive meaning of the goods of horological and

chronometric instruments.

44. The wings device is stylized and do not seem to bear any descriptive

connotation to the goods of horological and chronometric instruments. It takes up

more than half of the subject mark and is above the word element. I have no doubt

that the device cannot be ignored in the overall impression of the subject mark.

45. Both the device and the word are distinctive elements of the subject mark.

Generally speaking, words that have at least some degree of distinctiveness will

normally speak louder than any accompanying graphical elements. Ms. Zhang also

cited the recent decision of the General Court of the European Union in Alpinestars

Research v OHIM [2015] ETMR 42 at [24] in support of this general proposition.

4 See Oxford Dictionaries at http://www.oxforddictionaries.com/us.

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But I also bear in mind what Sir Martin Nourse said in Budejovicky Budvar Narodni

Podnik v Anheuser-Busch Inc (BUD) [2003] RPC 25 at para.11 and 12:

“11 The judge also criticised Mr Salthouse for having sought to ascertain what was the central

message of the mark. For myself, I do not think that that was what Mr Salthouse did.

Paraphrasing somewhat, I understand him to have said that the distinctive feature of the mark

was the words Budweiser Bud-bräu and that the different fonts and the underlining of the word

Budbräu did not detract from, or add anything to, that distinctive feature. On that view of the

matter Mr Salthouse was doing precisely what s.46(2) [the UK equivalent of section 52(3)(a) of

the Ordinance] required him to do.

12 Mr Bloch accepted that, in relation to a particular mark, it is possible, as Mr Salthouse put it,

for the words to speak louder than the device. However, he said that it does not necessarily

follow that the entire distinctive character of the mark lies in the words alone. That too is

correct. But there is yet another possibility. A mark may have recognisable elements other than

the words themselves which are nevertheless not significant enough to be part of its distinctive

character; or, to put it the other way round, the words have a dominance which reduces to

insignificance the other recognisable elements. In my judgment, on a careful reading of Mr

Salthouse's decision, it was into that category that he put the Budweiser Budbräu mark. ...”

(italic added)

46. In my view, the subject mark in the present case does not fall into the

other-possibility category as mentioned in the above case. As regards the device

element and the word element, each makes a roughly equal contribution to the overall

impression, there is no single element which strongly dominates the subject mark.

Nevertheless, giving due regard to the generally accepted principle as discussed above,

the word “Swissbernard” may take on slightly more significance, but I cannot put it

higher than that.

47. Comparing the subject mark with the opponent’s “SWISS/Swiss” certification

mark, from the visual perspective, the different elements which contribute to their

overall impressions, as I have discussed above, obviously bring forward a number of

differences; the main ones being the addition of a visually significant device element

in the subject mark and the different word elements. The only common thing is the

existence of “Swiss”, but the element “Swiss” in the subject mark, in so far as

notional fair use of the mark is concerned, exists only as part and partial of the word

“Swissbernard” rather than being used alone, as it is in the opponent’s mark. Overall,

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the actual respective representations of the marks are strikingly different. I consider

that any visual similarity is of only a modest degree.

48. Aurally speaking, the subject mark will be referred to as “Swissbernard” and

the opponent’s mark as “Swiss”. Although they share the same common frontal part,

the “bernard” part of the subject mark would not go unnoticed. I consider there to be

moderate level of aural similarity.

49. From a conceptual perspective, the concept of the opponent’s mark is simply

“Swiss” serving as a geographical indication and functioning as a certification mark

indicating that the goods or services in connection with which it is used are certified

by the owner of the sign in respect of origin, material, mode of manufacture of goods

or performance of services, quality, accuracy or other characteristics “of or relating to

Switzerland”.

50. In terms of the subject mark, Ms. Zhang submitted that the abstract wings

device does not bring to mind any particular concept, which I agree. But I disagree

with Ms. Zhang’s further point that the conceptual meaning of the subject mark refers

back to Switzerland or Swiss origin. As I see, there is no good reason why people

would wish to dissect the word “Swissbernard” into two parts. Ms. Zhang conceded

that there might be a breed of dog known or referred to by that name – impliedly

suggesting that “Swissbernard” as a whole and independently might mean something.

But even if people do dissect the word to read it as “Swiss bernard”, “Swiss” in the

context might just be perceived to be qualifying “bernard”, for whatever “bernard” is

or means. It would therefore be a far cry from saying that “Swiss” would be

perceived to be referring to a geographical indication of the goods or services

concerned in the way “Swiss” forms the sole element of the opponent’s mark is. As

the two marks cannot be said to refer to the same concept, I consider that any

conceptual similarity is of only a very low degree.

Distinctiveness of the earlier mark

51. 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).

18

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

53. On the inherent distinctiveness of the earlier mark, “Swiss”, as I have discuss

above, means “of or relating to Switzerland or its people”. Its most likely meaning

in relation to the goods of horological and chronometric instruments, which usually

means watches or clocks, is that they come from Switzerland. Given that this

designates the geographical origin of the goods, it might not distinguish the goods of

one undertaking from those of other undertakings, in the normal functioning sense of

a trade mark.

54. But as I have also noted above, this “SWISS/Swiss” mark of the opponent’s is

registered in Hong Kong as a certification mark whose very function of distinguishing

goods or services of one undertaking from those of other undertakings shall,

according to section 2 of Schedule 4 of the Ordinance, be construed as to

distinguishing goods or services which are certified from those which are not. In

this sense, as I find the mark may be perceived to be indicating that the goods come

from Switzerland, this certainly distinguishes goods from goods that do not have such

indication, though one might not know from the mark itself whether that indication is

official and exclusive. I find it has good inherent distinctiveness.

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55. On the other hand, as far as the question of whether the “SWISS/Swiss” mark

has acquired an enhanced degree of distinctive character through use is concerned, the

answer has to be found from how the mark had been used, and this shall be gleaned

from the evidence the opponent has filed.

56. I have summarized the evidence at paragraphs 8 to 18 above. The opponent,

which is based in Switzerland and 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), as it so alleged, is currently the only trade

association representing the Swiss watch industry.

57. The opponent is said to be representing around 90% of all Swiss watch

manufacturers, working in close association with the Swiss Government and holding

functions to promote and protect the industry throughout the world. Among the

objectives of the opponent are to represent the sector as a whole, both in Switzerland

and abroad, to actively combat infringements of intellectual property and protect

Swiss geographical indications by registration of certification marks in places where

that prove necessary to achieve that aim. Hence registration of the mark

“SWISS/Swiss” as a certification mark in Class 14 for “horological and chronometric

instruments; watches; clocks; parts and fittings for the aforesaid goods” in Hong Kong

is in pursuance of its aim here.

58. Bugmann’s statutory declaration has several exhibits (Exhibit “YB-6” to

Exhibit “YB-9”) that contain materials showing watches bearing the “SWISS/Swiss”

mark had been imported and promoted in Hong Kong. The statutory declaration also

gives the value of watch exports to Asia (including Hong Kong) for the period

between 2003 and 2013 as well as the sale figure for exportation of Swiss watches

from Switzerland to Hong Kong for the period between January to September 2013,

all being substantial. As mentioned by the Chairman of the opponent (from the

article contained in Exhibit “YB-8”), Hong Kong is the region with the highest

imports of clocks and watches in the year 2007 worldwide (about USD 5,300 million).

All this underlines the wide extent of use of the mark as a certification of origin on

watches. The logical and natural consequence should be that the public would

acquire recognition and knowledge of and about the mark.

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59. However, before one comes to the conclusion that the “SWISS/Swiss” mark

has acquired an enhanced degree of distinctive character through such extensive use,

it has to be considered whether the fact of certification is apparent to an ordinary

purchaser. The reason I ask this is because, as I have pointed out above, it is a

condition of registration of the “SWISS/Swiss” certification mark in Hong Kong that

the mark shall not be used in any printed advertisements or printed publicity matter

directed primarily to the market in Hong Kong and in retail point of sale display

matter distributed by the opponent as the registered proprietor for use within Hong

Kong without indicating that it is a Certification Trade Mark. But looking at the

evidence of the opponent in the present proceedings, I could only find one or two

pieces of advertisements where the “SWISS/Swiss” mark was noticeably displayed,

whilst all that the rest of the advertisements or publicity matter would show are

merely pictures or photos of watches which have the words “Swiss made” engraved or

printed on the dial of the watch, without any indication that it is a certification mark.

In the rare case of seeing the word “Swiss” in the advertisement itself, no indication

could be found there suggesting that “SWISS/Swiss” is a certification mark.

60. If a purchaser did not know that “SWISS/Swiss” is a certification mark, and

only perceived that the mark serves to designate the geographical origin of the goods,

mere wide and extensive use of the mark on the goods itself without indicating that it

is a certification mark does not necessarily enhance its capability of indicating that

one or more characteristics of the goods are certified.5

61. Of course, product information may be obtained from inquiries to the

manufacturer or vendor, or be available to a purchaser who happens to deal with a

knowledgeable and co-operative seller or retailer, and this is frequently done before

goods of watches and clocks are purchased. The opponent currently has 450

members, representing around 90% of all Swiss watch manufacturers. Many of the

well-known watch makers are members of the opponent. As evidenced from the

advertisements or publicity matter, watches and clocks manufactured in Switzerland

bear the description “Swiss made” (or just “Swiss”) as well as the logo of the

producer or distributor, and this designation enjoy a solid reputation throughout the

5 Section 62(1) of the Ordinance provides that a certification mark is a sign indicating that the goods or

services in connection with which it is used are certified by the owner of the sign in respect of origin,

material, mode of manufacture of goods or performance of services, quality, accuracy or other

characteristics.

21

world. Mr. Bugmann’s allegation that watches that are “Swiss made” are not only

prominent and well-known in Switzerland but also internationally and in Hong Kong

is largely justified by the evidence filed. Bugmann’s statutory declaration also

contain materials that show the policy of and action taken by the opponent in

protecting all “Swiss” indications worldwide including Hong Kong.

62. Given all that, I come to the view that even though a purchaser might not know

the term and technical meaning of and about a certification mark, through the

enthused efforts of the opponent in using the “Swiss” mark to protect and develop the

Swiss watch industry, the mark has become in itself a unique and well recognised

signification of the Swiss origin of the goods, and that distinguishes the goods from

those that do not bear the mark.

63. Hence, as far as the question of whether the “SWISS/Swiss” certification mark

has acquired an enhanced degree of distinctive character through use is concerned, I

would hold that it has.

Likelihood of confusion

64. 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.

65. 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). I have found that the “SWISS/Swiss”

certification mark has acquired an enhanced degree of distinctive character through

use in respect of watches and clocks.

66. On the other hand, on comparing the subject mark with the “SWISS/Swiss”

certification mark, I have found that visually, aurally and conceptually, the two marks

are only of modest, and at most moderate, degree of similarity. Overall I would say

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they are of low degree of similarity.

67. In my view, despite the virtual identity of the goods involved and the enhanced

distinctiveness of the “SWISS/Swiss” certification mark acquired through use, given

the low degree of similarity between the marks in all respects, it is unlikely that

someone would purchase a watch or clock product bearing the subject mark in error,

confusing himself or herself with the “SWISS/Swiss” certification mark and think that

the subject mark would certify the goods as coming from Switzerland as the

“SWISS/Swiss” mark does.

68. Ms. Zhang pointed out that the applicant had annexed several photographs in

the Counter Statement depicting a pull-up banner and billboards/in store

advertisements showing use of the subject mark in conjunction with and directly

above the word “SWISS”, and alleged this use is likely to be confusing to consumers.

However, I have already indicated at paragraph 7 above that the attachments to the

Counter Statement filed on 18 January 2013 would not form any part of the evidence

in the present proceedings.

69. Ms. Zhang’s main point of argument in the present case is that the element

“bernard” will likely be overlooked in relation to the better understood and

well-known mark “Swiss” of the opponent’s, and hence it is likely that the average

consumers would consider that there is an economic link between the subject mark

and the opponent’s mark. I disagree. “Swissbernard” as a whole has no obvious

meaning, though as discussed above, it might be a breed of dog known or referred to

by that name, but there is no proof for that in evidence. Even if people would

perceive “Swissbernard” to be made up of “Swiss” and “bernard”, given that no

useful meaning could in any event be made of the expression “Swiss bernard”, and

“Swiss” in the context might just be perceived to be qualifying “bernard”, all I could

say is that the impact of the “Swiss” element in the overall impression of the subject

mark is very weak.

70. I should, perhaps, make it clear here, even though this is not a point pressed on

by Ms. Zhang, that I do not find the concept of “independent distinctive role” being in

play here. The concept seems to originate from the EU Case C-120/04 Medion AG v

Thomson Multimedia Sales Germany & Austria GmbH [2005] ECR I-8551 where, it

23

is said, it is quite possible that in a particular case an earlier mark used by a third party

in a composite sign still has an independent distinctive role in the composite sign,

without necessarily constituting the dominant element, and that, therefore, the overall

impression produced by the composite sign may lead the public to believe that the

goods or services at issue derive, at the very least, from economically-linked

undertakings, in which case the likelihood of confusion must be held to be established.

The concept of an “independent distinctive role” being played by an earlier mark in a

latter composite mark is also an analytical approach accepted by the courts and the

Trade Marks Registry of UK. More recent cases such as Whyte and Mackay Ltd v

Origin Wine UK Ltd [2015] E.T.M.R. 29 of the UK High Court; Pure Imports Ltd

Trade Mark Application (No.3007181) and L&D SA's Registration No.687463 of the

Appointed Persons of the UK Trade Marks Registry have more exposition of the

concept and its application. I do not propose to go into any details here, suffice to

say that for the reasons I set out at the preceding paragraph and at paragraph 50 above

why I find “Swissbernard” and “Swiss” simpliciter (i.e., the opponent’s certification

mark) are different concepts and unlike, I do not find the earlier mark “SWISS/Swiss”

of the opponent’s plays any “independent distinctive role” in the subject mark.

71. Taking into account all factors, I find that the ground of opposition under

section 12(3) fails.

Sections 11(4) of the Ordinance

72. Section 11(4) of the Ordinance provides as follows:

“(4) A trade mark shall not be registered if it is-

(a) contrary to accepted principles of morality; or

(b) likely to deceive the public.”

73. The ground upon which an objection under section 11(4) was based, according

to the Grounds of Opposition, is that the subject goods of the subject mark are

identical or similar to those goods covered by the “SWISS/Swiss” certification mark,

24

the use and/or registration of the subject mark is likely to deceive the public.6 It

appears only subsection (b) of section 11(4) is in issue.

74. It has been well established that section 11(4)(b), and section 11(4)(a) as well,

provides for circumstances where a mark is inherently contrary to accepted principles

of morality, or deceptive, when considered in the context of the goods applied for. It

is not intended to provide an alternative avenue of attack on relative grounds as

provided for in section 12 which deals with the “relative” rights of any parties (see for

example QS by S. Oliver Trade Mark [1999] R.P.C. 520 at 524; Ruefach Marketing

GmbH’s Application v. Oppositions of Codemarsters Ltd. [1999] E.T.M.R. 412 at

422-423). Given my analysis of “Swissbernard” above, I can see nothing inherent in

the subject mark which would make them open to objection under the terms of section

11(4)(a) or section 11(4)(b), opposition based on these two grounds must necessarily

fail.

Sections 11(5)(b) of the Ordinance

75. 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.

76. 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.”

6 Paragraph 9(c) of the Grounds of Opposition.

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77. 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)

78. 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.”

79. The position is succinctly summarised in the following passage in Melly’s Trade

Mark Application (Oppositions of Fianna Fail and Fine Gael) [2008] R.P.C. 20,

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

26

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)

80. At the hearing, Ms. Zhang submitted that a reasonable and experienced man in

the business of selling watches can reasonably be expected to know what a watch with

a “Swiss” indication entails. She further alleged that the applicant, who has been

engaged in the business of selling watches since at least as early as 2008, should be

familiar with the characteristics required for a “Swiss” indication for watches and

other chronometric instruments; in applying to register the subject mark, the applicant

acted dishonestly as he is deliberately misrepresenting the origin and characteristics of

the goods sold under or by reference to the subject mark.

81. All this may meet the “combined test” for determining dishonesty, if only the

subject mark shares a high degree of similarity with the “SWISS/Swiss” certification

mark, or at least “Swiss” has been found to have played an “independent distinctive

role” in the subject mark. But as I have discussed above in paragraph 70, this is not

the case. Lacking anything that could prompt a purchaser to think of the

“SWISS/Swiss” certification mark upon seeing the subject mark, there is no basis for

me to consider further whether a case of bad faith would have been made out.

82. I should mention that Ms. Zhang at the hearing had tried to argue this ground of

opposition based on material contained in the attachments to the Counter Statement

filed on 18 January 2013 and some other materials attached as Attachment 3 and

Attachment 4 to her “Skeleton Submissions of the Opponent” (filed for the purposes

of the hearing). I have indicated that the attachments to the Counter Statement

should not form part of the evidence in the present proceedings, similarly any material

which is not filed by way of statutory declaration or affidavit at the evidence stage

should also be rejected as forming any part of the evidence.

83. The ground of opposition under section 11(5)(b) has not been made out, it

therefore fails.

27

Sections 12(4) of the Ordinance

84. Section 12(4) of the Ordinance provides as follows:

“(4) Subject to subsection (6), a trade mark which is-

(a) identical or similar to an earlier trade mark; and

(b) proposed to be registered for goods or services which are not identical or

similar to those for which the earlier trade mark is protected,

shall not be registered if, or to the extent that, the earlier trade mark is entitled to

protection under the Paris Convention as a well-known trade mark and the use

of the later trade mark without due cause would take unfair advantage of, or be

detrimental to, the distinctive character or repute of the earlier trade mark.”

85. 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,

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

Paris Convention as a well-known trade mark.

86. I have discussed above about the opponent’s “SWISS/Swiss” certification mark

and the enhanced degree of its distinctiveness acquired through use. To put the

opponent’s case to the highest whilst avoiding having to repeat the points that have

largely been discussed before, I just presume here that the “SWISS/Swiss”

certification mark is a well-known trade mark and hence constitutes an earlier trade

mark for the purposes of section 12(4) of the Ordinance, and go on to examine the

other requirements of the section.

87. In Case C-292/00 Davidoff & Cie SA v Gofkid Ltd [2003] E.C.R. I-389 and

Case C-408/01 Adid-as-Salomon AG v Fitnessworld Trading Ltd [2003] E.C.R.

I-12537, the CJEU held that, although the wording of Article 5(2) of the Directive and

Article 9(1)(c) of the Regulation (both of which are similar, though not identical, to

section 12(4) of the Ordinance) refer to goods or services which are not similar to

those for which the mark is registered, this form of protection also extends to cases

where a sign which is identical with or similar to the trade mark is used in relation to

goods or services identical with or similar to those covered by the trade mark. The

Court of Justice also held in Adidas-Salomon AG that it is not necessary for the trade

28

mark proprietor to establish a likelihood of confusion in order to succeed in such a

claim.

88. In order for the qualified earlier mark succeed under section 12(4) of the

Ordinance, four requirements must be satisfied. The first is that the trade mark is well

known in Hong Kong. That I have presumed to be so.

89. The second is that there is a degree of similarity between the two marks which

need not be such as to give rise to a likelihood of confusion but may merely have the

effect that the relevant section of the public ‘establishes a link’ between them. In the

case Intel Corporation Inc v CPM United Kingdom Ltd [2009] R.P.C. 15, CJEU said

that the existence of such a link must be assessed globally, taking into account all

factors relevant to the circumstances of the case . Those factors include:

— the degree of similarity between the conflicting marks;

— the nature of the goods or services for which the conflicting marks were

registered, including the degree of closeness or dissimilarity between

those goods or services, and the relevant section of the public;

— the strength of the earlier mark's reputation;

— the degree of the earlier mark's distinctive character, whether inherent or

acquired through use;

— the existence of the likelihood of confusion on the part of the public.

90. Each of the above has been discussed somewhere above in this decision and I

do not see the need to repeat them here, suffice to say that, as I have found above,

despite the virtual identity of the goods involved and the enhanced distinctiveness of

the “SWISS/Swiss” certification mark acquired through use, given the low degree of

similarity between the marks in all respects, it is unlikely that someone would be

misled into thinking that the subject mark certifies goods coming from Switzerland as

the “SWISS/Swiss” mark does. It does not necessarily follow that the relevant

section of the public would not find the existence of a link between the two marks.

29

However, given the low degree of similarity as I have found, in particular, I have

discussed at paragraphs 50 and 70 above that I do not find “SWISS/Swiss” playing

any role in the subject mark, I do not see how I can come to a conclusion that the

relevant section of the public would establish a link between them.

91. I therefore hold that the second requirement under section 12(4) of the

Ordinance is not met. There is no point for me to go on to consider the third

requirement, namely the existence of one of three kinds of injury, nor the fourth

requirement, namely the use of the sign must be “without due cause”.

92. The ground of opposition under section 12(4) also fails.

Conclusion

93. 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

29 February 2016