Post on 04-Jun-2018
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TRADE MARKS ORDINANCE (Cap. 559)
OPPOSITION TO TRADE MARK APPLICATION NO. 301366542
MARK:
CLASSES:
16, 36, 42
APPLICANT: GEMOLOGY HEADQUARTERS INTERNATIONAL, LLC
OPPONENT: GEMOLOGICAL INSTITUTE OF AMERICA, INC.
STATEMENT OF REASONS FOR DECISION
Background
1. On 16 June 2009, Gemology Headquarters International, LLC (the “applicant”)
filed an application (the “subject application”) under the Trade Marks Ordinance, Cap.
559 (the “Ordinance”) for registration of the following mark:-
(“the subject mark”).
2. Registration is sought in respect of the following goods and services (“subject
goods and services”) in Classes 16, 36 and 42:-
Class 16
Certificates of authenticity and certificates of grading for diamonds, gemstones, pearls
and jewelry; certificates; printed certificates; printed award certificates.
Class 36
Appraisals of diamonds, gemstones, pearls and jewelry.
Class 42
Gemological services, namely, providing identification, authentication, and grading of
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diamonds, gemstones, pearls and jewelry, and issuing certificates related to such
grading; inscriptions on diamonds and gemstones (gemological services); precious
metal assaying.
3. Particulars of the subject application were published on 21 August 2009. On
20 January 2010, Gemological Institute of America, Inc. (the “opponent”) filed a Notice
of opposition attached with a Statement of Grounds of Opposition. That Statement of
Grounds of Opposition was later deemed to have been replaced with an Amended
Statement of Grounds of Opposition filed on 1 March 2010 (“Grounds of Opposition”).
4. The opposition hearing took place before me on 20 November 2013. Ms. Mok
Yee Ting of ONC Lawyers represented the applicant. Mr. Sebastian Hughes of
Counsel, instructed by DLA Piper, represented the opponent.
Grounds of Opposition
5. In the Grounds of Opposition, the opponent opposes registration of the subject
mark under sections 11(1)(b) and (c), 11(5)(b), 12(3), 12(4) and 12(5)(a) of the
Ordinance. A Schedule attached to the Grounds of Opposition lists out the trade marks
relied upon by the opponent in launching the opposition against the subject application.
That Schedule is reproduced in this decision as Annex 1 hereto.
Counter Statement
6. The applicant filed a Counter Statement on 20 April 2010, denying all the
grounds of opposition.
Preliminary issues
7. An issue arose just days before the hearing on 20 November 2013. The issue
was raised by the applicant in ONC Lawyers’ letter to the Registrar dated 8 November
2013, alleging that the Statutory Declaration of Seung-Hae Moon dated 2 March 2012,
which forms part of the opponent’s evidence, made reference to a settlement agreement
and contained related materials which were made on a without prejudice basis, as such
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the statutory declaration should be amended by re-execution in order that all reference
and materials in that regard would be removed. In the said letter, ONC Lawyers
further suggested that the hearing officer assigned for the hearing should be changed to
another one who had not previously perused the evidence.
8. DLA Piper’s letter in reply came to the Registrar on 15 November 2013. They
disagreed that the alleged materials in the Statutory Declaration of Seung-Hae Moon
were privileged, and submitted that the same were admissible as evidence in the
proceedings. They also disagreed that there should be a change of the hearing officer.
9. The Registrar issued a letter on 18 November 2013 indicating that the above two
issues cannot be determined without giving full opportunity to the parties to address the
hearing officer, hence they would be dealt with as preliminary issues at the scheduled
hearing before substantive hearing of the proceedings is to take place.
10. As it turned out, at the hearing on 20 November 2013 Ms. Mok of ONC Lawyers
representing the applicant agreed not to further pursue the two issues upon my
preliminary indication that the subject matters of the alleged materials, as mentioned in
the Statutory Declaration of Seung-Hae Moon, appeared not relevant to the core issues
of these proceedings. The hearing of the case then proceeded accordingly.
The opponent’s evidence in support
11. The opponent’s evidence in support comprises a statutory declaration of Seung-
Hae Moon dated 20 January 2011 (“Moon’s statutory declaration”) and a statutory
declaration of Robert Frank dated 13 January 2011 (“Frank’s statutory declaration”).
12. Ms. Seung-Hae Moon has been employed by the opponent for over 30 years,
acting as its Managing Director (for Asia Pacific) since 2007. The facts she deposed
to in her statutory declaration are from her personal knowledge or from the opponent’s
records, and she has been duly authorized by the opponent to make the statutory
declaration in these proceedings.
13. According to Ms. Moon, Mr. Robert M. Shipley founded the Gemological
Institute of America in 1931 in Los Angeles, the United States of America, which was
incorporated in October 1943 under the laws of the State of Ohio. The opponent, which
got the current name in January 1999, is a result of a series of mergers of a number of
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corporations which focused on different streams of the gem industry. From Moon’s
statutory declaration, it seems the merger had involved the following entities and their
subsequent merged entities:- the said Gemological Institute of America founded in 1931,
GEM Instruments incorporated in 1976 which later changed name to GIA Gem
Instruments, Gem Trade Laboratory incorporated in 1978 which later changed name to
GIA Gem Trade Laboratory.
14. The Gemological Institute of America had adopted “GIA” and “Gemological
Institute of America” as the corporation’s house marks since its foundation. It follows
that the opponent is alleged to have first used the trade marks “GIA” and “Gemological
Institute of America” in 1931 and has used the marks continuously since then in the
United States of America for goods in Class 16 goods. It is also alleged that these
opponent’s marks have been and continue to be used in relation to grading services for
precious gems in Class 36 and services in respect of services of grading precious gems
and gemological services, identifying, grading, registering and inscribing precious
gems and pearls identification in Class 42 since as early as 1996 in Hong Kong. For
the purposes of all the latter discussions, the opponent’s marks including the marks
“GIA” and “Gemological Institute of America” are hereinafter loosely and collectively
referred to as the “GIA Trade Marks”.
15. Moon’s statutory declaration is painstaking in showing that Hong Kong is among
one of the places in the world where the GIA Trade Marks have a long and extensive
history of use. For example, Exhibit-D and Exhibit-E to Moon’s statutory declaration
contain copies taken from the quarterly magazine “Gems & Gemology” allegedly
showing use of the GIA Trade Marks. It is alleged that the magazine has been in
distribution to key members of the Hong Kong jewelry community from 1977 through
to today. Exhibit-F contains what is said to be a list of the Hong Kong subscribers to
the magazine, with their personal data redacted.
16. Ms. Moon alleged that the GIA Trade Marks had been used in the United States
since 1931 for services in respect of correspondence courses in the field of gemology.
Exhibit-H contains copies of the 1958 course materials and 1986 Lab Manual. It is
said that in 1980, the opponent provided the first one-week gemology classes in Hong
Kong and Singapore. Exhibit-I to Exhibit K contain copy computer printout showing
classes taught in Hong Kong from 1980 to 1988, a list of 1995-2000 Hong Kong courses
and monthly enrolment, a summary of enrolment, copy of a diploma awarded by the
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opponent to a Hong Kong student, and enrollment figures for the residence classes and
courses in Hong Kong over the years. It is alleged that the GIA Trade marks were
used on course materials and other handouts given to student, as well as on brochures
and catalogs advertising gemology classes and soliciting students to enroll in these
courses since 1980.
17. Ms. Moon further said that in July 1994, the opponent licensed certain right to
Gemological Institute of America – Hong Kong as licensee for promotion, marketing
and solicitation of enrolments in distance education courses, extension classes and
seminars of instruction in jewelry sales, gemology and jewelry manufacturing arts
offered and taught by the opponent under the GIA Trade Marks. Exhibit-L is copy of
the licence agreement, and copies of the letterhead, business cards, envelopes, writing
pad, etc. used by the licensee since 1994 were exhibited in Exhibit-M. Exhibit-N
contains copies of brochures and catalogs using the GIA Trade Marks and distributed
by the licensee since 2003; Exhibit-O shows the Hong Kong enrolment figures and
worldwide enrolment figures of the extension classes since 1980.
18. Moon’s statutory declaration gives the gross revenue figures for educational
services provided under the GIA Trade Marks in Hong Kong for 2003-2010. Except
for the year 2003, the rest all have an annual gross revenue between US$1,000,000 and
2,000,000.
19. Exhibit-Q shows the numbers of grading reports issued to customers in Hong
Kong each year since 1996 to 2007. Exhibit-R contains sample diamond grading
reports and explanations about grading reports from the opponent’s website. The annual
figures of the gross revenue for diamond or precious gem grading laboratory services
rendered by the opponent under the GIA Trade Marks to clients in Hong Kong for 2004-
2010 are shown to be in the region between US$2,496,133 in 2004 to US$8,072,300 in
2010, with a peak in 2008 at US$9,664,767. Exhibit-S contains copies of various
invoices issued by the opponent in that connection.
20. The opponent established its new laboratory and diamond grading facility in
Hong Kong in 2010. Although this took place a bit after the subject application was
filed in 2009, there were other preceding promotional activities of the opponent’s goods
and services in Hong Kong, as evidenced by Exhibit-U to Exhibit-Y. I do not propose
to go into detail here but would refer to the relevant ones as and when appropriate.
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21. Mr. Robert Frank has been the owner, President and Founder of Illuminor LLC
(“Illuminor”) which was retained by the solicitors for the opponent to provide data to
support the oppositions in these proceedings. Frank’s statutory declaration, as well as
the various exhibits attached to it, was made with large chunks of it being devoted to
detailing Mr. Frank’s qualifications and professional profile, awards and honours
received by him, his research methodology and training practice, features of the
database he would use – all that having no direct relevance to the issues of these
proceedings. I am conscious that this tribunal should not get caught up in the thick of
these and lost sight of the main issues, and I do not propose to summarize them here.
22. Having said that, it is noted that search results conducted on the internet as well
as on the database known as Dialog in respect of words such as “Gemological Institute”,
“GIA”, “Gemological Headquarters International”, “GHI”, or combinations of these
words with “Hong Kong”, are set out in Exhibits “C” to “F” to Frank’s statutory
declaration. Claiming to be basing on these results, Mr. Frank formed the following
opinions:-
(1) The acronym GIA is strongly associated with the corporate name Gemological
Institute of America;
(2) The acronym GIA is more often used than is the full company name of the
Gemological Institute of America;
(3) The acronym GIA has a long association in Hong Kong with the company
Gemological Institute of America;
(4) GIA/Gemological Institute of America is the leader and most frequently referenced
business in the world that is involved in the diamond grading industry;
(5) There appears no brand association of the acronym GHI with the company
Gemological Headquarters International anyway in the world with respect to
magazine and newspaper stories or articles in magazines, professional publications,
journals, etc.;
(6) The acronym GHI does not appear to be associated with the jewelry business in
Hong Kong.
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The applicant’s evidence
23. The applicant’s evidence comprises a statutory declaration of Nachum
Krasnianski dated 24 June 2011 (“Krasnianski’s statutory declaration”). Mr.
Krasnianski is the President of the applicant since the founding of the company in
January 2006. Mr. Krasnianski has thirty years of experience in lab work related to
the field of gemology and has operated and owned gem laboratories in the United States
of America since 1986, Canada since 2002 and India since 2007. The facts he deposed
to in his statutory declaration are from his personal knowledge or from the applicant’s
books and records, and he has been duly authorized by the applicant to make the
statutory declaration in these proceedings.
24. In gist, according to Krasnianski’s statutory declaration, the applicant is a
corporation organized and existing under the laws of Delaware with offices in the
United States of America and India. The applicant operates advanced laboratories
specializing in identification, grading and certification of diamonds and research
services. It is claimed that the applicant is a leader in gemological and research
services and offers gemological services comprising identification, authentication and
grading of diamonds and jewellery under the applicant’s mark, which he identifies to
be the subject mark.
25. It is also alleged that the applicant has offered a variety of basic and advanced
education programs in the field of gemology under the subject mark in India. A list
of education programs offered by the applicant in India are given in Krasnianski’s
statutory declaration.
26. The applicant also offered certificates of authenticity as well as certificates of
grading of diamonds, gemstones, pearls and jewellery under the subject mark. It is
alleged that certificates offered under the subject mark have been available in the US
and India since 2007, exhibit “NK-3” to Krasnianski’s statutory declaration is said to
contain copies of representative gem identification reports produced by the applicant in
the ordinary course of business in association with its goods and services.
27. Exhibit “NK-4” is said to contain copies of representative gem identification
cards produced by the applicant and transferred to its customers in the ordinary course
of its business since 2007 in the US and in India. Exhibits “NK-5” and “NK-6” are
said to contain copies of representative brochures and pamphlets distributed by the
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applicant.
28. A book entitled “Laboratory-grown Diamonds” by Branko Deljanin and Dusan
Simic, which explains the different methods used to grow diamonds and educates about
the characteristics to be observed in examining laboratory grown diamonds with
standard gemological equipment, is alleged to have been published by the applicant
under the subject mark. Copy of the book is exhibited as “NK-7” to Krasnianski’s
statutory declaration. Exhibit “NK-8” is said to contain printout of EGL Canada’s
website which advertised the book in Canada, and exhibit “NK-9” contains printout
from the applicant’s website which is said to have been available since 2007. Exhibit
“NK-10” contains copies of pictures of a representative business card stationery and
redacted invoice of the applicant.
29. The rest of Krasnianski’s statutory declaration deal with the alleged co-existence
of the subject mark with the opponent’s marks in the United States of America and the
applicant’s other marks in other jurisdiction. I do not propose to summarize them here.
30. There is attached an expert report of Carole E. Ghaski as exhibit “NK-19” to
Krasnianski’s statutory declaration. Carole E. Ghaski, a PHD, prepared the report on
behalf of the applicant in respect of the lack of linguistic similarities of the GHI mark
and other representative trade marks of the opponent.
The opponent’s evidence in reply
31. The opponent’s evidence in reply comprises another statutory declaration of
Seung-Hae Moon dated 2 March 2012 (“Moon’s second statutory declaration”), a
statutory declaration of Dr. Arthur McNeill dated 2 March 2012 (“McNeill’s statutory
declaration”), a statutory declaration of Albert Chan dated 1 March 2012 (“Chan’s
statutory declaration”), a statutory declaration of Ephraim Zion dated 6 March 2012
(“Zion’s statutory declaration”) and a supplemental statutory declaration of Robert
Frank dated 27 February 2012 (“Frank’s supplemental statutory declaration”).
32. Moon’s second statutory declaration was filed as evidence in reply to the
applicant’s evidence, namely, Krasnianski’s statutory declaration, casting doubt on
many of the claims made by Mr. Krasnianski as discussed above. I do not propose to
summarize the points here but would refer to the relevant parts as and when appropriate.
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33. Dr. Arthur McNeill is the Director of the Language Centre, Hong Kong
University of Science and Technology. He has over 40 years of experience in English
language teaching, second language vocabulary, language awareness and policy, of
which more than 20 of those years were in Hong Kong. McNeill’s statutory
declaration is expressed to be offered in reply to the expert report of Carole E. Ghaski
(which is exhibit as “NK-19” to Krasnianski’s statutory declaration). I do not propose
to summarize the contentious points between the two expert views here but would refer
to the relevant parts as and when appropriate in the latter discussions.
34. Mr. Chan Hiu-Sang, Albert, who made Chan’s statutory declaration, is an
Executive Director of Chow Tai Fook Jewellery Group Limited and a director of Chow
Tai Fook Jewellery Co., Ltd. (the two companies are referred to collectively as “Chow
Tai Fook”). Mr. Chan has his career in the diamond and jewellery business started in
1977 when he joined Chow Tai Fook as a diamond procurement staff. Drawing on his
considerable experience in grading and procuring diamonds, he testified to the use and
reputation of the GIA Trade Marks. I do not propose to summarize his testimony here
but would refer to the relevant parts as and when appropriate.
35. Mr. Ephraim Zion is the Managing Director of Dehres Limited which is a Hong
Kong based company in the jewellery and diamond industry. Mr. Zion’s career in the
diamond and jewellery business started in 1960 when serving an apprenticeship as a
diamond cutter in a diamond factory in Isreal. Having accumulated significant
experience in procuring and dealing in diamonds and precious gems, and recognizing
the demand for large certified diamonds in Asia, Mr. Zion came to Hong Kong in 1971
and set up his own diamond and gem business. Dehres is a company he founded in
1985. He testified to the use and reputation of the GIA Trade Marks. I do not
propose to summarize his testimony here but would refer to the relevant parts as and
when appropriate.
36. The supplemental statutory declaration of Robert Frank was made only to rectify
certain minor technical deficiencies of Frank’s statutory declaration. There is nothing
significant of that.
Findings on goodwill and reputation of the GIA Trade Marks
37. The opponent oppose registration of the subject mark under sections 11(1)(b) and
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(c), 11(5)(b), 12(3), 12(4) and 12(5)(a) of the Ordinance. At the hearing, Mr.
Sebastian Hughes, counsel for the opponent, made it clear that the opponent would only
be proceeding on sections 11(5)(b), 12(3), 12(4) and 12(5)(a). I would therefore treat
the opposition based on the other pleaded grounds as no longer being pursued by the
opponent.
38. Mr. Hughes said in the opponent’s skeleton argument that the opponent relies on
its registered trade marks in Hong Kong as listed in the Schedule to the Grounds of
Opposition (see Annex 1) and the goodwill and reputation in these marks. That has
connotations of the opposition being premised in large part on sections 12(3), 12(4) and
12(5)(a) of the Ordinance where the opponent’s marks must be assessed with reference
to any enhanced distinctive character, or reputation and goodwill, that it has acquired
or generated. It is convenient for me to first investigate the evidence and make the
relevant findings in this connection.
39. I have outlined the opponent’s evidence in support of the opposition in
paragraphs 11 to 22 above. In gist, evidence is produced to show that the opponent
has been using the GIA Trade Marks, namely, “GIA” and “Gemological Institute of
America”, since 1931 in the United States of America for goods in Class 16, and in
relation to grading services for precious gems in Class 36 and services in respect of
services of grading precious gems and gemological services, identifying, grading,
registering and inscribing precious gems and pearls identification in Class 42 since as
early as 1996 in Hong Kong.
40. From the various exhibits to Moon’s statutory declaration, there is no doubt about
the use of the GIA Trade Marks or related marks by the opponent in the US as well as
in Hong Kong as claimed. The following is extracted from the 2001 issue of the
quarterly magazine “Gems & Gemology” (Exhibit-E to Moon’s statutory declaration)
where the GIA Trade Marks featured:-
41. That magazine is said to have been in distribution to key members of the Hong
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Kong jewelry community from 1977 through to the present. Exhibit-F to Moon’s
statutory declaration is produced to support this.
42. The mark or marks were used in Hong Kong more directly in residence classes
and courses being run here. The marks reproduced below are extracted from the
letterhead, business cards, envelopes, writing pad, etc. exhibited in Exhibit-M:-
43. The one appearing on the left above also appears in the brochures and catalogs
(exhibited in Exhibit-N) distributed by the opponent’s Hong Kong licensee. On the
last page of the brochure, which lists the opponent’s campuses over the world including
Hong Kong, the mark or marks below appear at the top corner of the page:-
44. It seems the marks being used in Hong Kong are more or less the same as the
marks used by the opponent in the US and over the world. More importantly, the
marks in use always come together – in the manner as shown by the various pictures
above. But first it must be identified that the following three marks are always in use
together: (1) the logo which has a crown-like outer layer with the words
“GEMOLOGICAL INSTITUTE OF AMERICA” and the word “KNOWLEDGE”
displaced concentrically in it (the “Opponent’s Logo”), (2) the mere word mark
“GEMOLOGICAL INSTITUTE OF AMERICA”, and (3) the letter mark “GIA”. The
three marks are always put together such that the Opponent’s Logo is on the left, and
the “GIA” together with the “GEMOLOGICAL INSTITUTE OF AMERICA” on the
right, with the “GIA” usually on top of or go before the “GEMOLOGICAL
INSTITUTE OF AMERICA”. I am aware of the picture on the right under paragraph
40, where “GEM TRADE LABORATORY” was used in place of “GEMOLOGICAL
INSTITUTE OF AMERICA”. Given the corporate history of the opponent as given
in paragraph 5 of Moon’s statutory declaration (which I summarized in paragraphs 13
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and 14 above), in particular the fact that the opponent was the result of various mergers
that took place over a long span of time, it’s not surprising to find in some cases or
occasions that this is so. Nevertheless, taking all the materials exhibited by Moon’s
statutory declaration into consideration, I find a pattern of use of the marks, as discussed
above, has been clearly established. Moreover, beneath “GIA” and “GEMOLOGICAL
INSTITUTE OF AMERICA” on the right of such a combination of marks, there are
usually descriptive words which give information about the locality or the occasion or
event in which the marks are being used. I shall hereinafter refer to this way of use of
the three said marks alongside certain descriptive words to be the “GIA Trade Marks
Combination”.
45. The GIA Trade Marks Combination also appear in all the grading reports issued
to customers in Hong Kong and the promotional activities of the opponent in Hong
Kong and elsewhere. In view of the gross revenue figures for educational services
provided under the GIA Trade Marks in Hong Kong for 2003-2010, the numbers of
grading reports issued to customers in Hong Kong each year since 1996 to 2007, the
annual figures of the gross revenue for diamond or precious gem grading laboratory
services rendered by the opponent under the GIA Trade Marks Combination to clients
in Hong Kong for 2004-2010, and the various advertising and promotional activities of
the opponent’s goods and services in Hong Kong, as evidenced by Exhibit-U to Exhibit-
Y to Moon’s statutory declaration, I have no doubt that the GIA Trade Marks
Combination has become the distinguishing feature of the opponent, and has
undeniably acquired through it a substantial reputation and goodwill in its goods and
services offered and promoted in Hong Kong since 1980s.
46. As to the three individual trade marks that comprise the GIA Trade Marks
Combination, from the evidence filed I find they are under different treatments. I am
not aware of any independent use or appearance of the Opponent’s Logo. The mere
word mark “GEMOLOGICAL INSTITUTE OF AMERICA” is virtually the corporate
name of the opponent and has been used as such, its rare use outside the context of the
GIA Trade Marks Combination is nothing more than that. I do not find any goodwill
or reputation have been established on the Opponent’s Logo or the mere word mark
“GEMOLOGICAL INSTITUTE OF AMERICA” outside the context of the GIA Trade
Marks Combination.
47. The use of the letter mark “GIA” is another story. There is evidence showing
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that “GIA” had independently appeared or been used, say for example in the opponent’s
booths at various jewellery trade fairs in Hong Kong (Exhibit-X2 to Moon’s statutory
declaration), in advertising for the “GIA courses” offered in Hong Kong as advertised
in the jewellery magazine “Hong Kong Jewellery” (Exhibit-W3). More importantly,
the three letters mark GIA featured in numerous textual context, say for example in
advertisements and articles in magazines (Exhibits-W2 to W7), and its appearance
constituted not only as an acronym for referring to the opponent but as a branding in
itself.
48. The opponent has produced in its evidence certain testimony of people in the
trade or industry of gemstone and other jewellery. Mr. Chan Hiu-Sang, Albert is a
director of Chow Tai Fook, a famous local jewellery retail brand. Mr. Chan’s
experience is that many consumers on buying a diamond ring or any other piece of
diamond jewellery would look to buy certified diamonds, in respect of which he cited
the “GIA” certified diamonds as a symbol of credibility, to get the assurance that they
are purchasing high quality diamonds.
49. Another people in the trade, Mr. Ephraim Zion, who has dealt with diamond and
jewellery manufacturers, dealers, retailers and certification laboratories on a daily basis
for half a century globally including Hong Kong, said that diamond certification by a
reputable gemological laboratory to authenticate a diamond’s attributes is integral to its
valuation, and he cited GIA to be generally regarded by the industry and consumers as
the most prestigious and authoritative gemological laboratories and the widely
recognized authority in diamond certification. Mr. Zion also mentioned that GIA has
made considerable effort in educating the gem and jewellery industry and the general
public through its publication, for example the quarterly publication of the magazine
“Gems & Gemology” and the monthly electronic newsletter “GIA Insider”.
50. Again taking all the evidence as a whole, I have no doubt that the letter mark
“GIA” has become the distinguishing feature of the opponent and has acquired through
it a substantial reputation and goodwill in its goods and services offered and promoted
in Hong Kong.
Assessment of use of the applicant’s subject mark in Hong Kong
51. Though not strictly required at this stage to do so, I find it useful to also give an
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assessment on the applicant’s evidence in relation to the use of the subject mark in Hong
Kong.
52. I have summarized the applicant’s evidence in paragraphs 23 to 30 above. Given
that the applicant is a corporation organized and existing under the laws of Delaware
with offices in the United States of America and India, it is assumed that the applicant
operates its laboratories specializing in identification, grading and certification of
diamonds and research services also in these areas unless it is shown otherwise. It is
the opponent’s case that the applicant has not commenced business in Hong Kong and
has not used the subject mark in Hong Kong, and I would say the applicant has not
produced any credible evidence to counter this allegation.
53. As mentioned above, a list of education programs offered by the applicant in
India are given in Krasnianski’s statutory declaration. There is no evidence that the
applicant has run similar programs in Hong Kong.
54. The applicant also offered certificates of authenticity as well as certificates of
grading of diamonds, gemstones, pearls and jewellery under the subject mark. It is
alleged that certificates offered under the subject mark have been available in the US
and India since 2007, exhibit “NK-3” to Krasnianski’s statutory declaration is said to
contain copies of representative gem identification reports produced by the applicant in
the ordinary course of business in association with its goods and services. Exhibit “NK-
4” is said to contain copies of representative gem identification cards produced by the
applicant and transferred to its customers in the ordinary course of its business since
2007 in the US and in India. Exhibits “NK-5” and “NK-6” are said to contain copies
of representative brochures and pamphlets distributed by the applicant.
55. All the above, however, have no Hong Kong connection.
56. In the applicant’s evidence, a book entitled “Laboratory-grown Diamonds” by
Branko Deljanin and Dusan Simic is alleged to have been published by the applicant
under the subject mark. Exhibit “NK-8” contains printout of EGL Canada’s website
which advertised the book in Canada, and exhibit “NK-9” contains printout from the
applicant’s website which is said to have been available since 2007. Exhibit “NK-10”
contains copies of pictures of a representative business card stationery and redacted
invoice of the applicant. In these there is no suggestion that the book has any sale in
Hong Kong.
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57. As there is no evidence to show the use of the subject mark in Hong Kong, I
conclude that the subject mark is not known in the Hong Kong market as far as the
goods and services in question are involved.
58. Mr. Hughes further pointed out that aside from the miniscule total annual sales
figure of US$150,000 from the year 2005 for the applicant’s predecessor in title, namely,
Gem House International of USA, Inc., the applicant has filed no evidence of turnover
under the subject mark, nor is there any evidence of advertising expenditure. Indeed
Moon’s second statutory declaration, filed as evidence in reply to the applicant’s
evidence, cast doubt on many of the claims made by Mr. Krasnianski in relation to the
various use of the subject mark. For the present purposes of examining the use of the
subject mark, I do not find it has been used in Hong Kong.
Decision
59. I just record that for any of the grounds of opposition discussed in this decision,
it’s not in dispute that the relevant date is the date the subject application was filed, viz.,
16 June 2009 (“the relevant date”).
Section 12(3) of the Ordinance
60. Section 12(3) of the Ordinance provides as follows:
“(3) A trade mark shall not be registered if-
(a) the trade mark is similar to an earlier trade mark;
(b) the goods or services for which the application for registration is made are
identical or similar to those for which the earlier trade mark is protected; and
(c) the use of the trade mark in relation to those goods or services is likely to cause
confusion on the part of the public.”
61. Under section 7(1) of the Ordinance, in determining whether the use of a trade
mark is likely to cause confusion on the part of the public, the Registrar may take into
account all factors relevant in the circumstances, including whether the use is likely to
be associated with an earlier trade mark.
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62. Section 12(3) of the Ordinance is similar in effect to section 5(2) of the U.K.
Trade Marks Act 1994, which implements Article 4(1)(b) of the First Council Directive
89/104 of 21 December 1998 of the Council of the European Communities (“the
Council Directive”). In interpreting Article 4(1)(b) of the Council Directive, the
European Court of Justice (“ECJ”) has formulated the “global appreciation” test, the
principles of which can be found in the ECJ decisions in Sabel BV v Puma AG [1998]
R.P.C. 199, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. [1999] R.P.C. 117,
Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel B.V. [2000] F.S.R. 77 and
Marca Mode CV v Adidas AG [2000] E.T.M.R. 723.
63. In essence, the test under section 12(3) is whether there are similarities in marks
and goods which would combine to create a likelihood of confusion. The likelihood
of confusion must be appreciated globally and I need to address the degree of visual,
aural and conceptual similarity between the marks, evaluating the importance to be
attached to those differing elements, and taking into account the degree of similarity in
the goods and how they are marketed. I must compare the marks at issue, having
regard to the distinctive character of each and assuming normal and fair use of the marks
across the full range of the goods within their respective specifications. I must do all
of this from the standpoint of the average consumer for the goods in question.
Earlier trade marks
64. The term “earlier trade mark” is defined in section 5 of the Ordinance.
References to an earlier trade mark shall be construed as including a trade mark in
respect of which an application for registration has been made under the Ordinance and
which, if registered, would constitute an earlier trade mark under or by virtue of section
5(1)(a), subject to its being so registered.
65. As I have pointed out, the Schedule attached to the Grounds of Opposition,
reproduced in this decision as Annex 1 hereto, lists out the trade marks relied upon by
the opponent in launching the opposition against the subject application. There are
many of them and it is just impracticable and unnecessary for me to consider each of
them here, suffice to say that I find the only mark that really matters for the present
purposes is the following mark which has been registered in Class 16 and Class 42:-
17
Registration
No.
Trade Mark Class
Specification &
Disclaimer
1982B0478
16
printed matter, periodical
publications, books,
instructional material (other
than apparatus) all relating
to gemology or to gems.
200104503
421
gemological services;
registration services relating
to precious gems; grading of
precious gems; all included
in Class 42.
66. The letter mark chosen above, which I shall call the “GIA” mark, is the mark that
I can reasonably say is the mark, among the various marks listed out at the Schedule to
the Grounds of Opposition or Annex 1 here, closest to the subject mark in terms of
appearance and the goods and services concerned. As to the other marks including
those identified by the opponent to constitute the GIA Trade Marks, though they may
be used alongside the “GIA” mark or form part of the GIA Trade Marks Combination
as discussed above, they are just marks that are rather different from that mark and from
the subject mark, hence I would ignore them as they practically could not stand a better
chance of success against the subject mark than the “GIA” mark for the present
purposes of section 12(3). The “GIA” mark has obtained registrations in Hong Kong
in respect of goods and services in Classes 16 and 42 and meets the criteria of “earlier
trade mark” as defined under section 5(1)(a) of the Ordinance.
1 There were changes of classification of goods and services effected from 25 August 2011, the
classification in this class had been divided up into 2 classes, namely, “gemological services; grading of
precious gems; all included in Class 42”; and “registration services relating to precious gems; all
included in Class 45”.
18
The average consumer
67. As the case law indicates, in the global assessment of the likelihood of confusion,
account should be taken of the average consumer of the category of goods and services
concerned, who is reasonably well informed and reasonably observant and circumspect.
It should also be borne in mind that the average consumer’s level of attention is likely
to vary according to the category of goods or services in question (Mundipharma AG v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) –
Altana Pharma (RESPICUR) (T-256/04) [2007] E.C.R. II-449 at [42] and the case law
cited), and I have to determine the manner in which these goods and services are likely
to be selected by the average consumer in the course of trade.
68. The goods at issue in this case, take for example the applicant’s applied for goods,
are “certificates of authenticity and certificates of grading for diamonds, gemstones,
pearls and jewelry; certificates; printed certificates; printed award certificates”.
Although they are mere printed matters, they are all related to the appraisals service in
Class 36 and in providing identification, authentication and grading services in Class
42 of diamonds, gemstones, pearls and jewelry such that relevant certificates would be
issued in respect of the services rendered. More generally, the applicant’s applied for
goods and services can be said to be rendered in relation to the field of gemology, which
has a market for both professional gemologists and non-professional gemstone or
jewellery buyers.
69. I would say that the relevant public is comprised of members of the general
public in Hong Kong interested in those goods and services, which means it is made up
of the general public in Hong Kong. As goods and services rendered in relation to the
field of gemology is not one that would be required by an average consumer on a daily
basis, and the costs and expenses involved is usually high, the public concerned is
therefore one which is reasonably well informed and reasonably observant and
circumspect.
Comparison of goods and services
70. According to settled case-law, in order to assess the similarity between goods or
services, all the relevant features of the relationship between them should be taken into
account. Those features include, inter alia, their nature, their intended purpose, their
19
method of use and whether they are in competition with each other or are
complementary. Other factors may also be taken into account such as the distribution
channels of the goods or services concerned (see for example British Sugar Plc v James
Robertson and Sons Ltd [1996] R.P.C. 281; Canon Kabushiki Kaisha v Metro-Goldwyn-
Mayer Inc. See also Case T-443/05 El Corte Inglés v OHIM – Bolaños Sabri
(PiraÑ AM diseño original Juan Bolaños) [2007] ECR II-2579, paragraph 37 and the
case-law cited).
71. As I have discussed above, the applicant’s applied for goods and services can be
said to be rendered in the field of gemology. This also suits the description of the
goods and services covered by the opponent’s mark “GIA” in Class 16 and 42 as set out
above.
72. In Gérard Meric v Office for Harmonization in the Internal Market (Trade Marks
and Designs) (OHIM) Case T-133/05, at paragraph 29 the General Court said:
“In addition, the goods can be considered as identical when the goods designated by the earlier
mark are included in a more general category, designated by the trade mark application (Case
T-388/00 Institut für Lernsysteme v OHIM – Educational Services (ELS) [2002] ECR II-4301,
paragraph 53) or when the goods designated by the trade mark application are included in a
more general category designated by the earlier mark (Case T-104/01 Oberhauser v OHIM –
Petit Liberto (Fifties) [2002] ECR II-4359, paragraphs 32 and 33; Case T-110/01 Vedial v
OHIM – France Distribution (HUBERT) [2002] ECR II-5275,paragraphs 43 and 44; and Case
T-10/03 Koubi v OHIM – Flabesa (CONFORFLEX) [2004] ECR II-719, paragraphs 41 and
42.”
73. The comparison of the goods and services must concern the description of the
goods and services covered by the marks at issue and not the goods and services for
which the trade marks are actually used. In this connection, although the applicant’s
goods and services are more in relation to the provision of identification, authentication
and grading services in respect of diamonds, gemstones, pearls, jewelry etc., whilst the
goods and services covered by the registrations of the opponent’s mark “GIA” seem to
be more inclined to providing educational service in respect of gemology and the
grading of precious gems, it can still be said that they are all goods and services that are
rendered in the field of gemology. I am of the view that the goods and services
covered by the marks at issue were identical or similar.
20
Comparison of marks
74. According to consistent case law, in order to assess the degree of similarity
between the marks concerned, it is necessary to determine the degree of visual, aural
and conceptual similarity between them and, where appropriate, to determine the
importance to be attached to those different elements, taking account of the category of
goods or services in question and the circumstances in which they are marketed (see
Lloyd Schuhfabrik Meyer v Klijsen Handel, paragraph 27).
75. In addition, the global assessment of the likelihood of confusion must, as regards
the visual, aural and conceptual similarity of the marks in question, be based on the
overall impression created by them, bearing in mind, in particular, their distinctive and
dominant components. The perception of the marks in the mind of the average
consumer of the goods or services in question plays a decisive role in the global
assessment of the likelihood of confusion (see Sabel BV v Puma AG, para 23; Lloyd
Schuhfabrik Meyer, para 25; and the order in P Matratzen Concord v OHIM (Case C-
3/03), para 29). In that regard, the average consumer normally perceives a mark as a
whole and does not proceed to analyse its various details (see Office for Harmonisation
in the Internal Market (Trade Marks and Designs) v Shaker di L. Laudato & C. Sas,
Limiñana y Botella, SL (C-334/05 P) [2007] E.C.R. I-4529 at [35] and the case law
cited).
76. I should point out here that both the applicant and the opponent had tried to
introduce expert evidence into the comparison of marks here. The applicant’s is an
expert report of Carole E. Ghaski which is exhibit as “NK-19” to Krasnianski’s statutory
declaration. The opponent’s is McNeill’s statutory declaration filed as evidence in
reply. Whilst I would not entirely rule out the relevance of these reports to the issues
of comparison, they are only reference material that could not substitute my own
assessment of the marks from the angle of how average consumers would perceive the
marks and whether there is any similarity and likelihood of confusion between them.
There is argument about the use of Ghaski’s report in the present proceedings as the
report was originally prepared not for this case but for use in other proceedings, but as
I have indicated, this kind of reports are only for reference purpose. In any event, I
note with agreement the comments in McNeill’s statutory declaration that many of the
tests and scenarios discussed in Ghaski’s report had no empirical validation to support
the assumptions therein made, and that Dr. Ghaski adopted an overly “forensic”
21
approach to assessing the similarity of the two marks, which was not very helpful for a
proper trade mark comparison. The reference value of this report is therefore very
minimal.
77. Whilst the comparison must be made by examining each of the marks in question
as a whole, that does not mean that the overall impression conveyed to the relevant
public by a composite trade mark may not, in certain circumstances, be dominated by
one or more of its components (see OHIM v Shaker [2007] E.C.R. I-4529 at [41] and
the case law cited). It is only if all the other components of the mark are negligible
that the assessment of the similarity can be carried out solely on the basis of the
dominant element (OHIM v Shaker [2007] E.C.R. I-4529 at [42]).
Distinctive and dominant components of the “GIA” mark and the subject mark
78. As discussed at paragraphs 65 and 66 above, among the earlier trade marks that
are relied upon by the opponent in the present proceedings, I have chosen the “GIA”
mark to be the mark for consideration. This is a three letters mark.
79. Section 3(2) of the Ordinance, like section 1(1) of the U.K. Trade Marks Act
1994 or Article 2 of the Council Directive, confirms that a trade mark may consist of
letters. Hence letters are registrable, unless the letters designate a characteristic of the
goods or services of the application or are devoid of any distinctive character. However,
unless research or general knowledge shows that there is a history of non-trade mark
use of similar combinations of letters in a particular trade, it would just be assumed that
the letters are sufficiently random (see FSS Trade Mark [2001] R.P.C. 40).
80. There is no suggestion that the three letters combination GIA has become no
more than a descriptive indication or abbreviation for the type of goods or services at
issue, nor it resembles signs commonly used in the field of gemology for non-trade
mark purposes such that it is devoid of any distinctive character in the relevant trade.
I do not think in such a three letters combination, a most distinctive and dominant
component can be found. The combination should be looked at as a whole.
81. Similarly, the subject mark, namely, “GHI”, is also a mark of three letters
combination in respect of which no specific reason can be attributed to suspect that the
particular letters will not be taken, by the average consumer, as a trade mark.
22
82. Putting aside the question of whether the marks have acquired an enhanced
degree of distinctive character through use, I consider that both trade marks to be at the
same inherent distinctiveness level.
Visual similarity
83. Visually speaking, taking each of the marks as a whole, there are a number of
similarities between them: - both are a three letters combination; both combinations
consist of merely capital letters; both start with the letter G; both contain the letter I. I
think the similarities between the marks are qualitatively and quantitatively strong and
they are not much mitigated by the presence of the letter H in the subject mark and the
letter A in the “GIA” mark, nor by the different positioning of the letter I. The overall
effect is that there is high degree of visual similarity between the “GIA” mark and the
subject mark.
Aural similarity
84. Aurally, only one of them, namely, “GIA” is a pronounceable word (i.e., an
acronyms made up of a series of initial letters). However, I am not aware there is
anything in the evidence showing that “GIA” will ordinarily be pronounced by the
consumers as an acronym. I think it is more natural that both marks will be
pronounced as an abbreviation, meaning that each individual letter will be said and
heard. I also note that both the expert report of Carole E. Ghaski and McNeill’s
statutory declaration assess the marks on that basis.
85. As both marks begin with the letter G, and somewhere there comes the letter I, I
think there is a medium to high degree of aural similarity between the “GIA” mark and
the subject mark.
Conceptual similarity
86. Conceptually speaking, it is understandable that “GIA” and “GHI” represent the
corporate names of the opponent and the applicant respectively. Given this same
underlying message, and the fact that both marks are a three letters combination mark
beginning with the letter G, there is a high degree of conceptual similarity between the
23
marks.
Distinctiveness of the “GIA” mark
87. A mark may be particularly distinctive either per se or because of the reputation
it enjoys with the public. The more distinctive an earlier mark, the greater will be the
likelihood of confusion (Sabel BV v Puma AG).
88. In determining the distinctive character of an earlier trade mark, I must make an
overall assessment of the greater or lesser capacity of the mark to identify the goods or
services for which it has been registered as coming from a particular undertaking, and
thus to distinguish those goods or services from those of other undertakings. In
making that assessment, account should be taken, in particular, of the inherent
characteristics of the mark, including the fact that it does or does not contain an element
descriptive of the goods or services for which it has been registered; the market share
held by the mark; how intensive, geographically widespread and long standing use of
the mark has been; the amount invested by the undertaking in promoting the mark; the
proportion of the relevant section of the public which, because of the mark, identifies
the goods or services as originating from a particular undertaking; and statements from
chambers of commerce and industry or other trade and professional associations
(Windsurfing Chiemsee v Huber and Attenberger [1999] E.C.R. I-2779; Lloyd
Schuhfabrik Meyer v Klijsen Handel [1999] E.T.M.R. 690).
89. As I have analysed above, the letter mark “GIA” as well as the GIA Trade Marks
Combination (of which the “GIA” mark forms part) have become the distinguishing
feature of the opponent and has acquired through them a substantial reputation and
goodwill in its goods and services offered and promoted in Hong Kong.
90. Hence, as far as the question of whether the “GIA” mark has acquired an
enhanced degree of distinctive character through use is concerned, I would hold that it
has.
Likelihood of confusion
91. The global assessment that I am required to undertake implies some
interdependence between the relevant factors. Thus, a lesser degree of similarity
24
between those goods or services may be offset by a greater degree of similarity between
the marks, and vice versa.
92. In the present case, having found that the parties’ goods and services are identical
or similar, I find that visually and conceptually the “GIA” mark and the subject mark
are of a high degree of similarity, and aurally, they are of a medium to high degree of
similarity.
93. It has been said that the more distinctive the earlier mark, the greater the risk of
confusion (SABEL, paragraph 24). Marks with a highly distinctive character, either
per se or because of the reputation they possess on the market, enjoy broader protection
than marks with a less distinctive character (see Canon, paragraph 18, and Lloyd
Schuhfabrik Meyer, paragraph 20). As obvious from the discussions so far, the “GIA”
mark has acquired an enhanced degree of distinctive character through use in the field
of gemology.
94. In the evidence there had been discussions about how consumers would make a
purchase of gemstone or jewellery products. According to Chan Hiu-Sang, Albert, who
is a director of Chow Tai Fook, a famous local jewellery retail brand, for most people,
buying a diamond ring or any other piece of diamond jewellery would qualify as one
of the largest purchases they will ever make; many purchasers of diamond and jewellery
would therefore undertake research before making such a purchase, and because of the
internet, finding and evaluating standards and laboratories is freely and easily available
and allows consumers to make smarter purchasing decisions.
95. Mr. McNeill said that diamonds are of very high value, their significance as
precious gemstones are generally purchased for special occasions such as engagement,
weddings, or other significant occasions in life.
96. All this suggest that the goods and services involved will be expensive, and of a
kind to which potential purchasers would give careful and due consideration before
purchase. But would the fact that consumers would pay a high level of attention to
the selection of the goods and services means that they would also pay high attention
to the marks involved?
97. Mr. Ephraim Zion, a person experienced in the field of gemology, said that
diamond certification by a reputable gemological laboratory to authenticate a
diamond’s attributes is integral to its valuation, and he cited “GIA” to be generally
25
regarded by the industry and consumers as the most prestigious and authoritative
gemological laboratories and the widely recognized authority in diamond certification.
98. Mr. Chan also cited the “GIA” certified diamonds as a symbol of credibility, in
respect of which many consumers would look to buy certified diamonds to get the
assurance that they are purchasing high quality diamonds.
99. Mr. McNeill is of the view that the public’s ability to discern two similar marks
will be greatly influenced by their emotional state, and this is particularly relevant in
the case of diamonds given the special value and the occasions as mentioned above.
100. With regard to the global assessment of the likelihood of confusion, how such a
high level of attention paid to the goods and services as well as the marks would fare in
the case of high degrees of similarity between the goods and services and between the
marks is a question that the present case must answer.
101. Mr. Chan offered his opinion which I would like to reproduce below:-
“Typically, diamond grading laboratories are referred to by their abbreviation
(e.g., GIA, AGS and HRD). Given that both “GIA” and “GHI” are 3-letter
acronyms which begin with the letter “G” and consist of the letter “I” and that
the opponent is the only famous diamond laboratory which begins with the letter
“G”, I think that there is a risk of confusion between GIA and GHI in the
marketplace amongst the consumers. Whilst purchasers of diamonds and
jewellery are relatively better informed than before, most of them are
inexperienced and unsophisticated purchasers who buy diamonds and jewellery
only on special occasions like engagements and other special occasions. As
such, although consumers who read about GIA on the Internet know that they
would like to buy diamonds and gemstones certified by GIA, due to imperfect
recollection, they may not have the ability to discern between GIA and GHI
when they walk into a jewellery store and are exposed to an array of diamond
jewellery. They might remember to ask for a grading certificate, but if they
were presented with a GHI grading certificate, they would likely see the 3-letter
name/acronym, see the “G” at the beginning, and think the diamonds were
graded by GIA, the institution they had read about on the Internet.”
102. I have discussed above that goods and services rendered in relation to the field
of gemology has a market for both professional gemologists and non-professional
26
gemstone or jewellery buyers. Mr. Zion said that whilst experienced industry
professional may be more able to distinguish between the “GHI” mark and the “GIA”
mark, he thought there is a risk of confusion in the marketplace amongst end consumers
of diamonds and precious stones who are, for the most part, inexperienced, untrained
and unsophisticated purchasers who buy diamonds and precious stones very
infrequently.
103. Mr. Chan, Mr. Zion and Mr. McNeill are third parties that have not been shown
to have any connection with the opponent other than that in their business they may
have to deal with the opponent’s goods and services. I trust their observations of how
consumers would perceive the marks and the manner in which they would purchase
gemstone or jewellery are fair assessments.
104. Mr. Hughes, the opponent’s counsel, submitted that the general purchasing public
would include the increasing number of persons from mainland China residing or
visiting Hong Kong on business or as tourists, many of them don’t have a high level of
fluency in the English language. Be that as it may, I think their position is not much
different from many of the Cantonese-speaking purchasing public of diamonds and
precious stones in Hong Kong who would not undertake a side-by-side comparison
between the marks and must instead rely upon the imperfect picture of them he kept in
his mind, who might have a vague recollection of his own research or friends’ advice
that a three-letter acronym mark beginning with the letter G and a letter I somewhere is
the brand name he should go for if he wants to buy a high quality certified diamonds.
As such I think the risk that the consumer would mistake “GHI” for “GIA” is very high
if he were presented with the relevant goods and services offered by the applicant, or
that it is likely that he would wrongly believe that the respective goods and services
come from the same or economically-linked undertakings as the opponent’s. There is
a likelihood of confusion within the meaning of section 12(3) of the Ordinance (Canon
Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc., op. cit.).
105. It follows that the ground of opposition under section 12(3) succeeds.
106. As I have found in favour of the opponent on the ground of opposition under
section 12(3) of the Ordinance, it is not necessary for me to consider the other grounds
of opposition.
27
Conclusion
107. As the opponent has been successful in this opposition, I award the opponent
costs. Subject to any representations, as to the amount of costs or calling for special
treatment, which either the opponent or the applicant makes within one month from the
date of this decision, costs will be calculated with reference to the usual scale in Part I
of the First Schedule to Order 62 of the Rules of the High Court (Cap. 4A) as applied
to trade mark matters, unless otherwise agreed.
(Frederick Wong)
for Registrar of Trade Marks
19 May 2014
28
Annex 1
Trade Mark
No.
Trade Mark Class
No.
Specification of Goods or Services
1. 19810813 GEMOLOGICAL
INSTITUTE OF AMERICA
16 paper and paper articles, cardboard and
cardboard articles, printed matter, periodical
publications, books, photographs, stationery,
instructional and teaching material (other than
apparatus); all relating to gemology or to
gems.
2. 1982B0478 GIA
16 printed matter, periodical publications, books,
instructional material (other than apparatus)
all relating to gemology or to gems.
3. 199900489AA GIA 9, 35 video tapes, compact disc read-only-
memories, audio tapes; all being educational
materials relating to gemology; data carriers,
transmitters and reproducers of sound, images
or data; all included in Class 9.
mail order services by product catalog;
computerized ordering via computer
terminals; all included in Class 35.
4. 200104503 GIA 42 gemological services; registration services
relating to precious gems; grading precious
gems; all included in Class 42.
5. 2002B08340 GTL 42 identifying, grading, registering, and
inscribing precious gems; pearl identification;
all being gemological services and included in
Class 42.
6. 2002B13902 GIA GEM TRADE
LABORATORY
INTEGRITY
42 gemological services; identifying, grading,
registering, and inscribing precious gems;
pearl identification; all included in Class 42.
7. 200306517 GIA GEM TRADE
LABORATORY
INTEGRITY
42 gemological services, registration services
relating to precious gems; grading of precious
gems; all included in Class 42.
29
Trade Mark
No.
Trade Mark Class
No.
Specification of Goods or Services
8. 200315802 GIA 14 jewelry, jewelry boxes, jewelry cases, pearls,
gems, gem replicas, gem cases, beads, pins,
label pins, rings, ring stands; all included in
Class 14.
9. 200401163 GIA 41 conducting a school training people in the arts
of gem identification and jewelry making; all
included in Class 41.
10 200401909 GIA 9 scientific instruments and apparatus,
microscopes, measuring instruments, scales,
refractometers, lamps for the microscopes,
color testing equipment, ultraviolet and
fluorescent testing equipment and photo-
optical instruments and spectroscopes, tubes,
filters, color testing equipment, color
comparaturos, ultraviolet and fluorescent
testing equipment, photo-optical instruments,
spectroscopes, microscopes for grading gems,
and portable laboratory equipment; scientific
instruments and apparatus for examining,
testing, evaluating, and appraising pearls and
jewelry; all included in Class 9.
11. 200403770 GIA 9 microscopes, measuring instruments, scales,
refractometers, lamps for the microscopes,
color testing equipment, ultraviolet and
fluorescent testing equipment and photo-
optical instruments and spectroscopes, tubes,
filters, color testing equipment, ultraviolet and
fluorescent testing equipment, photo-optical
instruments, spectroscopes, microscopes for
grading gems, and portable laboratory
equipment; scientific instruments and
apparatus for examining, testing, evaluating,
and appraising gems, pearls and jewelry; data
carriers, computer software, video tapes, CD-
ROMs, audio tapes; all featuring educational
materials; transmitters and reproducers of
sound images, data, telephonic and digital
transmitters of information; all in the field of
gemology, pearls and jewelry; all included in
Class 9.
30
Trade Mark
No.
Trade Mark Class
No.
Specification of Goods or Services
12. 2004B08504 GEMOLOGICAL
INSTITUTE OF AMERICA
KNOWLEDGE
41 conducting a school training people in the arts
of gem identification and jewelry making; all
included in Class 41.
13. 2005B00434 GEMOLOGICAL
INSTITUTE OF AMERICA
16 printed matter, periodical publications, books,
instructional and teaching materials (other
than apparatus); all relating to gemology or to
gems.
14. 300176814 GEMOLOGICAL
INSTITUTE OF AMERICA
KNOWLEDGE
9 video tapes, compact disc read only
memories, audiotapes; all being educational
materials relating to gemology; data carriers,
transmitters and reproducers of sound, images
or data; all included in Class 9.
15 300176823 GIA GEMOLOGICAL
INSTITUTE OF AMERICA
9 data carriers, videotapes, CD-ROMs,
audiotapes and transmitters and reproducers
of sound, images or data; all featuring
educational materials in the field of
gemology; all included in Class 9.
16. 300176832 GIA GEMOLOGICAL
INSTITUTE OF AMERICA
16 paper, paper articles, cardboard and cardboard
articles, printed matter, periodical
publications, books, photographs, stationery,
and instructional and teaching materials.
17. 300176841 GIA GEMOLOGICAL
INSTITUTE OF AMERICA
41 in-residence, on-site and correspondence
courses in gemology including jewelry
design, sale and promotion of gems, pearls
and jewelry, investigation of genuineness of
gems and valuation of gems and pearls.
18. 300207611 GEMOLOGICAL
INSTITUTE OF AMERICA
KNOWLEDGE
35 mail order services by product catalog;
computerized ordering via computer
terminals.
31
Trade Mark
No.
Trade Mark Class
No.
Specification of Goods or Services
19. 300399033 GEMOLOGICAL
INSTITUTE OF
AMERICA
41 in-residence, on-site and correspondence
courses in gemological including jewelry
design, sale and promotion of gems, pearls
and jewelry, investigation of genuineness of
gems and valuation of gems and pearls; all
included in Class 41.
20. 300584488 GEMOLOGICAL
INSTITUTE OF AMERICA
9 video tapes, compact disc read only
memories, audio tapes; all being educational
materials relating to gemology; all included in
Class 9.
21. 300584497 GEMOLOGICAL
INSTITUTE OF AMERICA
35 mail order services by product catalog;
computerized ordering via computer
terminals.
~ End ~