Trade Marks Ordinance (Cap

TRADE MARKS ORDINANCE (CAP. 559)

APPLICATION FOR DECLARATION OF INVALIDITY OF TRADE MARK REGISTRATION NO. 303462408

MARK :

CLASS : 25

APPLICANT : PETIT BATEAU

REGISTERED OWNER : 共青城忠業服飾有限公司

______

STATEMENT OF REASONS FOR DECISION

Background

1. On 9 November 2016, PETIT BATEAU (“Applicant”) filed with the Registrar of Trade Marks an application (“Invalidation Application”) under the Trade Marks Ordinance (Cap. 559) (“Ordinance”) for a declaration of invalidity of the registration of the following mark (“subject mark”):

(Trade Mark No. 303462408).

2. Registration of the subject mark was granted on application for registration made on 3 July 2015 (“Filing Date”). The subject mark is registered as of that date in the name of 共青城忠業服飾有限公司 (“Registered Owner”) in respect of “Clothing, all included in Class 25” (“subject goods”).

3. According to Section 05 of the Form T6 filed by the Applicant on 9 November 2016, a copy of the Invalidation Application was served on the Registered Owner at its address for service on 9 November 2016. By a letter to the Registered Owner dated 28 November 2016, the Trade Marks Registry (“Registry”) pointed out, inter alia, that if no counter-statement were filed by the Registered Owner within the prescribed period, the Invalidation Application may be treated as being unopposed by the Registered Owner.

4. Since the Registered Owner has not filed any counter-statement within the prescribed period, the Invalidation Application is treated as being unopposed by the Registered Owner, as stated in the Registry’s letter dated 1 June 2017.

5. The Applicant’s evidence consists of a statutory declaration of Céline BERNIOT, Legal Director of the Applicant, made on 1 August 2018 (“Berniot’s Declaration”).

6. The hearing in respect of the Invalidation Application was fixed to take place before me on 9 July 2019. The Applicant did not file any notice of attendance at hearing (Form T12) and did not attend the hearing. I therefore proceed to decide the matter without a hearing pursuant to rule 75(b) of the TM Rules.

Grounds of the Invalidation Application

7. In the Invalidation Application, the Applicant states that it is the owner of the following trade marks (collectively, the “Applicant’s Marks”):

(i)

(“Mark 1”)

(ii)

(iii)

(iv)

(v)

8. The Applicant states that it has obtained registration of various of the Applicant’s Marks:

(i) in Hong Kong (details of which are set out in Annex 1 hereto); (ii) in Mainland China, Taiwan and Macau (details of which are set out in Annex 2 hereto); and (iii) in more than 30 countries or areas listed in Schedule C to the Invalidation Application.

9. The Applicant seeks to have the registration of the subject mark declared invalid under the following sections of the Ordinance:

(i) Sections 53(3) and 11(5)(b); (ii) Sections 53(5)(a) and 12(1) or 12(2); (iii) Sections 53(5)(a) and 12(3); and (iv) Sections 53(5)(b) and 12(5)(a).

Evidence of the Applicant

10. According to Berniot’s Declaration, the Applicant was established in France in 1954, and has been engaged in the provision of clothes, underwear, etc. (“Applicant’s Goods”), most of which are designed for babies and children. The name of the Applicant “PETIT BATEAU” is French, which means “small boat” in English.1

11. According to Berniot’s Declaration, a hosiery factory was opened in 1893 by the Applicant’s founder, Pierre Valton, in Troyes (near Paris in France), specializing in underwear, especially in underpants and vests. In 1918, Étienne Valton, the founder’s son, who was inspired by the nursery rhyme “Maman les p'tits bateaux” (“Mummy, do the little boats on the water have legs?”), invented underpants without legs. Étienne Valton

1 Berniot’s Declaration, paras 4-5. 3 was also inspired by this nursery rhyme for name of this new underwear, and registered

the mark “ ” in France in 1920.2

12. The Applicant stated that it first used the mark “ ” in France in 1954

upon its establishment, and the mark “ ” was designed by Mr. Olivier SAGUEZ, (a designer from the Applicant’s external design agency) in 2004 by following the concept

of “PETIT BATEAU” and sailing boat device from the mark “ ”.3 According to

the Applicant, it first used the mark “ ” (i.e. Mark 1) on the Applicant’s Goods in 2005 in France and Europe, which mark has since then been used by the Applicant in various other countries in the world.4

13. In Hong Kong, the Applicant first used Mark 1 on the Applicant’s Goods in November 2008. The Applicant and/or its distributors in Hong Kong have been selling the Applicant’s Goods bearing Mark 1 (i) at the shop at Ocean Terminal, Tsim Sha Tsui since November 2008, (ii) at the shop at New Town Plaza, Shatin since November 2011, and (iii) at the shop at Lee Garden, Causeway Bay since March 2013. Exhibit E to Berniot’s Declaration includes invoices issued since 2008 in respect of clothing products sold and delivered to these three shops.

14. According to Berniot’s Declaration, the sales figures of the Applicant’s Goods bearing Mark 1 by the Applicant and/or its distributors in Hong Kong during the period from 2008 to 2015 were between Euros 160,000 and Euros 1,200,000, and the annual estimated sales quantity over the same period were between 7,000 and 290,000 pieces per year.5

2 Berniot’s Declaration, paras 7-8. 3 Berniot’s Declaration, paras 9, 12. 4 Berniot’s Declaration, para. 13. 5 Berniot’s Declaration, paras 16-17. 4

15. Promotion of the Applicant’s Goods has been conducted by means of advertisements in magazines, newspapers, newsletter, television advertisements and websites, as well as sponsoring events, celebrity endorsements and distributing printed matter to customers. Exhibit F to Berniot’s Declaration includes copies of advertisements of the Applicant’s Goods in various magazines, newspapers and websites (such as “OURS”, “Three Weekly”, “Liza Living”, “Milk B”, “Smart Parents”, “Jessica Baby”, “Pacific News (Pacific Club)”, “Oriental Sunday”, “Donut”, “Whiz Kids Express”, “McDull’s Family Fun Guide to HK”, “TVB Weekly”, “Baby-Mo”, “Manifesto Magazine”, “The Sun”, “am730”, “Ming Pao Daily”, “HK Economic Journal”, “Headline Daily”, “Sing Tao Daily”, “Oriental Daily News”, “HK Daily News”, “Metro Daily”, “Sky Post”, “Apple Daily”, “HK Headline”, “Harbour City e-newsletter”, “she.com”, “on.cc”, “southcn.com”, “apple.nextmedia”, “babyface.hk”) as well as TV clippings during the period from 2013 to 2015. Marks of the Applicant appearing on the

advertisements include “ ” and “PETIT BATEAU”. In some of the advertisements in the Chinese language, it is stated that“PETIT BATEAU”means“小

帆船”(small sailing boat). This reinforces the idea of the logo “ ”. At some of the

events attended by celebrities that endorse the Applicant’s Goods, the mark “ ” in enlarged form is worn by the celebrities and appears repeatedly on wallpaper in the background.

The ground under sections 53(3) and 11(5)(b) of the Ordinance

16. The Applicant’s case is that the Applicant is the owner of the Applicant’s Marks including Mark 1; the subject mark is confusingly similar to the Applicant’s Marks, the subject goods are similar and/or identical to the Applicant’s Goods, and the Registered Owner’s application for registration of the subject mark was made in bad faith. The Applicant considers that as the Registered Owner is a corporate in Mainland China, it ought to be well aware of the business and trade mark of the Applicant there, especially since the Applicant’s Marks have been registered there since 2005. The Applicant also states that the sailing boat device is not common or usual in the relevant industries, and that given the similarity between the subject mark and the Applicant’s Marks, it is unlikely that the subject mark has been chosen randomly. The Applicant avers that by reason of the foregoing, the Registered Owner was not entitled to claim proprietorship in

5 the subject mark, the Registered Owner’s application for registration of the subject mark was made in bad faith, registration of the subject mark was contrary to section 11(5)(b) of the Ordinance and the registration should be declared invalid under section 53(3) of the Ordinance.

17. Section 53(3) of the Ordinance provides that:

“The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in contravention of section 11 (absolute grounds for refusal of registration).”

18. Section 11(5)(b) of the Ordinance provides, inter alia, as follows:

“(5) A trade mark shall not be registered if, or to the extent that – … (b) the application for registration of the trade mark is made in bad faith.”

19. In 深圳市德力康電子科技有限公司 v Joo-Sik-Hoi-Sa LG (LG Corporation) (unrep., HCMP 881/2013, 26 March 2014) (“De Li Kang case”), DHCJ B Chu (as she then was) set out the meaning and test of “bad faith” at paras 25-27 as follows:

‘25. There is no definition for the term “bad faith” in the Ordinance. The case of Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd [1999] RPC 367 has set out that it includes “dishonesty” and “some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined.”

26. In the English Court of Appeal case of Harrison’s Trade Mark Application [2005] FSR 10, Sir William Aldous in giving the leading judgment, quoting from Lord Hutton in Twinsectra Ltd v Yardly [2002] UKHL 12, had stated that:

“25. Lord Hutton went on to conclude that the true test for dishonesty was the combined test. He said:

‘36. Therefore I consider … That your Lordships should state that dishonesty requires knowledge by the defendant that what he was doing would be regarded as dishonest by honest people, although he should not escape a finding of dishonesty because he sets his own

standards of honesty and does not regard as dishonest what he knows would offend the normally accepted standards of honest conduct.’

26. For my part, I would accept the reasoning of Lord Hutton as applying to considerations of bad faith. The words “bad faith” suggested a mental test. When considering whether an application had been made in bad faith all the circumstances were relevant. The court had to decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as bad faith by persons adopting proper standards.”

27. In Ajit Weekly Trade Mark [2006] RPC 25, the Appointed Person had referred to the above cases and had further said that the subjective element of the combined test meant that the tribunal must ascertain what the defendant in that case knew about the transaction or other matters in question, and it must then be decided whether in the light of that knowledge, the defendant’s conduct was dishonest judged by ordinary standards of honest people, the defendant’s own standards of honesty being irrelevant to the determination of the objective element.’ (footnotes omitted)

20. A case of bad faith is not always established by way of direct evidence. Where circumstances are such that a conclusion that there has been copying is warranted, a bad faith claim may well succeed.6

21. In face of the serious allegation of bad faith set out in the Invalidation Application and referred to in paragraph 16 above, the Registered Owner has not denied knowledge of the Applicant’s Mark 1 and has not explained how it has come to adopt the subject mark. In fact, the Registered Owner has not denied any of the claims made by the Applicant.

22. The only reasonable inference that can be drawn in the circumstances is that the Registered Owner has adopted the subject mark which is highly similar to the prominent device “ ” in the Applicant’s Mark 1, with full knowledge of the Applicant’s rights in the mark. Taking into account all the relevant circumstances of this case, I consider that the Registered Owner’s decision to apply for registration of the subject mark would be regarded as in bad faith by reasonable and experienced men in the relevant field. I find

6 De Li Kang case, para. 31. 7 that the application for registration of the subject mark was made in bad faith, and that the subject mark was registered in contravention of section 11(5)(b) of the Ordinance.

23. For the above reasons, the registration of the subject mark is hereby declared invalid under section 53(3) of the Ordinance.

24. As I have found in favour of the Applicant on the ground under sections 53(3) and 11(5)(b) of the Ordinance, it is not necessary to consider the other grounds of the Invalidation Application.

Costs

25. As the Invalidation Application has succeeded, I award the Applicant costs. Subject to any representations, as to the amount of costs or calling for special treatment, which either party may make 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.

( Finnie Quek ) for Registrar of Trade Marks 1 November 2019

Annex 1 Applicant’s HK registered marks

Trade Mark Date of Class Mark Goods/Services No. registration No. 300360486 26-01-2005 25 Clothes made for men (people), women, children and babies, underclothes or underwear, pyjamas, skirts, trousers, shirts, headgear, socks, shoes (with the exception of the orthopaedic shoes), swimsuits, dresses, coats, jumpers, nightdresses; babies´ bibs (other than paper), babies´ dungarees and overalls.

303089214 04-08-2014 35 Demonstration of the goods; outdoor advertising; advertising; sales promotion for others; TV advertisement; Import-export agencies; commercial management assistance; direct mail advertising.

303273840 20-01-2015 25 Clothing, footwear, headgear, apparel; Ready-made clothing for men, women and children; knitwear and hosiery; lingerie, underwear, pyjamas, dressing gowns, bathrobes, sweaters, skirts, dresses, knickers, trousers, jackets, coats, furs (clothing), suits, shirts, layettes, ties, shawls, scarves, stoles, sashes, belts (clothing), gloves (clothing), bonnets, hats, caps; socks, stockings and tights; shoes (except orthopedic shoes), slippers, boots; bathing suits, bathing trunks and swimwear ; rainwear, raingear, namely raincoats and rain boots.

28 Games and playthings, card games, board games or table games; Checker sets and chess sets; Board games for adults and children; Lottery games; Games of chance, knowledge, skill and forecasting; Playing cards; Gymnastic and sporting articles (other than clothing, shoes and mats); Decorations for Christmas trees (except illumination articles and confectionery), toy masks, dolls, houses, beds, clothing and dolls' feeding bottles; Soft toys, Teddy bears, Soft toys (playthings) being transitional objects that are reassuring for children; Balls for games, play balloons; Marionettes; Spinning tops; Rocking horses.

35 Wholesale and Retailing services in respect of clothing, footwear, headgear, apparel, swimwear, pajamas, underwears, socks, belts and suspenders, scarves; gloves, hats and caps, raingear, raincoats, rain boots, games and playthings, gymnastics and sporting articles, decorations for Christmas trees, toys, stuffed toys, bags, jewelries, hair accessories, sunglasses, baby accessories and gears, bibs, baby gloves, blankets, gift sets, bath tubs, feeding bottles, dolls, baby bedding products, baby strollers, water bottles, towels, watches, umbrellas, stationeries; bringing together, for the benefit of others of a variety of goods, enabling customers to conveniently view and purchase those goods from a general merchandise Internet website or by means 9

Trade Mark Date of Class Mark Goods/Services No. registration No. of telecommunications; online retail services (e- commerce); advertising; business management; business administration; office functions.

303273859 20-01-2015 25 Clothing, footwear, headgear, apparel; Ready-made clothing for men, women and children; knitwear and hosiery; lingerie, underwear, pyjamas, dressing gowns, bathrobes, sweaters, skirts, dresses, knickers, trousers, jackets, coats, furs (clothing), suits, shirts, layettes, ties, shawls, scarves, stoles, sashes, belts (clothing), gloves (clothing), bonnets, hats, caps; socks, stockings and tights; shoes (except orthopedic shoes), slippers, boots; bathing suits, bathing trunks and swimwear ; rainwear, raingear, namely raincoats and rain boots.

303273868 20-01-2015 25 Clothing, footwear, headgear, apparel; Ready-made clothing for men, women and children; knitwear and hosiery; lingerie, underwear, pyjamas, dressing gowns, bathrobes, sweaters, skirts, dresses, knickers, trousers, jackets, coats, furs (clothing), suits, shirts, layettes, ties, shawls, scarves, stoles, sashes, belts (clothing), gloves (clothing), bonnets, hats, caps; socks, stockings and tights; shoes (except orthopedic shoes), slippers, boots; bathing

Trade Mark Date of Class Mark Goods/Services No. registration No. suits, bathing trunks and swimwear ; rainwear, raingear, namely raincoats and rain boots.

Annex 2

(A) Mainland China

Date of Date of International Trade Mark No. Mark Class No. application Registration G849158 24, 25, 28 15-06-2005 29-04-2005

G877079 25, 28 20-11-2007 05-01-2006

G1243397 25, 28 35 23-04-2015 21-01-2015

G1244857 25, 28, 35 30-04-2015 21-01-2015

G1245890 25, 28, 35 07-05-2015 21-01-2015

G1262194 35 27-08-2015 11-05-2015

(B) Taiwan

Trade Mark No. Mark Class No. Application Date Registration Date 01198466 25 01-03-2005 01-03-2006

Trade Mark No. Mark Class No. Date of application Date of Registration N/94440(348) 35 06-01-2015 13-10-2015

N/94598(888) 25 07-01-2015 27-07-2015

N/95357(701) 25 28-01-2015 10-08-2015

N/95358(450) 28 28-01-2015 10-08-2015

N/95359(416) 35 28-01-2015 10-08-2015

N/95360(024) 28 28-01-2015 10-08-2015

N/95361(308) 35 28-01-2015 10-08-2015

N/95362(009) 25 28-01-2015 10-08-2015

N/95595(516) 35 04-02-2015 25-09-2015