Intellectual Property — Genuine Use of Trade Mark for Audio Recordings

Background

In a recent decision by the Registrar of Trade Marks involving the revocation of the registration of Trade Mark No. 199203333AA registered under Class 9, Phyllis Lee successfully persuaded the Registrar to find that there was genuine use of the trade mark for audio recordings. The trade mark, owned by Talisman Brands, Inc. (previously RCA Trademark Management), was challenged by HMV Brand Pte. Ltd. on the ground of non-use. 

Grounds for Revocation

The Applicant, HMV Brand Pte. Ltd., filed for revocation under section 52(2)(a) of the Trade Marks Ordinance, claiming that the mark had not been genuinely used in Hong Kong for a continuous period of at least three years. The periods in question were: 

• August 22, 1992, to August 21, 1995.
• July 27, 2015, to July 26, 2018.
• July 13, 2017, to July 12, 2020. 

Evidence Presented

The Applicant’s internet searches and investigations found no evidence of the mark’s use in Hong Kong. However, the Registered Owner, Talisman Brands, Inc., provided substantial evidence demonstrating the mark’s use from 2010 onwards. This included: 

• Sales of vinyl records.
• CD albums.
• Digital sound tracks. 

Key Findings

The Registrar found that there was genuine use of the trade mark for audio recordings, specifically CD albums and digital sound tracks, from 2010 to 2021. This evidence was deemed sufficient to maintain the registration of the mark for audio recordings. However, no evidence was found for the use of the mark on other goods listed under Class 9, such as scientific, nautical, and electrical apparatus.  

Outcome

The decision resulted in a partial revocation of the trade mark. The registration was maintained for audio recordings but revoked for all other goods. Both parties were ordered to bear their own costs. 

Conclusion

This case underscores the importance of continuous and genuine use of a trade mark to maintain its registration. For trade mark owners, it serves as a reminder to keep thorough records of the use of their marks to defend against potential revocation applications. For applicants, it highlights the necessity of presenting solid evidence to support claims of non-use. 

This decision not only reinforces the legal principles surrounding trade mark use but also provides a clear example of what kind and how evidence can be effectively used to demonstrate genuine use in the market.

 

Phyllis Lee

Since joining the Bar in 2014, Phyllis has appeared as an advocate in the Court of Appeal, the Court of First Instance, the District Court, the Lands Tribunal and Magistrates’ Courts. 

She is developing a broad civil practice and has been instructed in a wide range of cases involving areas including but not limited to family/matrimonial, construction, company, defamation, probate and trust, employee compensation, intellectual property and personal injuries matters.  

Visit Phyllis’ profile for more details.

This article was first published on 25 October 2024.

Disclaimer: This article does not constitute legal advice and seeks to set out the general principles of the law. Detailed advice should therefore be sought from a legal professional relating to the individual merits and facts of a particular case. The photographs which appear in this article are included for decorative purposes only and should not be taken as a depiction of any matter to which the case is related. The views and opinions expressed in this article/material are solely those of the members authoring it and do not necessarily reflect the official policy or position of Denis Chang’s Chambers, or of any other member or members of Denis Chang’s Chambers.