In November 2018, Yimei Hotel Management (Shenzhen) Limited (“the Applicant”) applied to register trade mark no. ZN/S/2018/461
as a service mark in class 43. The mark was published for opposition purposes and an opposition was filed against its registration by MHG IP Holding (Singapore) PTE LTD (“the Opponent”).
The Opponent relied upon its earlier registration in Zanzibar for the mark , also in class 43, as well as its well-known trade mark rights and the argument that any use of the opposed mark in Zanzibar would constitute trade mark infringement and passing-off. It also argued that the Applicant had acted in bad faith in adopting a mark so similar to the internationally well-known trade mark of the Opponent, of which it must have been aware. The Applicant defended the matter and denied that confusion would be likely, or that the Opponent could claim that its trade mark was well-known in Zanzibar.
The Assistant Registrar of Industrial Property (“the Registrar”) gave consideration to the parties’ arguments, evidence, and written submissions and, in a decision handed down in June 2021, found in favour of the Opponent. In considering the legal principles relevant to the matter, the Registrar had regard to foreign case law, in particular, he cited cases emanating from the European Union.
The Registrar considered the visual, aural, and conceptual similarity of the marks, but made the point that an artificial dissection of the marks would not be appropriate as consumers normally perceive marks as wholes, and do not “analyse” their details. As such, as wholes, the Registrar held that the average consumer would likely be confused or deceived as the origin of the opposed mark, particularly since the services covered by both parties’ marks in class 43 are identical and/or similar and would be availed in the same trade channels.
The opposition was accordingly upheld.