DOCSLIB.ORG

Translating Trademarks: Towards the Equal Treatment of Foreign- Language Marks Ung Shen Goh

Total Page：16

File Type：pdf, Size：1020Kb

Download full-text PDF Read full-text
Translating Trademarks: Towards the Equal Treatment of Foreign- Language Marks Ung Shen Goh Osgoode Hall Law School of York University Osgoode Digital Commons PhD Dissertations Theses and Dissertations 3-6-2018 Translating Trademarks: Towards the Equal Treatment of Foreign- Language Marks Ung Shen Goh Follow this and additional works at: https://digitalcommons.osgoode.yorku.ca/phd Part of the International Law Commons, and the International Trade Law Commons Translating Trademarks: Towards the Equal Treatment of Foreign-Language Marks Ung Shen Goh A DISSERTATION SUBMITTED TO THE FACULTY OF GRADUATE STUDIES IN PARTIAL FULFILLMENT OF THE REQUIRMENTS FOR THE DEGREE OF DOCTOR OF PHILOSOPHY Graduate Program in Law York University Toronto, Ontario March 2018 © Ung Shen Goh, 2018 ABSTRACT Part A of this dissertation tells the story of The Coca-Cola Company‟s trademark registrations in Canada in order to illustrate the linguistic issues faced by trademark administrators. A trademark‟s registrability depends on its distinctiveness, which is its ability to can distinguish its trader‟s goods and services from those of another trader. Knowing how well a trademark will function to distinguish means ascertaining first what has already been registered, which is no easy task when the databases cannot administer foreign-language marks that are not Romanized. Part A proposes the solution of transcribing foreign-language marks that are not Romanized, so they can be filed/searched appropriately in databases. Part B of this dissertation tells the story of two competing Chinese bakeries in Canada in order to illustrate the linguistic struggles of the judiciary. These struggles are nothing new, as academics have noted that “[l]ong before the introduction of the registration system [by what was then England in 1875], owners of marks containing terms in foreign languages or scripts could in certain circumstances prevent their use by trade rivals” and that by 1905 English and North American case law “has been fruitful of conflicting holdings.” What is new in the 21st Century is the increasing frequency of foreign-language marks that are not Romanized, as the added complexity of foreign scripts makes it harder for courts to assess and compare trademarks that they cannot even read or sound out, much less understand. Part B proposes the solution of assuming linguistic knowledge for all foreign-language marks, so they can be assessed and compared appropriately in the case law. ii DEDICATION To Dr. Ling Goh: Beloved sister, Forever friend, and Consummate cheerleader! iii ACKNOWLEDGEMENTS Supervisory Committee: Professor David Vaver (C.M.), Supervisor Dr. Carys Craig, Osgoode Hall Law School Professor Wee Loon Ng-Loy, National University of Singapore Examination Committee: Dr. Saptarishi Bandopadhyay, Chair Dr. Catherine Ng, University of Aberdeen Dr. Carys Craig, Osgoode Hall Law School Professor Eileen Fischer, Schulich School of Business Professor David Vaver (C.M.), Osgoode Hall Law School iv TABLE OF CONTENTS ABSTRACT ……………………………………………………………………………………. ii DEDICATION ………………………………………………………………………………….. iii ACKNOWLEDGEMENTS …………………………………………………………………….. iv TABLE OF CONTENTS ………………………………………………………………………... v INTRODUCTION ………………………………………………………………………………. 1 CHAPTER 1: ADMINISTRATIVE PROBLEM ……………………………………………….. 7 1.1 The Problem of Classifying Foreign-Language Marks that are not Romanized ………... 7 1.2 The Problem is Widespread in Canada ……………………………………………….... 12 1.3 The Problem is Widespread Internationally ………………………………………….... 16 CHAPTER 2: ADMINISTRATIVE SOLUTION ……………………………………………... 20 2.1 The Solution of Transcribing Foreign-Language Marks that are not Romanized ……... 20 2.2 The Solution as Illustrated by the Foreign-Language Marks for COCA-COLA ………. 21 CHAPTER 3: ADMINISTRATIVE ALTERNATIVES ………………………………………. 29 3.1 Classify as Design Marks Because not in an Official Language ………………………. 29 v 3.2 Classify as Design Marks Because not in a Romanized Language ……………………. 32 3.3 Classify as Word Marks by Transcribing Every Dialect ………………………………. 36 3.4 Classify as Word Marks by Having Fluent Examiners ……………………………….... 39 CHAPTER 4: JUDICIAL PROBLEM ……………………………………………………….... 44 4.1 The Problem as Illustrated by Two Chinese Bakeries in Canada …………………….... 44 4.2 The Problem of Proving Linguistic Knowledge ……………………………………….. 50 4.3 The Problem of Proving Linguistic Knowledge Creates Inequality in Canada ………... 58 4.4 The Problem of Proving Linguistic Knowledge Lacks Statutory Basis in Canada ……. 64 CHAPTER 5: JUDICIAL SOLUTION ………………………………………………………... 68 5.1 The Solution of Assuming Linguistic Knowledge ……………………………………... 68 5.1.1 Assessing for Distinctiveness ………………………………………………….. 70 5.1.2 Comparing for Confusion …………………………………………………….... 74 5.1.2A Comparing for Confusion with Translations …………………………………... 77 5.1.2B Comparing for Confusion with Transliterations ……………………………….. 80 CHAPTER 6: JUDICIAL ALTERNATIVES …………………………………………………. 86 6.1 American Doctrine of Foreign Equivalents ……………………………………………. 86 6.1.1 Comparing English to a Foreign Language ……………………………………. 92 6.1.2 Comparing the Same Foreign Languages …………………………………….... 93 6.1.3 Comparing Different Foreign Languages …………………………………….... 95 6.1.4 Multiple Meanings Discourage Translation ……………………………………. 97 vi 6.1.5 Marketplace Meaning Discourages Translation ……………………………….. 98 6.1.6 Language Combination Discourages Translation …………………………….... 98 6.2 European Approach …………………………………………………………………... 100 6.2.1 Official & Working Languages ………………………………………………. 101 6.2.2 Indigenous, Regional & Minority Languages ……………………………….... 103 6.2.3 Foreign Languages ……………………………………………………………. 104 6.3 Chinese Approach …………………………………………………………………….. 105 6.3.1 Example of TRUMP ………………………………………………………….. 106 6.3.2 Example of JORDAN ……………………………………………………….... 109 CHAPTER 7: LINGUISTIC KNOWLEDGE ………………………………………………... 114 7.1 Registrability of Trademarks …………………………………………………………. 114 7.1.1 Names or Surnames …………………………………………………………... 115 7.1.2 Distinctiveness of Trademarks ………………………………………………... 117 7.1.2.1 Inherently Distinctive Marks …………………………………………. 119 7.1.2.2 Suggestive Marks ……………………………………………………... 120 7.1.2.3 Descriptive/Misdescriptive Marks ……………………………………. 120 7.1.2.4 Generic Marks ……………………………………………………….... 121 7.1.3 Confusion of Trademarks …………………………………………………….. 122 7.1.3.1 Reference Sources …………………………………………………….. 123 7.1.3.2 Social Influences …………………………………………………….... 124 vii 7.1.3.3 Government Documents …………………………………………….... 126 7.1.3.4 Corporate Materials …………………………………………………... 128 7.1.3.5 Expert Witnesses …………………………………………………….... 129 7.1.3.6 Lay Testimonies ………………………………………………………. 129 7.1.3.7 Translations vs Transliterations ………………………………………. 130 7.1.4 Prohibited Marks …………………………………………………………….... 132 7.1.5 Plant Breeders‟ Rights Act ……………………………………………………. 136 7.1.6 Geographical Indications ……………………………………………………... 137 7.1.7 Olympic and Paralympic Marks Act ………………………………………….. 138 7.2 Rights of (Limits/Defences to) Registration ………………………………………….. 138 7.2.1 Right against Infringement ………………………………………………….... 142 7.2.1.1 Rights without End ………………………………………………….... 144 7.2.1.2 Rights without Exceptions ……………………………………………. 149 7.2.1.3 Rights without Responsibilities ………………………………………. 153 7.2.2 Right against Depreciation ……………………………………………………. 154 7.2.2.1 Dilution of Trademark ………………………………………………... 156 7.2.2.2 Dilution of Goods and Services ………………………………………. 161 7.2.2.3 Dilution of Use ………………………………………………………... 165 7.2.2.4 Dilution of Territory ………………………………………………….. 171 7.2.3 Right to License ………………………………………………………………. 173 7.2.4 Right to Translate ……………………………………………………………... 177 7.2.4.1 Dilution by Blurring …………………………………………………... 179 viii 7.2.4.2 Dilution by Tarnishment …………………………………………….... 181 7.2.4.3 Free Riding ……………………………………………………………. 182 CONCLUSION ……………………………………………………………………………….. 186 BIBLIOGRAPHY …………………………………………………………………………….. 188 ix INTRODUCTION Law is a social construct that often features fictitious characters. Criminal law applies the standard of the reasonable person to establish criminal negligence.1 Civil law applies the same standard to establish tort liability for negligence.2 Intellectual property law also has its legal fictions. Patent law imagines a person skilled in the art to assess non-obviousness.3 Copyright law imagines a similar person or a lay person to assess copying,4 as well as the author to assess originality.5 Trademark law imagines the consumer to assess confusion.6 The trademark consumer is split into further fictitious characters, which is where the social construct starts to fall apart because the fictitious characters are arbitrarily given contradictory personalities. Examples include the sovereign versus the fool; 7 the passive 1 R v Hill, [1986] 1 SCR 313 at 324-325 (“The criminal law is concerned among other things with fixing standards for human behavior. We seek to encourage conduct that complies with certain societal standards of reasonableness and responsibility. In doing this, the law quite logically employs the objective standard of the reasonable person.”). 2 Vaughan v Menlove, (1937) 132 ER 490 (CP) (“The care taken by a prudent man has always been the rule laid down; … Instead, therefore, of saying that the liability for negligence should be co-extensive with the judgment of each individual, which would be as variable as the length of the foot of each individual, we ought rather to adhere to the rule which requires in all cases a regard to caution such as a man of ordinary prudence would observe.”). 3 Beloit Canada Ltd v Valmet Oy (1986), 8 CPR (3d) 289 at 294 (“The question to be asked is whether
Load more

Recommended publications
  • EXPERT DETERMINATION LEGAL RIGHTS OBJECTION Merck & Co
    ARBITRATION AND MEDIATION CENTER EXPERT DETERMINATION LEGAL RIGHTS OBJECTION Merck & Co, Inc. v. Merck KGaA Case No. LRO2013-0068 1. The Parties Objector/Complainant is Merck & Co, Inc., United States of America, represented by Reed Smith LLP, United States of America. Applicant/Respondent is Merck KGaA, Germany, represented by Bettinger Schneider Schramm, Germany. 2. The applied-for gTLD string The applied-for gTLD string is <.emerck> (the “Disputed gTLD String”). 3. Procedural History The Legal Rights Objection (“LRO”) was filed with the WIPO Arbitration and Mediation Center (the “WIPO Center”) on March 13, 2013 pursuant to the New gTLD Dispute Resolution Procedure (the “Procedure”). An amended Objection was filed with the WIPO Center on March 27, 2013. In accordance with Article 9 of the Procedure, the WIPO Center has completed the review of the Objection on March 28, 2013 and has determined that the Objection complies with the requirements of the Procedure and the World Intellectual Property Organization Rules for New gTLD Dispute Resolution for Existing Legal Rights Objections (the “WIPO Rules for New gTLD Dispute Resolution”). In accordance with Article 11(a) of the Procedure, the WIPO Center formally notified Applicant of the Objection, and the proceedings commenced on April 16, 2013. In accordance with Article 11(b) and relevant communication provisions of the Procedure, the Response was timely filed with the WIPO Center on May 15, 2013. The WIPO Center appointed Willem J.H. Leppink as the Panel in this matter on June 14, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the WIPO Center to ensure compliance with Article 13(c) of the Procedure and Paragraph 9 of WIPO Rules for New gTLD Dispute Resolution.
    [Show full text]
  • Notes of the Twenty-Second Meeting Held on 22
    Centre for Food Safety Food and Environmental Hygiene Department Notes of the Twenty-second Meeting of the Trade Consultation Forum held on 22 February 2010 at 2:30 p.m. in Room 105, 4 Hospital Road, Sai Ying Pun, Hong Kong Present Government Representatives Dr. Y. Y. HO Consultant (Community Medicine) (Chairman) (Risk Assessment & Communication) Dr. Anne FUNG Principal Medical Officer (Risk Assessment & Communication) Mr. C. W. TAM Senior Superintendent (Centre for Food Safety)2 Dr. Y. XIAO Food Safety Officer ((Risk Assessment)1 Mr. K. M. LIU Superintendent (Import/Export)3 Miss Melissa LIU Scientific Officer (Nutrition Labelling) Ms. Janny MA Scientific Officer (Food Additive) Mr. K. W. CHUNG Chief Health Inspector (Food Labelling) Mr. H. M. WONG Superintendent (Risk Communication) (Notes-taker) Trade Representatives Ms. Nicole LO 7 - Eleven HK Mr. Justin WONG 7 - Eleven HK Ms. Alison MAK A Top Consultants Ltd Ms. Lucilla LEUNG Abbott Laboratories Ltd Ms. Janice WONG AEON Stores (Hong Kong) Co., Limited Ms. Chloe LEUNG AIC Merchandising (Japan) Ltd. Ms. Caroline YUEN American Consulate General Hong Kong Mr. Raymond YAM Arome Bakery Ms. Zoe WO Arome Bakery Mr. LI Chun Shing Bayern Gourmet Food Co., Ltd Mr. Arist WONG BKT Groups Limited Ms. Ming CHEUNG Campbell Soup Asia Ltd Ms. Samantha TSANG China Resources Retail (Group) Co., Ltd Mr. Dennis CHAN City Super Limited Ms. Grace YEE City Super Limited Ms. May KAN Coca-Cola China Ltd Ms. Caroline HO Coffee Concepts HK Ltd. Ms. NG Wai Kee Fairwood Holdings Limited Mr. Freddy FONG Foodscan Analytics Ltd Ms. Jeannie LOK Four Seas Mercantile Ltd.
    [Show full text]
  • Mere Allegations of Bad Faith Insufficient Under UDRP, Even in Obvious Cybersquatting Cybersquatting Cases International - Hogan Lovells LLP
    Mere allegations of bad faith insufficient under UDRP, even in obvious Cybersquatting cybersquatting cases International - Hogan Lovells LLP June 10 2013 In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP), the panel has held that the mere registration of domain names consisting of obvious misspellings of a trademark, without supporting evidence of bad-faith registration and use, is insufficient to obtain the transfer of the domain names. The complainant, Ticket Software LLC (Connecticut, United States), owned the US trademark TICKETNETWORK (Registration No 2,956,502), registered on May 31 2005 and used in connection with computer software for the purchase and sale of entertainment tickets. The complainant operates a website at ‘www.ticketnetwork.com’, where it has created an online marketplace for sale of entertainment tickets. The respondent was Stephen Troy, a private individual from Florida, United States, who had registered the domain names ‘ricketnetwork.com’, ‘ticketneteork.com’, ‘ticketnetwirk.com’, ‘ticketnetworj.com’ and ‘tivketnetwork.com’ using a proxy service provided by the domain name registrar. The domain names were registered on January 13 2011 and did not point to an active website. The complainant contended that the respondent had engaged in typosquatting, given that the domain names consisted of common typographical errors made by internet users when attempting to reach the complainant's official website, and thus filed a complaint under the UDRP to recover the domain names. To be successful in a complaint under the UDRP, a complainant must satisfy all of the following three requirements: l The domain name is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights; l The respondent has no rights or legitimate interests in respect of the domain name; and l The domain name has been registered and is being used in bad faith.
    [Show full text]
  • Introduction to Trademark Law and Practice
    WORLD INTELLECTUAL PROPERTY ORGANIZATION INTRODUCTION TO TRADEMARK LAW & PRACTICE THE BASIC CONCEPTS A WIPO TRAINING MANUAL GENEVA 1993 (Second Edition) ( ( WIPO PUBLICATION No 653 (El ISBN 92-805-0167-4 WIPO 1993 PREFACE The present publication is the second edition of a volume of the same title that was published by the World Intellectual Property Organization (WIPO) in 1987 and reprinted in 1990. The first edition was written by Mr. Douglas Myall, former Assistant Registrar of Trade Marks, United Kingdom. The present revised edition of the publication has been prepared by Mr. Gerd Kunze, Vevey, Switzerland, and reflects his extensive expertise and experience in the administration of the trademark operations of a large international corporation, Nestle S. A., as well as his intensive involvement, as a leading representative of several international non-governmental organizations, in international meetings convened by WIPO. This publication is intended to provide a practical introduction to trademark administration for those with little or no experience of the subject but who may have to deal with it in an official or business capacity. Throughout the text, the reader is invited to answer questions relating to the text. Those questions are numbered to correspond to the answers that are given, with a short commentary, in Appendix I. Arpad Bogsch Director General World Intellectual Property Organization February 1993 ( ( LIST OF CONTENTS CHAPTER 1. TRADEMARKS AND OTHER SIGNS: A GENERAL SURVEY 7 1.1 Use of trademarks in commerce . 9 1.2 What is a trademark?. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. 9 1.3 Need for legal protection .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. 10 1.4 How can a trademark be protected? .
    [Show full text]
  • In the United States District Court for the Northern District of Illinois Eastern Division Mirza N. Baig and Blue Springs )
    Case: 1:08-cv-04206 Document #: 195 Filed: 09/24/14 Page 1 of 21 PageID #:<pageID> IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION MIRZA N. BAIG AND BLUE SPRINGS ) WATER CO., ) ) Plaintiffs, ) ) Case no. 08-cv-4206 v. ) ) Hon. John Z. Lee THE COCA-COLA COMPANY, ) ) Defendant. ) MEMORANDUM OPINION AND ORDER Plaintiffs Mirza Baig and Blue Springs Water Co. allege that Defendant The Coca-Cola Company has infringed upon Plaintiffs’ trademark for “Naturally Zero” spring water through its use of the mark “ZERO” in connection with products such as “Sprite ZERO.” Plaintiffs argue under U.S. trademark law and Canadian trademark law that Defendant’s use of the “ZERO” mark results in reverse confusion to consumers. Defendant denies all wrongdoing and has counterclaimed seeking a declaratory judgment that, inter alia, it has neither infringed nor misappropriated any of Plaintiffs’ trademark rights. Defendant now moves for summary judgment, arguing that Plaintiffs have abandoned their trademark for “Naturally Zero,” and even if not, that the mark is not entitled to protection. For the reasons set forth below, the Court grants Defendant’s motion, enters judgment in its favor on Count[s] I of Plaintiffs’ Complaint, and dismisses Count II without prejudice. Case: 1:08-cv-04206 Document #: 195 Filed: 09/24/14 Page 2 of 21 PageID #:<pageID> Facts1 Plaintiff Mirza N. Baig (“Baig”) was the principal, President, and sole owner of plaintiff Bluesprings Water Co. (“Bluesprings”). Def.’s LR 56.1(a)(3) Stmt. ¶ 1. Bluesprings was a corporation organized under the laws of the State of Illinois; it is no longer in good standing with the Illinois Secretary of State office.
    [Show full text]
  • Annual Report 2018
    (Incorporated in the Cayman Islands with limited liability) Stock Code: 00831 ANNUAL REPORT 2018 PRINTED ON POST-CONSUMER WASTE RECYCLED PAPER Japanese actress Ms Kiko Mizuhara (centre right) officiated the grand opening for Zoff’s Langham Place store. Contents Corporate Information 2 Highlights 3 Chairman’s Statement 5 CEO’s Statement 8 Management Discussion and Analysis 15 Corporate Governance Report 22 Directors and Senior Management Profile 42 Information for Investors 47 Directors’ Report 48 Independent Auditor’s Report 62 Consolidated Profit and Loss Account 68 Consolidated Statement of Comprehensive Income 69 Consolidated Balance Sheet 70 Consolidated Statement of Changes in Equity 72 Consolidated Cash Flow Statement 73 Notes to the Consolidated Financial Statements 74 Ten-Year Financial Summary 128 Convenience Retail Asia Limited Annual Report 2018 1 Corporate Information Executive Directors Head Office and Principal Place of Business Richard YEUNG Lap Bun (Chief Executive Officer) 15th Floor, LiFung Centre PAK Chi Kin (Chief Operating Officer) 2 On Ping Street Siu Lek Yuen Shatin Non-executive Directors New Territories Victor FUNG Kwok King # (Chairman) Hong Kong William FUNG Kwok Lun + Godfrey Ernest SCOTCHBROOK * Benedict CHANG Yew Teck * Website www.cr-asia.com Independent Non-executive Directors Malcolm AU Man Chung +* Legal Advisers Anthony LO Kai Yiu #* Mayer Brown ZHANG Hongyi #+* (as to Hong Kong Law) Sarah Mary LIAO Sau Tung + Conyers Dill & Pearman, Cayman (as to Cayman Islands Law) Group Chief Compliance and Risk Management Officer Jason YEUNG Chi Wai Auditor PricewaterhouseCoopers Certified Public Accountants Company Secretary Maria LI Sau Ping Principal Banker The Hongkong and Shanghai Registered Office Banking Corporation Limited P.O.
    [Show full text]
  • Special 301 Trademark Working Group Special 301 Submission for 2014
    Special 301 Trademark Working Group Special 301 Submission For 2014 Background of the Trademark Working Group: The Special 301 Trademark Working Group (Trademark Working Group) is an ad hoc informal collaborative of companies and other organizations that have experienced challenges in registering, maintaining and protecting their trademarks abroad. The Trademark Working Group includes 21 participant companies and organizations. Participants in the Trademark Working Group include nine Fortune 500 companies or their subsidiaries. The other participants are well-known companies or organizations whose trademarks would be readily recognized by relevant consumers in the U.S. and abroad. Participants span a wide variety of industries, from technology products to hospitality services. The Trademark Working Group also includes companies in the wearing apparel, food products, financial services, entertainment and home products sectors, among others. Purpose of Trademark Working Group's Special 301 Submission: The Trademark Working Group's primary purpose in making this submission is the improvement of trademark law and practice through education, technical support, diplomacy and, only as a last resort, trade policy. Topics of Submission and Their Importance to U.S. Trademark Owners: 1. Trademark Issue: Nations that are not members of the Paris Convention or GATT-TRIPS The Paris Convention for the Protection of Industrial Property (Paris Convention) (original text 1883) and the General Agreement on Tariffs and Trade-Related Aspects of Intellectual Property Rights (TRIPS)(1994) establish minimum standards for intellectual property protection among nations and across trading systems. Member countries of these treaties allow for more streamlined and less costly means to protect the rights of trademark owners.
    [Show full text]
  • Intellectual Property Indonesia, Malaysia and Singapore
    Intellectual Property Indonesia, Malaysia and Singapore IP Newsletter We are delighted to share with you the latest edition of our May 2015 Intellectual Property newsletter covering the latest developments in Indonesia, Malaysia and Singapore. We trust you will find this newsletter useful. If you would like any further information, please contact the team in your jurisdiction. Best regards, Baker & McKenzie.Wong & Leow (Singapore) Hadiputranto, Hadinoto & Partners (Indonesia) In This Issue Wong & Partners (Malaysia) Recent Developments In: Indonesia Malaysia Singapore Indonesia Latest News Minister of Law and Human Rights Regulation No. 29 of 2014 on the Guidelines of Application and Issuance of For more information, please Operational License and Evaluation of Collecting contact: Societies Kuala Lumpur Chew Kherk Ying Pursuant to the enactment of Law No. 28 of 2014 on Partner +60 3 2298 7933 Copyright ("Copyright Law"), the Ministry of Law and Human [email protected] Rights ("MOLHR") has issued Regulation No. 29 of 2014 on the Guidelines of Application and Issuance of Operational Singapore License and Evaluation of Collecting Management Society Andy Leck Managing Principal, ("Regulation No. 29"). Tel: +65 6434 2525 [email protected] The Copyright Law urges authors, copyright holders and Jakarta performers to be members of collecting societies in order to Daru Lukiantono manage and collect royalties from the commercial use of their Partner copyright and neighboring rights from the public. The Tel: +62 21 2960 8588 [email protected] Copyright Law indicates that collecting societies should be non-profit in nature and obtain operational licenses from the MOLHR by fulfilling certain requirements.
    [Show full text]
  • Page 1 Chapter 4 Similarity of the Marks § 4:1 Similarity in Context § 4
    Chapter 4 Similarity of the Marks § 4:1 Similarity in Context § 4:2 Degree of Similarity § 4:3 The Three-Part Test: Sound, Meaning, Appearance § 4:3.1 Commercial Impression § 4:3.2 Sound § 4:3.3 Meaning [A] Word Versus Picture [B] Foreign Word Versus English Word 10/04/17 [C] Foreign Word Versus Foreign Word § 4:3.4 Appearance [A] Design Versus Design [B] Letters Versus Letters [C] Different Word/Similar Design § 4:4 Consider the Marks As Would the Relevant Public § 4:5 Consider the Marks Singly § 4:6 Weigh Similarities More Heavily than Differences § 4:7 Compare the Marks in Their Entireties § 4:8 Consider the Marks in Their Settings § 4:9 Give Dominant Portions of Composite Marks Greater Weight § 4:9.1 Family Features § 4:9.2 Words/Designs Proofs § 4:9.3 Letters/Designs § 4:9.4 Effect of Registration Disclaimers § 4:10 Marks Having Portions in Common § 4:10.1 One Mark Incorporating Another § 4:10.2 Common Portion Comparatively Strong, Dominant § 4:10.3 Common Portion Weak, Recessive § 4:10.4 Common Portion Generic or Functional § 4:10.5 Given Name/Surname 2nd § 4:10.6 Marks Suggesting an Association § 4:10.7 Marks with Source Modifiers § 4:10.8 Marks with Geographic Modifiers (Kirkpatrick, Rel. #9, 10/17) 4–1 § 4:1 LIKELIHOOD OF CONFUSION § 4:11 Reversal of Elements § 4:12 The Familiar Versus the Unfamiliar § 4:13 Parody § 4:14 Combining Complainant’s Marks § 4:1 Similarity in Context Similarity of the marks is an analytical factor in every court.1 (See section 2:4.) If this is the factor “without which the others have no probative value,”2 then it is “the most important consideration, for it is in [the] similarity [of the marks] that the roots of the confusion lie.”3 1.
    [Show full text]
  • Network Expansion, Incremental Sales and Saint Honore Acquisition Spur Convenience Retail Asia’S Third Quarter Results
    For Immediate Release Network expansion, incremental sales and Saint Honore acquisition spur Convenience Retail Asia’s third quarter results Ongoing strategic initiatives and marketing programmes continue to drive future growth Hong Kong, 1 November 2007 – Convenience Retail Asia Limited (“CRA” or “the Group”; SEHK: 8052), operator of the Circle K convenience stores and Saint Honore cake shops in Hong Kong and on the Chinese Mainland, announced healthy increases in turnover and profit for the third quarter of 2007. The results reflect the Group’s successful network expansion and incremental sales from a multi-media branding campaign as well as consolidation of the Saint Honore operations. During the third quarter of 2007, the Group’s turnover increased by 37.5% to HK$810.7 million when compared to the same period last year. The Group recorded a net profit attributable to shareholders of HK$27.8 million during the quarter, representing an increase of 20.3% over the same period last year. Basic earnings per share were 3.82 HK cents. For the nine months ended 30 September 2007, the Group recorded a turnover of HK$2,134.3 million and net profit attributable to shareholders of HK$65.3 million, representing an increase of 28.2% and 17.6% respectively year on year. Mr. Richard Yeung, Chief Executive Officer of CRA, said, “During the period, the strong economic fundamentals underpinned by an overall thriving stock market and further expansion in inbound tourism, provided a favourable market environment for our operations in Hong Kong. In order to maximise positive consumer sentiments and to support the Group's brand building strategic initiative, a multi-media branding campaign was launched in September 2007 and has since successfully generated incremental sales.” "The rise in profits was largely due to the contribution of the Saint Honore operations after consolidation." Mr.
    [Show full text]
  • Milano Pizzeria Case Study: Hard Lessons Learned by Canadian Licensor
    Milano Pizzeria Case Study: Hard Lessons Learned by Canadian Licensor By Peter Giddens, Christie Bates and Brad Hanna Every now and then a case comes before the courts and serves as a stark reminder that good licensing practices and IP portfolio management are critical to any business. Milano Pizza Ltd. v. 6034799 Canada Inc.’{"'Milano Pizza"') is certainly such a case, highlighting the need to develop rigorous practices when it comes to documenting the creation, acquisition and licensing of IP assets. Milano Pizza is the saga of a family business, operating since the early nineties, which initiated IP infringement proceedings against a disgruntled former licensee. To its utter dismay, it discovered that it could neither claim ownership of the copyright in the company logo it had been using for decades, nor establish that it ever had an enforceable licence in place with any of its 32 operating pizzerias that used the logo, let alone the defendant company. As a result, its copyright claims were dismissed entirely, and its registered trademark faces serious risk of being expunged. This case is a wake-up call to licensors of IP assets who conduct their business affairs on nothing more than a smile and a handshake, perhaps with the imprudent thought that doing so will allow for a savings on legal spend and reduction in administrative burden. Of course, the reality is that such an approach to business is very likely to give rise to unnecessary disputes and expensive litigation, and may lead to the potential loss of exclusive rights to use key IP assets, including the core brand.
    [Show full text]
  • Convenience Retail Asia Reports Growth in Turnover and Profit for 2007
    For Immediate Release Convenience Retail Asia reports growth in turnover and profit for 2007 Successful implementation of management initiatives drives business growth Hong Kong, 12 March 2008 – Convenience Retail Asia Limited (“CRA” or “the Group”; SEHK: 8052), operator of Circle K convenience stores and Saint Honore cake shops in Hong Kong and on the Chinese Mainland, announced that the Group’s sales for the year and the fourth quarter increased to HK$ 2,916.7 million and HK$ 782.4 million respectively, representing a growth of 30.7% and 38.2% when compared to the corresponding periods in 2006. Net profit attributable to shareholders rose by 15.7% and 10.5% to HK$ 86.9 million and HK$ 21.5 million for the year and the fourth quarter when compared to the corresponding periods in 2006. Basic earnings per share increased by 8.8% from 11.10 HK cents to 12.08 HK cents for the year. The Board of Directors has resolved to recommend a final dividend of 5.5 HK cents per share (2006: 5 HK cents). Together with the interim dividend of 1.7 HK cents per share, total dividend for 2007 would be 7.2 HK cents per share (2006: 6.5 HK cents). Mr. Richard Yeung, Chief Executive Officer of CRA, said, “The Group’s retail sales growth in Hong Kong arose from robust consumer confidence, a wealth effect created by the overall upward trend of the stock and property markets, increased inbound tourism and record-breaking tourist expenditure." He observed that both the launch of a brand building television campaign and the successful acquisition and integration of Saint Honore had enhanced CRA’s competitiveness and strengthened its market penetration in the past year.
    [Show full text]