Hong Kong Intellectual Property: World’s longest running crypto exchange successfully resists challenges against registration of three trade marks
The Applicant, BTCC Pool Hong Kong Limited, is a global provider of cryptocurrency storage and exchange services. It applied for the registration of three trade marks containing the initials “BTCC” in respect of services in Classes 36 and 42. The Opponent, which supplies clearing agency services for US financial securities, opposed the applications on several grounds including the alleged similarity of the applied-for marks to the Opponent’s registered trade marks “DTCC” and “OTCC”.
Having regard to all the relevant factors of the case, the Registrar of Trade Marks held that none of the Opponent’s grounds of opposition based on sections 12(3), 12(5)(a) and 12(4) of the Trade Marks Ordinance (Cap. 559) was made out. The Registrar held that the overall impression created by the applied-for marks shared a “very low” degree of similarity with the Opponent’s earlier marks, and use of the applied-for marks would not likely cause confusion on the part of the public or average consumer.
Thomas WK Wong appeared for the successful Applicant in the Oppositions to the Trade Mark Applications 304499560, 304499579 and 304499588 (7 July 2022).
The Applicant, BTCC Pool Hong Kong Limited, provides cryptocurrency storage and exchange services through mobile application and peer-2-peer platform for its registered members. It forms part of a company group which operates the longest-running digital asset trading platform in the world.
The Applicant first started its business in the PRC under the brand “BTC China” in June 2011, making it the first bitcoin exchange in mainland China. In 2012, its daily transaction volume ranked second in the world. In 2015, the Applicant expanded its cryptocurrency business into the international market and changed its brand name from “BTC China” to “BTCC”, which stands for blockchain technology cryptocurrency.
On 20 April 2018, by three applications under the Trade Marks Ordinance (Cap. 559), the Applicant sought to register the following three trade marks (“the Subject Marks”):
The applications were made in respect of various services in Classes 36 and 42, including financial clearing services to validate users’ trade transactions in the exchange and money exchange services such as the conversion of fiat currency to cryptocurrency (“Subject Services”).
The Opponent, the Depository Trust & Clearing Corporation, belongs to a corporate group which originates from New York, USA and supplies clearing agency services in respect of US financial securities. As part of the group’s global expansion, the Opponent was later formed in the USA to offer clearing agency services and trade repository services in different parts of the world.
The Opponent opposed all three applications of the Applicant (“the Applications”).
Grounds of Opposition
The Opponent asserts that it is the registered proprietor and beneficial owner of the registered trade marks “DTCC” and “OTCC” (collectively “the Earlier Mark”) in respect of services in Classes 36, 42 and more.
In opposing the registration of the Subject Marks, the Opponent relied on sections 12(3), 12(5)(a) and 12(4) of the Trade Marks Ordinance (“TMO”).
Opposition under Section 12(3) of Trade Marks Ordinance
Essentially, section 12(3) of the TMO prohibits the registration of a trade mark if it would likely cause confusion on the public’s part due to similarity to an earlier trade mark, and its registration would be in respect of the same or similar goods or services covered by the earlier trade mark.
The Opponent relies on the Earlier Mark (the registered trademarks “DTCC” and “OTCC”) in opposing the Applications under s. 12(3). It referred, among others, to the decision of the Opposition Division of the European Union Intellectual Property Office (“EUIPO”) dated 11 August 2020, which related to the Opponent’s opposition – based on its UK non-registered trade mark “DTCC” – against an application by BTCC Limited (a member of the Applicant’s company group) to register the mark “BTCC”. The Opposition Division considered the marks to be “visually similar at least to an average degree.”
On appeal, the EUIPO Second Board of Appeal noted that the opposition was entirely based on UK rights. Since 31 December 2020, UK rights were no longer protected under the European Union Trade Mark Regulation following the UK’s withdrawal from the EU. The opposition was dismissed for lack of a valid basis.
The Registrar of Trade Marks (“the Registrar”) noted that, in any event, since the likelihood of confusion must be considered from the perspective of an average consumer, one must also have regard to the possibility of different attributes between an average consumer in Hong Kong and that in Europe. On this basis, the Registrar took the view that the overall impression created by the Subject Marks are different from that created by the Opponent’s Earlier Mark.
Having regard to all the relevant factors, the Registrar found that:
• the Subject Marks and the Opponent’s Earlier Mark share a “very low” degree of similarity;
• Even when the Subject Marks are used in relation to services identical to the Opponent’s registered services, the relevant average consumer would not be confused into believing that those services offered under the Subject Marks and the Opponent’s Earlier Mark come from the same or economically-linked undertakings;
• In conclusion, there is no likelihood of confusion in respect of identical services, and a fortiori, in respect of services that are merely similar. The ground of opposition under s.12(3) was not made out.
Opposition under Section 12(5)(a) of Trade Marks Ordinance
Under s. 12(5)(a) TMO, a trade mark shall not be registered if its use will likely be prevented by any rule of law which protects an unregistered trade mark used in the course of trade or business, particularly the law of passing off.
To bring an action for passing off, the Opponent needs to establish that:
• there is goodwill attached to the Opponent’s goods or services in the mind of the purchasing public by association with the Opponent’s Earlier Mark;
• use of any of the Subject Marks in relation to the Subject Services would give rise to a misrepresentation which leads the public to believe that the Applicant’s Subject Services are offered by the Opponent;
• the Opponent suffers or would likely suffer damage due to the Applicant’s misrepresentation.
The Registrar was satisfied that the Opponent enjoys goodwill for its services associated with the Earlier Mark; nonetheless, given the very low degree of similarity between the Opponent’s Earlier Mark and the Subject Marks, when any of the Subject Mark is used in relation to the Subject Services, the public would not likely be confused into believing that those services offered under the Applicant’s Subject Marks are services of or connected with the Opponent.
Since the elements of misrepresentation and damage fail to be established, the ground of opposition under s. 12(5)(a) was not made out.
Opposition under Section 12(4) of Trade Marks Ordinance
Section 12(4) TMO prohibits the registration of a trade mark that is identical or similar to an earlier well-known trade mark, if the use of the later trade mark would take unfair advantage or be detrimental to the distinctive character or repute of the well-known mark.
For this prohibition to apply, there must be a degree of similarity between the well-known mark and the applied-for mark such that the relevant section of the public establishes a link between them, even though it does not confuse them.
The Registrar found that use of the Subject Marks in relation to the Subject Services would not give rise to a link with the Opponent’s Earlier Mark in the minds of the relevant public. Due to the very low degree of similarity between the Subject Marks and the Opponent’s Earlier Mark, when the relevant public sees any of the Subject Marks used in relation to the Subject Services, it would not even call to mind the Opponent’s Earlier Mark. It follows that, in the absence of any link, no unfair advantage or detriment would result from use of the Subject Marks.
In conclusion, the Registrar found that none of the grounds of opposition has been made out and the Opponent fails in opposing the application to register the Subject Marks.
Mr. Thomas WK Wong, instructed by Tonys Lawyers, acted for the successful Applicant.
Mr. Philips B.F. Wong, instructed by Simmons & Simmons, appeared for the Opponent.
|Thomas WK Wong
“A junior who has litigation in his blood and is passionate about his work. He is very thorough and provides clear and succinct arguments on complex issues.” Legal 500 Asia-Pacific 2022, Commercial Disputes — Leading Juniors
Thomas is a seasoned civil litigator who was called to the Bar and joined Chambers in 2018. Prior to that, Thomas had practised for seven years as a civil litigation solicitor at three top-tier litigation Firms.
Both as Counsel and as a civil litigator, Thomas has handled and conducted a full range of Civil matters from company/ insolvency and commercial/contract to defamation, intellectual property, and enforcement of arbitral awards.
In the realm of intellectual property, Thomas has acted for the successful Plaintiffs in their action for trademark infringement, passing-off and breach of contractual restraint of trade in Profundo Technologies Ltd v Wenhuan Zhong, HCA 1885/2015. He has also represented Johnson & Johnson in successfully resisting an opposition before the Registrar of Trade Marks by a wholly-owned subsidiary of a Hong Kong listed company (Lee’s Pharmaceutical (HK) Limited (HKEx: 0950) to its Trademark Application No 303959335 “兆科” in Class 5.
Thomas is also a Fellow of the Chartered Institute of Arbitrators and of the Hong Kong Institute of Arbitrators, and acts as both Counsel and Arbitrator in arbitrations.
Further details of his experience are available under “Selected Cases” in Thomas’ profile.
This article was first published on 2 August 2022.
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 photograph which appears in this article is included for decorative purposes only and should not be taken as a depiction of any matter to which the case is related.