In a recent Trade Marks Registry decision*, we represented Carol Cole Company (the "Client"), a leading beauty company specialising in innovative microcurrent technology, in successfully invalidating the NEUFACE PRO trade mark registration in the name of N & D Skincare Company Limited. The victory was based on grounds of similarity with the Client's NUFACE and NUFACE-formative marks, as well as passing off.
The Hearing Officer of the Trade Marks Registry carefully considered the evidence and made the following findings:
- The NEUFACE PRO mark is confusingly similar to the Client's NUFACE and NUFACE-related marks.
- Both parties operate in the same beauty industry, with overlapping goods and services.
- The use of the NEUFACE PRO mark would likely cause confusion among consumers and damage the Client's goodwill and reputation.
Significantly, the Hearing Officer ruled in the Client's favor on both the relative ground (similarity of marks and goods) and the passing off ground. This is an uncommon outcome, as Hearing Officers often focus on just one ground and may not make determinations on other pleaded grounds.
The Client's success hinged on the comprehensive evidence their local distributor provided, demonstrating longstanding goodwill and reputation in Hong Kong. This included records of product packaging, sales invoices, catalogues, advertisements, and website content - all specifically tailored to demonstrate the Client's extensive market presence in the territory.
This case* underscores the importance for brand owners to proactively collect and maintain robust evidence of their trade mark use and reputation. Having a well-documented history of marketing and sales in the relevant jurisdiction can be pivotal in trade mark opposition and invalidation proceedings.
As we emphasized in our previous article (Rouse - Protection of unregistered trade marks in Hong Kong – what brand owners need to know), brand owners should implement procedures to systematically gather and preserve records of their trade mark use, including details on product packaging, sales, advertising, and local clientele. This diligence can prove invaluable as evidenced by the Client's success in this matter.
*Case: [2024] HKTMR 26
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