Successfully opposing a trade mark application on the basis of pre-existing unregistered trade mark rights is notoriously difficult in Hong Kong, but the VIVO case* shows how it can be done.
We were able to help our client, Garmin Switzerland GMBH (“Garmin”), establish both goodwill and reputation in Garmin’s family of VIVO-formative marks, and the Trade Marks Registry found that use of the VIVO mark will likely cause confusion.
BBK Electronics (“BBK”), a Chinese company known in China for its VIVO branded smartphones and portable electronic devices, applied to register the VIVO mark in Class 9 in Hong Kong.
Garmin, a leading company specializing in GPS technology and promoting its products under various brand names beginning with VIVO e.g. VIVOFIT, VIVOSMART, VIVOACTIVE and VIVOMOVE, opposed the application on the grounds of passing-off, that its marks are well-known and bad faith.
In particular, section 12 (5) (a) of the Hong Kong Trade Marks Ordinance protects an unregistered mark under the law of passing off. To establish the ground of passing off, we had to show three key elements:
(i) Goodwill and reputation
Garmin was able to establish that it had been using its various VIVO and VIVO-formative marks on smart watches, wrist bands and activity trackers in Hong Kong since 2014, almost two years earlier than the application date of the disputed mark. Based on the evidence filed, the Hearing Officer was satisfied that Garmin had established goodwill and reputation in its various VIVO and VIVO-formative marks.
Given the high degree of similarity, both visual and aural, between the parties’ marks and products, and BKK’s products are complimentary with Garmin’s and sold through the same channels, misrepresentation was also established. BKK’s use of the disputed mark in mainland China was held to be irrelevant.
As a result of the above two findings, it was found that there was a likelihood of damage suffered by Garmin.
A successful opposition based on unregistered trade mark rights require strong evidence to establish goodwill in the mark before the date of the application of the disputed mark.
Therefore, brand owners should ensure they have procedures in place to collect and maintain records of use of their marks. These include: dates and records of product packaging; sales invoices listing the branded products; relevant catalogues or brochures; advertisements with dates and publication details; printouts of websites with dates showing sales or promotions. In addition, the evidence being collected should be specific to Hong Kong and, if possible, show continuous and extensive sales and promotion of the branded products/services.
*Case: Opposition against App. No. 303797579 for  HKTMR 40
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Authors: Theresa Mak, Vivian Yau