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Legal Update

An Extension of Goodwill to the Musical Name 雪狼湖

22 August 2011
Mayer Brown JSM Legal Update

Case Summary

In a recent opposition case, the Registrar of Trade Marks held that the Applicant acted in bad faith by applying to register "SOLOVE ???" as a trademark in various classes of goods and services, a decision favourable to the producer of the local musical ??? (or the Opponent)who does not have "???" registered as a trademark in the same classes of goods and services but has succeeded to defend the mark from third parties' registration on the basis of the fame and reputation in the musical name ??? accrued in Hong Kong. The Opponent has demonstrated reputation and goodwill through use of the name ??? on souvenirs (T-shirts, windbreaker, mouse pads, binoculars, mugs, watches, telephone cards) and music CDs with an impressive sales of 240,000 copies in Hong Kong and over 600,000 copies worldwide.

The application knocked down by the opposition was filed on 13 May 2006, the relevant date for the Registrar to consider the merits of the opposition. The musical ??? was first staged in Hong Kong on 28 March 1997 for 43 consecutive shows. The musical was then performed seven shows in Singapore from 21 November 1997. The mandarin version of the show was staged in over 20 provinces in China between December 2004 and January 2006 for 54 shows and during this interim period, six shows were staged in Hong Kong. The musical was also performed in Zhengzhou Province of China, where the Applicant resides.

Decision

The Registrar ruled the opposition in favour of the Opponent under section 11(5)(b) of the Trade Marks Ordinance which provides that an application to register a trade mark shall be rejected if it is made in bad faith. The English case law suggests that "bad faith includes dishonesty and 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". The Registrar held that the Applicant had knowledge of the existence of the Opponent and its mark at the time he filed the application to register the opposed mark and the Applicant's intention to ride on the fame and reputation of the Opponent's trademark and the musical ??? is clear, and such behaviour on the part of the Applicant would be seen as an act of bad faith by those applying the reasonable man test.

Significance

It is a welcoming decision to owners of unregistered trade marks and trade names whose rights may be usurped or taken unfair advantage of by third parties in bad faith. It is believed that well-known or legendary movie and musical titles would be entitled to equivalent protection and recognition. From our experience, the Registry generally imposes a high burden for the claimant to prove the element of bad faith. The facts of the present case are peculiar. If the Applicant had filed the application in 2011 instead of in May 2006, the Registrar might not have been so liberal to extend the Common Law protection to the musical title ??? given the musical was last shown in 2006.

For inquiries related to this Legal Update, please contact the following persons or your usual contacts with our firm.

Benjamin Choi ( )

Learn more about our Hong Kong office and Intellectual Property practice.

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