On 12th March 2009 the registrar of trademarks declared invalid a registration for the trademark DEERLU (picture 1) in Class 25 obtained by French Dunhill Clothing & Accessories Limited, a Hong Kong limited liability company, following an application for a declaration of invalidity filed by Alfred Dunhill Limited.
The trademark DEERLU was registered by French Dunhill on 30th October 2003 in Class 25 in respect of "clothing, shoes, hats" under Registration 300102905. On 8th June 2005 Alfred Dunhill relied on its trademark rights (including Registration 19913358 for DUNHILL (picture 2) registered on 26th May 1990 in Class 25 in respect of “clothing, footwear, headgear”) to apply for a declaration of invalidity of French Dunhill’s mark. The registrar found French Dunhill’s registered goods to be identical to some of Alfred Dunhill’s registered goods.
In the decision of 12th March 2009, the registrar considered only the grounds of invalidation pleaded by Alfred Dunhill under Sections 12(3) and 53(5)(a) of the Trademarks Ordinance (Cap 559).
Section 53(5)(a) of the ordinance provides that:
“the registration of a trademark may also be declared invalid on the ground-
(a) that there is an earlier trademark in relation to which the conditions set out in section 12(1), (2) or (3) (relative grounds for refusal of registration) apply.”
Further, Section 12(3) provides that:
“A trademark shall not be registered if-
(a) the trademark is similar to an earlier trademark;
(b) the goods or services for which the application for registration is made are identical or similar to those for which the earlier trademark is protected; and
(c) the use of the trademark in relation to those goods or services is likely to cause confusion on the part of the public.”
Registration of a trademark will be prohibited by Section 12(3) if the trademark is likely to cause confusion on the part of the public due to its similarity to an earlier trademark and its registration in respect of goods or services identical or similar to those registered under an earlier trademark.
Alfred Dunhill’s mark is a rare surname in Hong Kong which is inherently distinctive of its registered Class 25 goods. The stems of the letters “d”, “h” and “l” in Alfred Dunhill’s mark are particularly elongated. According to the registrar, the four elongated stems catch the eye and contribute to the highly distinctive character of Alfred Dunhill’s mark. There is a greater likelihood of confusion where the earlier trademark has a highly distinctive character either per se or because of the use that has been made of it.
The registrar also noted that the stems in the letters “d”, “r” and “u” in French Dunhill’s mark are also particularly elongated and are also eye-catching.
An average consumer is more likely to remember the distinctive and dominant components in a trademark (ie, the four stems in both marks) as they strike the consumer at first glance. The registrar found that the elongated stems in the respective marks of Alfred Dunhill and French Dunhill caught the eye and occupied similar relative positions in the marks. The structures of the two marks were very similar. Applying the global appreciation test, the registrar concluded that the overall impressions created by the two marks were also very similar, despite the phonetic difference.
In arriving at his decision, the registrar considered that French Dunhill’s goods were identical to some of Alfred Dunhill’s goods and the degree of distinctiveness of Alfred Dunhill’s mark was high. Taking into account that the overall impressions created by the two marks were very similar, the registrar held that when French Dunhill’s mark was used in relation to Class 25 goods in a normal and fair manner, the average consumer would be confused into thinking that the goods of French Dunhill and Alfred Dunhill came from the same or from economically linked undertakings. Pursuant to Sections 12(3) and 53(5)(a) of the ordinance, the registrar declared French Dunhill’s mark invalid.