Win for Haribo:Only the 6th Sound Mark Registered in Hong Kong in the Last 10 Years!

We have just obtained a registered sound mark for “ ” for Haribo in Hong Kong

(the representation is for the “Haribo Jingle”, which they use in ads with the lyrics “KIDS AND GROWN-UPS LOVE IT SO, (THE)

HAPPY WORLD OF HARIBO”. Although sound marks can be registered as trademarks and are protected by the Trade Marks

Ordinance since 2003, very few have successfully registered. We are therefore excited that our client’s mark is the 6th

sound mark to be successfully registered in the last 10 years. Although the examination standard for a sound mark is the

same as that for a traditional mark, a sound mark must be clearly and precisely defined in the form of graphical

representation. Given that the use of multimedia is much more important in today’s digital age, brand owners should

consider protecting sounds to increase brand strength and reduce brand dilution.

IP UPDATE

H O N G K O N G | B E I J I N G

Y O U R G R E A T E R C H I N A L A W Y E R S

issue 08 . 2016NEWSLETTER

• Techstars Mentor 2015• IP Rising Star (Euromoney Women in Business Law Awards) 2013• Litigation Committee Member, International Bar Association• Anti-Counterfeiting Committee (2016), Internet Committee (2014-2016), INTA

Anna Mae Koo SENIOR ASSOCIATEMA (Law) (Hons), University of Cambridge (Prince Philip Scholar)

Joyce Lee ASSOCIATELLB, University of Bristol

Fandy Ip ASSOCIATEBSSc, Chinese University of Hong KongJD, University of Hong Kong

The Bad Faith Ground:Trend of Trademark Decisions in Hong Kong

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IP UPDATE

Although the problem of trademark squatting has not

been as prevalent in Hong Kong as it is in China, bad faith

of an applicant/registrant has been a useful ground in

oppositions and invalidation actions for brand owners in

Hong Kong. Below are some key observations in the latest

trend of decisions by the Hong Kong Trade Marks Registry

(the “HKTMR”) in relation to the bad faith ground.

Use in China to Bolster Argument?

Registering and using your mark in China may now be

helpful as evidence in protecting your mark in Hong Kong.

Prima facie, registering your mark in China does not give

protection in Hong Kong and using your mark in China

would not be sufficient use evidence to defend your mark

in non-use cancellation actions in Hong Kong. However,

recently, opponents, who do not have any registered

trademarks in Hong Kong, have succeeded in their

oppositions by relying on its registrations and use of the

identical marks in China. Here, the applicants of the

trademarks in question are typically residents in China and

are located in the same province as the opponents. Based

on this, the HKTMR has found bad faith on the part of the

applicants given the proximities of the applicants, and the

reputation of the identical registered marks owned by the

opponents in China, and refused the registrations of the

same in Hong Kong. There have been more than a few

cases showing the same result, which is encouraging.

What Constitutes a Pattern of Bad-faith Behaviour?

One way of showing bad faith is through establishing that

the applicant/registrant has a pattern of filing others’

marks in bad faith. Normally, one would expect that in

order to show such a pattern, a substantial number of

applications/registrations would be required. However, in

a recent invalidation decision, HKTMR held that

7 applications were held sufficient in showing that the

applicant had a pattern of registering marks that are

similar to others’ brands in bad faith. This seems to suggest

that for HKTMR, the focus is less on the quantity but more

on the quality as in how similar the marks applied for by the

applicant/registrant (allegedly in bad faith) and the marks

owned by other brand owners, which is a welcome

decision to brand owners.

Grohe’s Design Patent Jianlong’s Product

“race-track”shaped water-flowcontrolling switch

The design patent infringement case brought by Grohe, a well-known German sanitary-fittings company, against Zhejiang

Jianlong Sanitary Ware Co. Ltd. (“Jianlong”) was chosen by the Supreme People's Court of P. R. China (“SPC”) as a landmark

IP case. The judgment sheds light on how to determine whether a design feature is to be deemed as a functional feature,

thereby not considered part of a design patent.

Grohe initiated the claim back in 2012 in Taizhou, alleging that Jianlong had infringed the distinctive “race-track” shape of

the handheld shower nozzles (figures as below) of its design patent.

How does the Grohe case affect your Chinese design patent filing strategy?

• Techstars Mentor 2015• IP Rising Star (Euromoney Women in Business Law Awards) 2013• Litigation Committee Member, International Bar Association• Anti-Counterfeiting Committee (2016), Internet Committee (2014-2016), INTA

Anna Mae Koo SENIOR ASSOCIATEMA (Law) (Hons), University of Cambridge (Prince Philip Scholar)

Flora HoCHINA PATENT ATTORNEY QUALIFICATIONBSc (Physics) (Chinese University of Hong Kong)MPhil (Elec Eng) (Chinese University of Hong Kong)

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IP UPDATE

In Jianlong’s defence, Jianlong argued that the overall

design of its product is different from Grohe’s. One of the

major differences was that Grohe’s design had a

“race-track” shaped water-flow controlling switch on the

handle while Jianlong’s product did not. The Taizhou Court

ruled in favor of Jianlong.

Grohe appealed the case to the Zhejiang Provincial

High Court which repealed the Taizhou Court’s decision.

The Zhejiang Court agreed with Grohe and held that

“race-track” shape of the handheld shower nozzles was

emphasized and the similarity between the two products

may cause confusion to consumers. The Court further

considered that the water-flow controlling switch

belonged to a functional feature and therefore was not

taken into account in determining infringement.

All Rights Reserved.

Please note that the information and opinions contained in this newsletter are intended to provide a general overview only, and should not be treated as a substitute for proper legal advice concerning an individual situation. We disclaim all liability to any person in respect of the consequences of anything done or omitted to be done wholly or partly in reliance upon the contents of this newsletter. Readers should make their own enquiries and seek appropriate legal advice on the particular facts and circumstances at issue.

© Vivien Chan & Co., Newsletter issue 8, October 2016

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IP UPDATE

Jianlong appealed to the SPC. The case was heard in 2015

and Jianlong finally won the battle. In determining

whether Jianlong’s product fell under the protection

scope of Grohe’s design patent, the SPC considered that

the noticeable parts of a showerhead does not only

include the shower nozzles but also the head, handle, the

connection thereof and also the water-flow controlling

switch on the handle.

Under the provisions of Article 11 of SPC’s 2009 Judicial

Interpretation on Patent Infringement Cases, in

determining whether the patented design and the

infringing design are identical or similar, a functional

feature which is determined as a technical function should

not be considered.

However, here, the SPC considered that the water-flow

controlling switch was prominent, in that it was noticeable

to an ordinary consumer, and its “race-track” shape was

of aesthetic value. Therefore, it had a significant impact to

the overall visual effect of the product design and should

be deemed as a distinctive design feature. As Jianlong’s

product did not comprise of this distinctive design feature,

the SPC held that there was no infringement.

A functional feature, as provided under the provisions of

Article 11 of SPC’s 2009 Judicial Interpretation, may

therefore be interpreted as 1) a unique design to achieve

a specific function; or 2) a choice from a variety of designs

to achieve a specific function where the choice is of no

aesthetic consideration. By this definition, a functional

feature should have no significant effect on the overall

visual effect of the design.

In this landmark case, the water-flow controlling switch

was considered to be of aesthetic value and contributed

to the overall visual effect, viewed by an ordinary

consumer. Therefore, it was not regarded as a functional

feature and was considered in the determination of

design patent infringement.

This landmark case provides clarification on the definition

of functional feature and is expected to be used as

guidance in similar design patent infringement cases.

Patent owners should be careful to include all potentially

distinctive design features of its patented design in

conducting patent infringement analysis before taking

legal action. Designers or applicants, on the other hand

should have more awareness on how the features of their

products, which are conventionally regarded as

functional features but are noticeable to ordinary

consumers can be protected. Even if a feature is merely

intended to be a functional feature, such feature

may be considered part of a design patent if it is of

aesthetic value.