News & Insights

Proving Bad Faith: Challenge Accepted

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Authored by: Patsy Lau and Char Lam

The rise in ecommerce platforms and social media marketplaces have made it easier than ever for counterfeiters to reach consumers. Whilst most experienced brand owners are aware of the need to register their trade marks, copycats have become increasingly sophisticated in their strategies to circumvent genuine owners’ trade mark protection. However, it is possible to take on even the most imaginative squatters, and proceedings before the Hong Kong Trade Marks Registry remain an essential tool for brand owners to safeguard their brands against dilution and misrepresentation in the marketplace.

The recent successful invalidation of a squatter’s trade mark registration by ROGER VIVIER S.P.A., the luxury French fashion house, despite the marks consisting of very different verbal elements, illustrates the importance of adducing appropriate evidence in proceedings, and registering the stylised version in addition to the word mark.

ROGER VIVIER vs. RV VIEWER

Roger Vivier is the owner of numerous registrations for the mark and the script marks and used in relation to footwear, handbags and fashion accessories. . A squatter registered a stylised look-alike mark “RV VIEWER” in respect of “clothing and shoes”.

Roger Vivier’s Mark Junior Mark

Establishing likelihood of confusion and bad faith, is often not straightforward when the marks can be differentiated, especially as bad faith hinges on the subjective intent of the registrant. In this case, despite the RV VIEWER mark having been registered since 2015, the Registrar was persuaded to invalidate the look-alike mark on the ground of bad faith, without needing to consider the alternative grounds of likelihood of confusion or passing off.

The Registrar was satisfied that Roger Vivier’s evidence supported the following:

  • the historical background of Roger Vivier and how the brand came to be highly successful and widely-known;
  • Roger Vivier’s significant worldwide commercial presence, including in Hong Kong;
  • Roger Vivier’s brand ranking and prestige in the global market; 
  • Roger Vivier’s extensive promotion of its brand and its presence in Hong Kong since 2004;
  • the similarities between Roger Vivier’s stylised marks and the squatter’s mark in terms of their font, stylisation, structure, and visual aspect, and the similarities between the respective goods;
  • that the squatter must have had knowledge of Roger Vivier’s existence and the reputation of its brand in the international fashion industry; and
  • the squatter failed to adduce any evidence to explain how it came to create its own mark.

The compelling evidence submitted enabled the Registrar to draw a reasonable inference that the squatter’s mark could not have been created by coincidence, and that it had deliberately copied Roger Vivier’s marks in an attempt to take unfair advantage of the reputation and popularity of Roger Vivier.

Conclusion

The threshold for proving bad faith can be high, even when the circumstances suggest an intention is free ride. Pursuing an action on the grounds of bad faith must be supported by concrete and pertinent evidence, which is often easier said than done. However, the Hong Kong Registry is sensitive to the realities of the market place and will often take the side of brand owners, but a favourable outcome will depend on good record-keeping and, in some cases, subsequent diligent research and investigations.

The decision is also a reminder of the importance of registering stylised version of trade marks, in addition to the block letter version. A stylised registration covers the stylised elements of a mark and can provide protection even when the words are different. Therefore, besides retaining high quality evidence of use, it is important to review your trade mark portfolio to check whether registrations have been secured for housemarks and other key trade marks in both block letter and stylised format.

* Deacons acted for Roger Vivier in this matter.

Key Contacts

Patsy Lau

Partner | Intellectual Property

Email or call +852 2825 9500

Emmy Chow

Partner | Intellectual Property

Email or call +852 2826 5323

Loretta Lau

Partner | Intellectual Property

Email or call +852 2825 9341

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