Post on 22-Aug-2020
TRADE MARKS ORDINANCE (Cap. 559) OPPOSITION TO TRADE MARK APPLICATION NO. 300152342 MARK:
CLASS:
6, 7, 8, 9, 11, 20, 21
APPLICANT: TESCOMA S.R.O.
OPPONENT: TESCO STORES LIMITED
STATEMENT OF REASONS FOR DECISION
Background
1. On 4 February 2004, Tescoma S.R.O. (the “applicant”) filed an application
(the “subject application”) under the Trade Marks Ordinance, Cap. 559 (the
“Ordinance”) for registration of the following marks in series:-
(“the suit marks”)
(the applicant claims the colour red as an element of marks "A" and "D" in the series)
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2. Registration is sought in respect of the following goods in Classes 6, 7, 8, 9,
11, 20 and 21:-
Class 6
set of items made from wire including suspension systems, metal rail hooks.
Class 7
kitchen electrical appliances including hand mixers, electrical universal can openers,
electrical grinders, electrical spice grinders.
Class 8
dinner cutlery, serving cutlery, forks, knives, little knives with fork, spoons, teaspoons,
butcher's knives, kitchen knives, sharpening steels, mincing knives, scissors,
hairdressing scissors, tailor scissors, scissors for paper, scissors for food, knife
sharpeners, tracer, cutting wheel, non-electrical universal can openers, openers cork
(part for hand-operated openers), multi-function openers, openers with knife, egg
carvers, chips carvers, decorating carvers, scrapers, tongs, tongs for ice, sugar, pastries,
universal tongs, tongs with fork, for cakes, for salad, for spaghetti, nut-crackers.
Class 9
electrical devices for remote-controlled ignition, kitchen scales, electrical kitchen
scales, weights, non-medical thermometers, kitchen timers.
Class 11
devices for economic water saving including water savers, shower heads, bubble
makers, water closet water savers, electrical and piezo-electrical gas lighters,
electrical grills, electrical toasters, electrical coffee makers.
Class 20
straws (drinking straws), non-metal rail hooks.
Class 21
stainless steel kitchen utensils and cookware, non-electrical grills, grill utensils,
vacuum flasks, vacuum flasks for meal, stainless steel kettles, pressure cookers,
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non-electrical coffee makers, milk cookers, tea kettles, kitchen accessories including
cookware, pots, pans, gravy boats, glass lids, covers, jugs, frying pans, frying pans
with special surfaces, bakeware, silicone bakeware, roasting pans, dinner services,
serving sets, plates, stainless tableware, trays and bowls, food carriers, bowls, coasters
and sets of them, microwave cookware, cookware for freezing and cooling boxes;
kitchen utensils and kitchen accessories including spoons, stoppers, bottle openers,
kneading whisks, portioning tools, decorating dough carvers and cutters, tart moulds,
stoners, brushes, clamps, staples, grips, hooks, clasps, clips, onion holders; all being
kitchen utensils; apple peelers, household baskets, grill needles, larding needles,
needles for rolls, barbecue needles, glazing brushes, non-electrical whisks, ladles,
wooden spoons, turners, forks, scrapers, twirling sticks, meat mallets, mincing knives
with beater, mousse makers, strainers, sieves, funnels, dredging funnels, folding grates,
steamers, steaming pads, graters, rolling pins, dumpling makers, cookie cutters, cake
decorators, servers, sugar bins, cream dishes with lid, jars, kitchen dispensers, jugs
with scale, salt/pepper/sugar shakers, spice jars and sets of them, ketchup and syrup
pumps, manual grinders, manual spice grinders, toothpicks, skewers, napkin stands,
knife blocks, potato mashers, garlic presses, non-electrical lemon presses,
non-electrical juicers, plastic dispensers, rails for kitchen utensils,
plastic/wooden/glass cutting boards, jugs with/without piston made of glass, metal,
plastics and combinations thereof, mugs, extracting sieves, coffee measuring jugs, foil
cutters, funnels for liquids, wine and champagne stoppers, cooling vessels, bottle neck
rings, vacuum closures and vacuum pumps, salad bowls, serving trays, small bowls,
plates, table sets, bread boxes, shakers, bar measuring dispensers, stirring picks, sieves
with a spiral, plastic trays and pads, dusters, cleaning kitchen towels, place mats
(other than paper ones) for table laying, cleaning tools, household gloves, metal soap
rests, cap stoppers, kitchen cutting boards.
3. Particulars of the subject application were published on 4 June 2004. Tesco
Stores Limited (the “opponent”) filed a notice of opposition which includes the
grounds of opposition on 12 October 2004.
4. The opposition hearing took place before me on 18 August 2010. Mr. CW
Ling of Counsel, instructed by Vincent Luk & Associates, represented the applicant.
The opponent did not appear at the hearing.
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Grounds of opposition
5. In the amended grounds of opposition1, the opponent opposes registration of
the suit marks under sections 3, 11(1)(a), 11(1)(b), 11(4)(b), 11(5)(a), 11(5)(b), 12(3),
12(4) and 12(5)(a) of the Ordinance.
Counter-statement
6. The applicant filed a counter-statement on 11 January 2005, denying all the
grounds of opposition.
The opponent’s evidence
7. The opponent’s evidence comprises two statutory declarations of Emer Kelly
(nee O’Flynn), one dated 5 October 2005 (“Kelly’s first statutory declaration”) and
the other dated 29 July 2007 (“Kelly’s second statutory declaration”). Mrs. Kelly is
a solicitor and the IP Manager of the opponent. She made the statutory declarations
from her own personal knowledge and from the opponent’s records to which she had
full access.
8. According to Mrs. Kelly, the opponent, Tesco Stores Limited, was founded
by the late Sir John (Jack) Cohen who went into business selling groceries in the east
end of London in about 1919. The name TESCO was the name coined some time in
1924 when Jack Cohen made a deal with a tea wholesale firm. The partner in the tea
firm was a Mr. T E Stockwell, and the brand name TESCO was a combination of the
initials of T E Stockwell and the first letters of Jack Cohen’s surname. The opponent
was founded as a private limited company in 1931, and between 1931 and 1939 the
business expanded with the opening of some 113 small shops, mostly in and around
the London area. The opponent has registered trade marks in relation to its name,
1 A “grounds of opposition” attached to the notice of opposition was filed on 12 October 2004. It was later replaced by this “amended grounds of opposition” filed on 27 July 2005 to correct some typographical errors.
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“TESCO”. In 1947, Tesco Stores (Holdings) Limited was floated as a public
company. From then on, self-service stores grew.
9. Mrs. Kelly alleges that the opponent has become the largest and most
profitable grocery retailer in Great Britain, operating 33 stores in the country. The
opponent is said to be the leading food retailer in Northern Ireland, operating 77 stores
in the Republic of Ireland and has a UK store portfolio of 1928 outlets. The
opponent’s market share in 2002 was approximately 17% for food and 5% for
non-food.
10. Mrs. Kelly also gives an account of the subsidiaries and principal operating
subsidiaries of the opponent over the world. Mrs. Kelly divides them into three
separate lists, namely, the “United Kingdom” list, the “Overseas Trading” list and the
“International” list. Every subsidiary on each list has been given a remark of one or
two words describing its business activity. Presumably the first list includes those
subsidiaries that operated in the United Kingdom, their business activities cover retail,
property, insurance, logistics, banking, financial services and telecommunications.
Those on the second list all have the word “retail” as their remark; among them are
subsidiaries which operated as retailers across vast parts of Asia, namely, Japan,
Korea, Taiwan and Thailand, as revealed in the subsidiaries’ names and/or by the
indications of place of operation given in brackets immediately after their respective
names. There are only three subsidiaries on the third list, presumably they should be
operating not in the United Kingdom and not in the retail business, the word “buying”
is used to remark two of them and the words “internet shopping” for the remaining
one. Of the two “buying” subsidiaries, one is called “Tesco Stores Hong Kong
Limited”, which is listed with a bracketed indication showing that it operates in or for
Hong Kong.
11. Impressive turnover figures are given in Mrs. Kelly’s statutory declaration in
respect of the ten-year period from 1994 to 2003, but they are figures concerning only
UK. The opponent’s shares are traded on the London Stock Exchange and it is a
constituent of the FT FTSE Index, featuring in many reports of financial companies
and brokers. Exhibit EO’F1 is a bundle of reports of financial institutions between the
years 2002 and 2004. The company is said to be the biggest private sector employer
in the United Kingdom and also employed many people in Central Europe and across
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Asia. The opponent is not only involved in the food industry, it is also the largest
independent petroleum retailer in the United Kingdom. The opponent has targeted
six categories for its current expansion programme: (i) telecoms; (ii) financial services;
(iii) clothing; (iv) medicines; (v) audio-visual and (vi) leisure.
12. The opponent has also enjoyed extensive press coverage for many years.
Exhibit EO’F2 are copies of articles that have appeared in major United Kingdom
newspaper and specialist retail publications.
13. The opponent has a number of websites and has developed home shopping
via the internet. The Tesco website was first launched in April 1995, and in 2003 the
turnover of the e-retail business reached £447m. The opponent has a 65% share of
the UK internet grocery market. The opponent has also become an internet service
provider, and has developed the Tesco Information Exchange (TIE) on the internet,
thereby allowing rapid two-way exchange of information between the opponent and
its trading partners. It is alleged that the opponent has established trading globally
and “many products are sold by Tesco Hong Kong”. The allegation in quotes shall
be examined in the later part of this decision.
14. There are other exhibits attached to Kelly’s first statutory declaration
providing material largely to profile the opponent and its extensive business
operations. I list them below coupled with any observation I may have:-
EO’F3 – results of research undertaken by the library facilities of the
Financial Times highlighting the number of items and
references to TESCO that appeared in the Financial Times
and the Economist between 1 January 1991 and 31
December 1998. There are 899 references.
EO’F4 – a bundle of specific articles (which are listed as items 1 to
24 of exhibit EO’F3) that are taken from the Financial
Times and the Economist.
EO’F5 – fact sheet setting out the awards, mostly in connection with
retail services, granted to “Tesco” from 1996 to 1998.
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EO’F6 – a schedule of all registrations, UK and international, that
the opponent has maintained in respect of the “Tesco” trade
mark.
EO’F7 – certified copy of entries of all United Kingdom trade mark
registrations the opponent has had in UK, including the
earliest registration for TESCO in 1936.
EO’F8 – copies of certificates of trade mark registrations in various
countries.
EO’F9 – company spotlight issued by Goldman Sachs dated 6 May
1999, referring to Tesco growth at home and abroad.
EO’F10 – an introduction produced by the opponent entitled “Every
Little Helps” that features the countries and brief overview
of the development of the opponent.
EO’F11 – a range of photographs of several of the opponent’s stores
across Europe and Asia.
EO’F12 – copies of Annual Reports and Accounts for the years 1984
to 2003.
15. Kelly’s second statutory declaration was filed under Rule 20(1) of the Trade
Marks Rules Cap 559 sub leg (the “Rules”) as evidence in reply to the applicant’s
evidence. As such it contains comments about the applicant’s evidence, which in the
main consists of Mrs. Kelly’s own observation and submissions. I do not propose to
summarize them but may refer to the relevant parts as and when appropriate.
16. There are three exhibits attached to Kelly’s second statutory declaration,
they are respectively the applicant’s application for registration as a community trade
mark of the mark “Tescoma”2 (as “Exhibit “A”), the decision of the Second Board of
Appeal of the Office for Harmonization in the Internal Market (Trade Marks and
2 The mark looks the same as mark "D" of the suit marks in the present proceedings.
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Designs) (“OHIM”) in favour of the opponent’s opposition to the application (as
“Exhibit “B”), and an appeal filed by the opponent in an opposition proceedings
brought by the present opponent against the present applicant in respect of an
application for registration of the mark “tescoma” with the Trade Mark Office of the
PRC State Administration and Management for Commerce and Industry (as “Exhibit
“C”). In short, as these relate to disputes between the present opponent and
applicant which took place outside the context of the present proceedings, in respect
of which I do not have the full details and their particular factual circumstances might
have no equivalent in the present case, I do not find them to be directly relevant for
the present purposes. I would at most treat them as reference material.
The applicant’s evidence
17. The applicant’s evidence comprises a statutory declaration of Jiří Vaculík
dated 3 November 2006 (“Vaculík’s statutory declaration”). Jiří Vaculík is a director
of the applicant. He made the statutory declarations from his own personal
knowledge, from the applicant’s records or from what had been supplied to him by the
applicant’s trade mark agents Messrs. Ibidem Consulting in Spain and Messrs.
Vincent Luk & Associates in Hong Kong. He had read Kelly’s first statutory
declaration and was duly authorized by the applicant to make the declaration.
18. According to Mr. Vaculík, the applicant is an internationally reputed
company and was established by an entry in the Commercial Register of the Czech
Republic on 11 November 1992. Even before the establishment of the applicant,
since 1 April 1992, the word “TESCOMA” was used as the name of an association
established upon the Association Agreement dated 1 April 1992, the members of the
association later became the partners of the applicant. Exhibit “JV-1” is an excerpt
from the Commercial Register.
19. It is alleged that “tescoma/Tescoma” was coined and adopted as the
applicant’s name and trade mark to distinguish the company’s products from other
traders. The applicant has registered the “tescoma” or “Tescoma” marks in its
country of origin, namely, Czech Republic, in respect of a variety of goods, which can
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be categorized as a broad range of tableware and kitchenware such as cutlery, utensils,
kitchen electrical appliances and devices, in Classes 6, 7, 8, 11, 12 and 21 over the
years since 1993. The applicant has also registered its marks in the International
Register of Marks maintained under the Madrid Agreement and Protocol. The
applicant has been using the marks in many countries and regions around the world,
including Hong Kong. Exhibit “JV-4” contains copies of selected invoices and
shipping documents of the applicant showing sales of applicant’s goods in various
countries, among them were invoices issued in 2004 to 2006 to City Super Ltd with a
Hong Kong address.
20. Sales figures for Hong Kong in the years 2004 to 2006 are EUR 4,200,
13,000 and 9,500 respectively, this doesn't compare with contemporaneous sales of
the applicant’s goods in European countries like Russia, Slovak Republic, Poland,
Italy, where annual sales ranged from several millions to over ten million euros. At
its home country Czech Republic, sales for 2004 and 2005 are EUR 18,753,000 and
15,300,000 respectively.
21. Exhibit “JV-5” contains copies of invoices and delivery notes issued by the
applicant to “TESCO STORES ČR/SR a.s.” It is alleged that this shows distribution
of the applicant’s goods by the opponent – assuming that TESCO STORES ČR/SR a.s.
refers to the opponent – and that the opponent did not consider there is confusion
between the opponent’s mark “TESCO” and the applicant’s mark “tescoma/Tescoma”.
Exhibit “JV-10” contains copy extracts of catalogues or leaflets of “Tesco” exhibiting
the applicant’s products promoted with the mark “tescoma/Tescoma”. It is said that
the products were distributed by the opponent in Czech Republic, Slovak Republic
and Hungary. Exhibit “JV-11” contains decisions on Opposition to International
Registered Mark “TESCOMA” nos.00013 and 00014 issued by the Trade Mark
Office of the PRC State Administration and Management for Commerce and Industry.
22. There are other exhibits attached to Vaculík’s statutory declaration largely to
show the promotional and advertising activities of the applicant using the mark
“tescoma/Tescoma”:-
JV-6 – copy photographs in the applicant’s catalogues (in language
other than English) showing some of the applicant’s
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kitchenware products bearing the mark “tescoma/Tescoma”.
JV-7 – copy advertisement or catalogues (in language other than
English) showing the mark “tescoma/Tescoma” appearing
on labels attached to the applicant’s kitchenware products.
JV-8 – copy photographs showing that the applicant had sponsored
sports such as soccer by making reference to the mark
“tescoma/Tescoma”.
JV-9 – copy advertisements of the applicant appearing in
magazines featuring the mark “tescoma/Tescoma”.
23. The remaining part of Vaculík’s statutory declaration contains responses and
comments on Kelly’s first statutory declaration, which in the main consists of
submissions. I do not propose to summarize them but would refer to the relevant
parts as and when appropriate.
Findings on reputation of the opponent’s mark “TESCO”
24. The opponent’s case, as apparent from the discussions of its evidence so far,
centres around the reputation of the opponent’s name and mark “TESCO”. That
follows from the opponent’s opposition being premised in large part on sections 12(3),
12(4) and 12(5)(a) of the Ordinance where the opponent’s mark must be assessed with
reference to any enhanced distinctive character, or reputation and goodwill, it has
acquired or generated. It is convenient for me to first investigate the evidence and
make the relevant findings in this connection.
25. I have outlined the evidence of the opponent at paragraphs 7 to 16 above.
Mrs. Kelly has given a detailed account of the opponent’s development history and its
recent scope of business and operation. Whilst there is little doubt nor dispute that
over the years, as supported by the evidence filed and discussed above, in particular
those third party reports and assessments, the opponent, a long time established and
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well recognized brand name in the United Kingdom, has expanded from its grocery
retailing base in UK into new markets, and has become a successful international
retailer whilst preserving its lead in the retail market at home. What is remarkable
for the present purposes, however, is the apparent absence of the opponent from the
Hong Kong retail or consumer market. At the hearing, Mr. Ling, counsel for the
applicant, illustrated this point by going over the various exhibits to Kelly’s first
statutory declaration one by one, highlighting wherever possible information that
could shed light on the presence or success of the opponent in new growth markets.
As Mr. Ling was able to show, the places where the opponent had successfully set up
retail markets are mostly places across Central or Eastern Europe and Asia, Hong
Kong is conspicuous by its absence from being one of these places.
26. I do not propose to repeat Mr. Ling’s exercise here, suffice to just pick a few
examples: in a Credit Suisse’s Equity Research Report issued for August 20023, there
is a table showing the entry of Tesco into new markets from 1994 to 2002, naming in
chronological order Hungary, Poland, Czech/Slovak, Thailand, South Korea, Taiwan
and Malaysia; a report issued by Merrill Lynch for December 20034 named Thailand,
Korea, Taiwan and Malaysia in a table of Tesco sales in Asia for 2002 and 2003; on a
map produced by the opponent that profiles the opponent’s business operations
around the world5, what had been put down for the Asia region is, “We operate in
across South East Asia: Thailand, South Korea, Taiwan, Malaysia and Japan. This
gives us access to a market of 155 million people. We employ 28,000 people across
the region”.
27. All pieces of evidence point unequivocally to that the opponent has no retail
market or consumer business in Hong Kong. Naturally and understandably, this is
not a fact which the opponent would readily admit and spell out for the purposes of
the present proceedings. Hence when it is said that “Tesco has established trading
partners globally and many products are sold by Tesco Hong Kong” – the sentence at
the end of paragraph 9 of Kelly’s first statutory declaration – one should read it
3 This is contained in exhibit “EO’F1” attached to Kelly’s first statutory declaration. 4 This is contained in exhibit “EO’F1” attached to Kelly’s first statutory declaration. 5 The map featured in an introduction entitled “Every Little Helps”, produced by the Corporate Affairs Department of the opponent in 2003. “Every Little Helps” is a document that gives a brief overview of the development of the opponent, featuring the countries in which the opponent had business operations. The document is contained in exhibit “EO’F10” attached to Kelly’s first statutory declaration.
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cautiously and not too literally without regard for the wider context I am going to
discuss. Mr. Ling dismissed it as just a tantalizing sentence given that the identity of
“Tesco Hong Kong” is not known, nor is the nature of its sales activities or the
identity of the buyers of such products. This is a fair comment to make and I accept
that given the potential ambiguities, the sentence on its own has little significance.
But read it together with other information gleaned from the evidence, in particular
the other parts of Kelly’s first statutory declaration, I think some meaningful messages
could still be extracted from the sentence. At the very least, it is within reason to
suggest that “Tesco Hong Kong” refers to “Tesco Stores Hong Kong Limited”
because this is the only subsidiary named in Kelly’s two statutory declarations that
might have a connection with Hong Kong. Indeed Mr. Vaculík in his statutory
declaration had just treated “Tesco Hong Kong” to be the said subsidiary6, and it is
noteworthy that Kelly’s second statutory declaration, which was filed as evidence in
reply to Vaculík’s statutory declaration, did not “correct” it if ever this was not true.
28. Tesco Stores Hong Kong Limited, as discussed in paragraph 10 above, is
designated as a "buying" subsidiary for the opponent on the “International” list, as
distinct from the "retail" subsidiaries on the “Overseas Trading” list. In paragraph
26 above, I have quoted a short description appearing on a map produced by the
opponent as exhibited in “EO’F10”, that description was then followed by a sentence
saying that the opponent did source its goods for the region in Bangalore, Bangkok
and Hong Kong. According to the “Shore Capital Stockbrokers” report issued in
January 2004, 7 the opponent has buying centres in Hong Kong as well as in
Bangalore and Prague, in order to bring it “closer to a dedicated supply chain”. In
Kelly’s first statutory declaration itself, it is said later in paragraph 14 thereof, “To
date, Tesco has 58 stores in Thailand equaling 4.8m sq. ft. Tesco has opened 27 stores
in South Korea. Tesco through its operations in Hong Kong supplied products and
goods internationally and the turnover of goods for 2004 through Hong Kong was
approximately £347 million.” (emphasis added) I note that that turnover figure
given is not supported by any evidence whatsoever.
6 See paragraph 17 of Vaculík’s statutory declaration, commenting on paragraph 9 of Kelly’s first statutory declaration. 7 This is contained in exhibit “EO’F1” attached to Kelly’s first statutory declaration.
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29. Piecing together all the above, the whole picture is clear: whilst Hong Kong
is one of the international sourcing hubs of the opponent, with a designated subsidiary
operating here for the very purpose of buying and sourcing products for the
opponent’s international business, the opponent does not actually carry on any retail
or consumer business in Hong Kong, either on its own or by any of its subsidiaries.
Hence when it is said that “many products are sold by Tesco Hong Kong”, on the face
of it, it seems a subsidiary of the opponent might be selling products in Hong Kong
presumably to local consumers, but as the above analysis shows, it has to be read and
understood in the wider context of the kind of infrastructure the opponent has for its
global business and operation, in particular, the opponent on the one hand has supply
chain of subsidiaries operating in places including Hong Kong providing products to
the opponent; on the other hand, it, or any of its subsidiaries for that matter, has no
retail or consumer business here.
30. I conclude, therefore, all that has been shown is that the opponent’s activities
in Hong Kong are at most limited to buying and sourcing of products for its
international business, however, details of the buying and sourcing activities are
lacking in the opponent’s evidence. On the whole, there is simply no evidence
showing that there is any retail or consumer business carried on here by the opponent
or any of its subsidiaries, or that the opponent’s products are offered to the public in
Hong Kong by reference to the mark “TESCO”.
31. As the opponent’s activities in Hong Kong are only in relation to those
buying and sourcing activities, it is hard to perceive that the trade mark “Tesco” had
acquired a reputation among the local public through use by the time the applicant
filed the subject application. This is so notwithstanding that from what has been
presented in this case, the mark has been widely registered in Hong Kong from Class
1 to Class 42 in respect of a great number of goods and services8.
32. Also of little help is the faint suggestion throughout the opponent’s evidence
that the reputation of the opponent as an internationally renowned retailer had
somehow spilled over into Hong Kong. For example, it is alleged that the opponent
8 The great number of goods and services stated in the specifications of the opponent’s registrations are in fact the entire class headings of the respective classes and in addition, in some classes, some more items of goods.
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has been at the forefront of home shopping via the Internet, and that Tesco.com is the
largest e-grocer and most profitable e-retail business in the world. I do not find this
helps the opponent’s case at all. Given that Tesco.com is a UK-based website, in the
absence of any indications that the website also aimed at or intended for consumers in
Hong Kong, that the goods and services offered by the opponent via the Internet had
been offered to customers in Hong Kong, or at least that the opponent’s website had
been accessed by anyone from Hong Kong, I cannot infer that the purchasing public
in Hong Kong gain any recognition of the trade mark “TESCO” via the Internet.
Equally weak in this context is the alleged fact, which I have no doubt is true, that the
opponent has enjoyed extensive press coverage for many years and that articles
featuring the opponent have appeared in many major United Kingdom newspaper and
specialist retail publications. The only problem with this is that, given the relevant
class of consumers in the present proceedings being the ordinary purchasing public in
Hong Kong, there is no reason to believe that such persons are avid readers of or
subscribers to these major United Kingdom newspaper and specialist retail
publications.
33. In short, there is simply no evidence suggesting that any goods and services
are offered by reference to the trade mark “TESCO” to the public in Hong Kong.
34. I find that as of the day the subject application was filed, products
designated by the opponent’s mark “TESCO” did not enjoy reputation or goodwill in
Hong Kong, nor should it be entitled to claim an enhanced degree of distinctive
character.
Findings on grounds of oppositions
35. As pleaded by the opponent in the amended grounds of opposition, there are
a number of grounds of opposition against the subject application, namely, those
under sections 3, 11(1)(a), 11(1)(b), 11(4)(b), 11(5)(a), 11(5)(b), 12(3), 12(4) and
12(5)(a) of the Ordinance. Some of the grounds I have difficulty seeing that they are
based on tenable basis. I shall first deal with those that could be readily disposed of.
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Sections 3 and 11(1)(a) and (b) of the Ordinance
36. Section 11(1)(a) stipulates that signs which do not satisfy the requirements
of section 3(1) (meaning of “trade mark”) shall not be registered. Section 3(1)
defines a “trade mark” (商標) to mean any sign which is capable of distinguishing the
goods or services of one undertaking from those of other undertakings and which is
capable of being represented graphically.
37. Under section 11(1)(b), it is provided that trade marks which are devoid of
any distinctive character shall not be registered.
38. It is apparent from the opponent’s pleadings and evidence that the basis of its
opposition is not that the suit marks are by their nature incapable of distinguishing the
goods or services of one undertaking from those of other undertakings, or to put it in
another way, devoid of any distinctive character, nor that it cannot be represented
graphically. Rather the opponent’s contention is that the suit marks will cause
deception or confusion because of its resemblance to the opponent’s mark “TESCO”
which has been registered. None of sections 3(1), 11(1)(a) and 11(1)(b) is a proper
avenue for such a contention, hence these grounds must necessarily fail.
Section 11(5)(a) of the Ordinance
39. Section 11(5)(a) provides that a trade mark shall not be registered if, or to
the extent that, its use is prohibited in Hong Kong under or by virtue of any law. The
basis for this ground, as pleaded, appears to be that registration of the suit marks in
relation to the goods and services covered under the subject application will likely
cause public deception. The opponent has not specifically pointed out how the
registration of the suit marks would cause public deception under the context of the
section, however, it appears from the amended grounds of opposition that this is due
to the alleged close resemblance between the suit marks and the opponent’s mark
“TESCO”.
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40. I note that section 11(5)(a) is intended to apply where the prohibition by law
arises from the mark itself. Moreover, the right place to consider the issue of
confusion or deception arising from resemblance between the marks, should be
section 12(3) or 12(4) in so far as the opponent’s mark constituted earlier trade mark
or well known trade mark under the Ordinance, or under 12(5)(a) in so far as the use
of the suit marks is prohibited by virtue of the law of passing off. As noted by
Kerly’s Law of Trade Marks and Trade Names (“Kerly”), 14th Edition, paragraph
8-212, in discussing section 3(4) of the UK Trade Marks Act 1994 (which is similar to
our section 11(5)(a) of the Ordinance) -
“This is an absolute ground for refusal and, as indicated above, is concerned
with the trade mark itself. An objection that use of the mark would cause
passing off arises under s.5(4)(a) of the 1994 Act [which is similar to our
section 12(5)(a) of the Ordinance] and not under this subsection.”
41. This is also consistent with the heading of section 11 of the Ordinance which
is entitled “Absolute grounds for refusal of registration” and is to be contrasted with
section 12 of the Ordinance which deals with the “relative” rights of the applicant and
other parties. In fact the opponent has already pleaded sections 12(3), 12(4) and
12(5) as grounds of opposition. It follows that the ground under section 11(5)(a)
must fail.
Sections 11(4)(b) and 11(5)(b) of the Ordinance
42. Section 11(4)(b) provides that a trade mark shall not be registered if it is
likely to deceive the public.
43. Section 11(5)(b) of the Ordinance provides that a trade mark shall not be
registered if the application for registration of the trade mark is made in bad faith.
The term “bad faith” is not defined in the Ordinance.
44. Same as the opposition based on section 11(5)(a), the opponent has not
specifically pointed out how the registration of the suit marks is likely to deceive the
public, and why or in what way the application for registration could be said to have
16
been made in bad faith. It just appears that these allegations also stemmed from the
alleged fact that the suit marks closely resemble the opponent’s mark “TESCO”.
45. It has been well established that section 11(4)(b) provides for circumstances
where a mark is inherently deceptive when considered in the context of the goods
applied for. It is not intended to provide an alternative avenue of attack on relative
grounds as provided for in section 12 which deals with the “relative” rights of any
parties (see for example QS by S. Oliver Trade Mark [1999] R.P.C. 520 at 524;
Ruefach Marketing GmbH’s Application v. Oppositions of Codemarsters Ltd. [1999]
E.T.M.R. 412 at 422-423). Consequently, I can see nothing inherent in the suit
marks which would make them open to objection under the terms of section 11(4)(b).
46. As for the allegation of bad faith, which is a serious allegation that must be
proved, I have outlined the evidence of the opponent at paragraphs 7 to 16 above.
There is nothing I could see on which a case of bad faith should be premised. The
opponent also fails on the ground under section 11(5)(b).
The issue of similarity between the suit marks and the opponent’s mark
“TESCO” under sections 12(3), 12(4) and 12(5) of the Ordinance
47. I shall turn to oppositions under sections 12(3), 12(4) and 12(5)(a) of the
Ordinance, which in my view are more substantial. But before that, as I see it,
although sections 12(3), 12(4) and 12(5)(a) of the Ordinance are independent
provisions operating differently from one another, there is a condition common to all
of them that must be examined, viz., the existence of a certain degree of similarity
between the marks at issue. I shall therefore first examine this issue. Depending on
the relevant provisions, any similarity between the marks would be further
investigated to see if it is sufficient to give rise to a likelihood of confusion on the part
of the public concerned, as is the case under sections 12(3) and 12(5)(a) (insofar as it
relates to the law of passing off); or establishes a link such that the relevant section of
the public makes a connection between the two marks at issue even though it does not
confuse them, as is the case under section 12(4).
17
48. In determining a conflict under these sections, the degree of similarity must
be assessed by comparing the respective marks overall, as said by the ECJ in its
decision in Case C-120/04 Medion AG v. Thomson multimedia Sales Germany &
Austria GmbH [2005] ECR I-8551, paragraph 29:
“In the context of consideration of likelihood of confusion, assessment of
the similarity between two marks means more than taking one component of
a composite trade mark and comparing it with another mark. On the contrary,
the comparison must be made by examining each of the marks in question as
a whole, which does not mean that the overall impression conveyed to the
relevant public may not in certain circumstances, be dominated by one or
more of its components (see Matratzen Concord , paragraph 32)”.
49. Both the suit marks “tescoma/Tescoma” and the opponent’s mark “TESCO”
are basically word marks consisting of only one word, though the suit marks have
some more features that I consider to be of not much significance. The suit marks
“tescoma/Tescoma” are marks in series, of which marks "A", "B" and "D" have the
word “tescoma/Tescoma” depicted white on a plain rectangular box which is either
framed or not framed (with the colour red claimed as an element of marks "A" and
"D"), whilst mark "C" is plainly a pure word mark. I consider the impact of the
rectangular box to be slight in terms of the distinctive character of the suit marks, as
this is a feature very commonplace for trade marks. Nor do I see the single colour
claim make any difference, as consumers are not accustomed to making an
assumption about the origin of goods on the basis of a coloured rectangular box.
Besides, even when considered each of the suit marks as a whole, the figurative
element do not overcome the basic tenet that words speak louder than devices.
Hence the word “tescoma/Tescoma” is no doubt the dominant element of the suit
marks.
50. For comparison of the marks in question, I will therefore focus on the words
themselves. There is no suggestion that either of the words “tescoma” and
“TESCO” has any descriptive meanings with respect to any of the goods and services
in question. Indeed, it does not appear that either of the words is a dictionary word.
I consider both of the marks have equal inherent distinctive character.
18
51. On the other hand, given my analysis of the evidence at paragraphs 25 to 34
above, and in particular, there is no evidence showing the market share, if any, held by
the mark “TESCO” in Hong Kong; no evidence showing how intensive,
geographically widespread and long-standing use of the mark, if any, has been in the
Hong Kong context; no evidence showing the amount invested by the undertaking in
promoting the mark in Hong Kong; and no evidence showing the proportion of the
relevant class of persons who, because of the mark, identify goods as originating from
a particular undertaking9, I do not consider the mark “TESCO” to have gained any
recognition among the purchasing public in Hong Kong through use. For the
purpose of assessing similarity between the marks at issue, therefore, I do not consider
that the distinctive character of the opponent’s mark “TESCO” has been enhanced
because of the degree of recognition it possesses on the market.
52. It is settled case-law that the global assessment of the likelihood of
confusion, in relation to the visual, aural or conceptual similarity of the marks in
question, must be based on the overall impression given by the marks, bearing in
mind, in particular, their distinctive and dominant components. The perception of
the marks by the average consumer of the goods or services in question plays a
decisive role in the global appreciation of that likelihood of confusion. The average
consumer normally perceives a mark as a whole and does not proceed to analyse its
various details (see, inter alia, Sabel BV v Puma AG [1998] R.P.C. 199, paragraph 23;
Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel B.V. [2000] F.S.R. 77,
paragraph 25; Medion AG v Thomson Multimedia Sales Germany & Austria GmbH
[2006] E.T.M.R. 13, paragraph 28; OHIM v Shaker di L Laudato & C Sas (C-334/05 P)
[2007] E.C.R. I-4529, paragraph 35; and Case C-206/04 P Muhlens GmbH & Co KG v
OHIM [2006] E.T.M.R. 57, paragraph 19).
53. In visual terms, allowing for imperfect memory and the fact that the average
customer would not be comparing the marks side by side, I do not take into account
the niggling differences between them, for example, whether the words are presented
in capital letters or lower-case letters, or in what fonts the letters are presented.
9 All these are the non-exclusive factors to look into in assessing the distinctive character of a mark, according to Windsurfing Chiemsee v Huber and Attenberger [1999] E.C.R. I-2779; Lloyd Schuhfabrik Meyer v Klijsen Handel [1999] E.T.M.R. 690.
19
54. Although the two marks have five letters in common, and all of them were
identically arranged at the beginning of the marks, I do not consider the marks to be of
high visual similarity because I also take into account, as Mr. Ling urged me to do,
that “tescoma” looks distinctly longer than “TESCO”. On balance, I consider the
two marks share only certain degree of similarity in visual terms.
55. Phonetically speaking, Mr. Ling drew my attention to the fact that spelling
does not determine pronunciation. “Tescoma/tescoma”, which obviously has three
syllables, is likely to be pronounced as “tes-KOH-mah”, with its accent on the middle
syllable, and the ending “-ma” likely to be articulated rather than “swallowed” in
speech, whereas “Tesco”, a disyllabic word, has its emphasis on the first syllable. In
the absence of contrary evidence or viewpoint on this, I accept Mr. Ling’s
submissions to be the most probable pronunciations of the two words. The
disparities between the two words in the number of syllables each has and their
different emphases are sufficient in my view to make the marks phonetically different.
56. Conceptually, I have discussed that each mark is distinctive in its own right,
given that neither of them is descriptive of the goods and services in question, and is
devoid of any meaning. Mr. Ling submitted that the ending “-ma” in “tescoma” is
also meaningless, which makes any association between “tescoma” and “TESCO”
highly improbable, unlike, say “Tescopoints” or “Tescoware”. I agree that the two
marks have nothing to connect them conceptually – each can stand on its own and
there is nothing to suggest that people would perceive “tesco” as being included in
“tescoma”. I do not find them to be conceptually similar.
57. In sum, the marks can be readily distinguished at the phonetic and
conceptual levels, though they do have certain degree of visual similarity. I find that
the mark “tescoma/Tescoma” and the mark “TESCO” are sufficiently different
phonetically and conceptually to counteract any impact the slight visual similarity
between them might have. With that, I now turn to examine the other factors of
sections 12(3), 12(4) and 12(5)(a) of the Ordinance.
20
Section 12(3) of the Ordinance
58. Section 12(3) of the Ordinance requires the existence of an earlier trade
mark in relation to the subject mark. In this regard, section 5(1)(a) of the Ordinance
provides that “earlier trade mark”, in relation to another trade mark, means a
registered trade mark which has a date of the application for registration earlier than
that of the other trade mark.
59. In the amended grounds of opposition, the opponent set out in Schedule A
thereto the registration details of the mark that it relies upon to launch all these
oppositions. I set out those particulars of registrations here as Appendix A. I do
not propose to discuss the details of them, suffice to say that “TESCO” is the only
mark concerned, and it has obtained 42 registrations in Hong Kong from Class 1 to
Class 42 in respect of a great number of goods and services, the wording of their
specifications listing the entire class headings of the respective classes and in addition,
in some classes, some more items of goods. All of these registrations meet the
criteria of “earlier trade mark” as defined under section 5(1)(a) of the Ordinance.
60. 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 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 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 (PiraÑAM diseño original Juan Bolaños) [2007] ECR II-2579,
paragraph 37 and the case-law cited).
61. Under the subject application, the applicant seeks registration of the suit
marks in respect of goods in Classes 6, 7, 8, 9, 11, 20 and 21, details of which has
been set out under paragraph 2 above. Broadly speaking, they can be characterised
as a wide range of tableware and kitchenware products such as cutlery, utensils,
kitchen electrical appliances and devices.
21
62. Given the very broad scope of the specifications in all classes of the
opponent’s mark, Mr. Ling accepted that some of the goods covered by the subject
application are identical with or similar to those that have been registered with the
opponent’s mark. He pointed out, however, that “machine tools….not blenders,
mixers or juice extractors” as registered in Class 7 under registration no. 200113991 is
dissimilar to “kitchen electrical appliances including hand mixers, electrical universal
can openers, electrical grinders, electrical spice grinders” of the same Class under the
subject application. To the extent that the goods are not similar at all, Mr. Ling
submitted, the objection does not bite as section 12(3) imposes a threshold
requirement.
63. Nonetheless, it is clear that the bulk of goods covered by the subject
application in Classes 6, 8, 9, 11, 20 and 21, which I have characterised as tableware
and kitchenware, would have to meet identical-or-similar-goods objection from the
“TESCO” registrations in the same Classes in respect of those goods that could be
counted as tableware and kitchenware. I do not propose to go into detail here by
discussing the goods item by item, for what follows, I will put aside the dissimilar
goods and discuss first whether, objectively speaking, given that there are identical or
similar goods, confusion is sufficiently likely.
64. According to the case law, a lesser degree of similarity between the marks
may be offset by a greater degree of similarity between the goods or services, and vice
versa; Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc, paragraph 17. In the
recent decision of ECJ in Calvin Klein Trademark Trust v Office for Harmonization in
the Internal Market (Trade Marks and Designs) (OHIM) Case C-254/09 P, the court
expressly pointed out that where there is no similarity between the earlier mark and
the mark applied for, the reputation of or the goodwill attaching to the earlier mark
and the fact that the goods or services concerned are identical or similar are not
sufficient for it to be found that there is a likelihood of confusion between the marks
at issue.
65. Also according to settled case law, the risk that the public might believe that
the goods or services in question come from the same undertaking or from
economically-linked undertakings constitutes a likelihood of confusion; the likelihood
of confusion must be assessed globally, in accordance with the perception that the
22
relevant public has of the signs and goods or services in question, and taking account
of all the factors relevant to the case, in particular the interdependence of the
similarity of the signs and that of the goods or services designated.
66. In the present case, I have found that the marks can be readily distinguished
at the phonetic and conceptual levels, though they do share certain degree of visual
similarity. On the other hand, even though I accepted that the greater part of the
compared goods to be similar, this is simply due to the fact that a very broad range of
goods and services has been registered under the opponent’s mark “TESCO”. In real
life, as revealed by the voluminous evidence filed by the opponent, the opponent’s
mark has very high reputation in the United Kingdom for retail supermarket business,
but so far as Hong Kong is concerned, there is simply no evidence showing that there
is any retail or consumer business carried on here by the opponent or any of its
subsidiaries, or that the opponent’s products are offered to the public in Hong Kong
by reference to the mark “TESCO”. That being the case, taking the comparison
between the marks “tescoma/Tescoma” and “TESCO” by itself, I do not see how the
reasonably circumspect consumer would be confused by the only real element in
common, namely, the first five letters in both of the words contained in the two marks.
I do not readily understand how “TESCO” expressly spelled out, in prominent letters,
could leave a reasonably circumspect consumer thinking that the mark is, or even
might be, “tescoma/Tescoma”, and vice versa.
67. Nor do I consider that the public would make a connection between the
applicant and the opponent and confuse them by the likelihood of indirect confusion
or association. In this connection, it has been well established that the mere
association which the public might make between two trade marks as a result of their
analogous semantic content is not in itself a sufficient ground for concluding that
there is a likelihood of confusion within the meaning of the provision of section 12(3)
of the Ordinance (see Sabel BV v Puma AG, op. cit. paragraph 18). In the present
case, given my finding that the mark “tescoma/Tescoma” and the mark “TESCO” are
sufficiently different phonetically and conceptually to counteract any impact the slight
visual similarity might have, I do not consider that even “mere association” would
result from the perception of the two marks by the average consumers who are
considered to be reasonably well informed and reasonably observant and circumspect,
not to mention any indirect confusion.
23
68. In conclusion, notwithstanding the identity or similarity of the goods
concerned, the differences existing in this case between the conflicting marks are such
that there is not a likelihood of consumers being confused into believing that the
goods provided by the applicant are those of the opponent or provided by some
undertaking linked to them. I do not think I need to go on to consider the situation
where the goods are not similar.
69. I hold that the opposition based on section 12(3) fails.
Section 12(4) of the Ordinance
70. Section 12(4) of the Ordinance, like section 12(3), requires the existence of
an earlier trade mark which is identical or similar to the mark in question. Moreover,
section 12(4) requires that the earlier trade mark is entitled to protection under the
Paris Convention as a well-known trade mark.
71. Section 4 of the Ordinance provides that a trade mark which is entitled to
protection under the Paris Convention as a well-known trade mark shall be construed
as references to a trade mark which is well known in Hong Kong, and further provides
that in determining whether a trade mark is well known in Hong Kong, the Registrar
or the court shall have regard to Schedule 2 to the Ordinance.
72. Given that I have examined all the evidence of use of the opponent’s mark
“TESCO” and cannot find any evidence hinting that any goods and services are
offered by reference to the trade mark “TESCO” to the public in Hong Kong, there is
no basis for me to hold that the mark is well known in Hong Kong.
73. I must therefore also hold that the opposition based on section 12(4) of the
Ordinance fails.
24
Section 12(5)(a)
74. Section 12(5)(a) concerns the protection of “an unregistered trade mark or
other sign used in the course of trade or business” by virtue of the law of passing off
vis-à-vis the mark in question.
75. A helpful summary of the elements of an action for passing off can be found
in Halsbury’s Laws of Hong Kong Vol 15(2) at paragraph 225.001. The guidance
takes account of speeches in the House of Lords in Reckitt & Colman Products Ltd v
Borden Inc [1990] R.P.C. 3419 and Erven Warnink BV v J Townend & Sons (Hull) Ltd
[1979] A.C. 731, and is as follows :
“The House of Lords has restated the necessary elements which a plaintiff
has to establish in an action for passing off:
(1) the plaintiff’s goods or services have acquired a goodwill or reputation
in the market and are known by some distinguishing feature;
(2) there is a misrepresentation by the defendant (whether or not
intentional) leading or likely to lead the public to believe that goods or
services offered by the defendant are goods or services of the plaintiff; and
(3) the plaintiff has suffered or is likely to suffer damage by reason of the
erroneous belief engendered by the defendant’s misrepresentation.
The restatement of the elements of passing off in the form of this classical
trinity has been preferred as providing greater assistance in analysis and
decision than the formulation of the elements of the action previously
expressed by the House of Lords. However, like the previous statement of
the House of Lords, this latest statement should not be treated as akin to a
statutory definition or as if the words used by the House of Lords constitute
an exhaustive, literal definition of ‘passing off’, and in particular should not
be used to exclude from the ambit of the tort recognized forms of the action
for passing off which were not under consideration on the facts before the
House of Lords.”
25
76. Regarding the first element, although I have found that there is no evidence
suggesting that any goods and services are offered by reference to the trade mark
“TESCO” to the public in Hong Kong, there is some indication that the opponent did
have a subsidiary based or operated in Hong Kong possibly buying and sourcing
products for the opponent’s international business. Little detail is given for the
buying and sourcing activities. In the circumstances, even if I were to accept the
questionable authority of the local case JC Penney Co Inc v Penneys Ltd [1975]
HKLR 598 in relation to the proposition that the tort of passing off extends to cover
cases where a plaintiff’s local reputation as a purchaser (established in Hong Kong)
could be protected against a defendant who was selling retail10, there is simply no
evidence for me to form a basis to find that the criteria under the first element have
been met.
77. In any event, any reputation the opponent may enjoy only relates to buying
and sourcing activities of its subsidiary for its international business. And given the
comparison between the marks “tescoma/Tescoma” and “TESCO” as I have discussed
above, I consider that when the suit marks are used in relation to the tableware and
kitchenware products of the applicant, the public would unlikely be confused into
believing that those are goods of the opponent, or in some way connected with or
guaranteed by the opponent. The element of misrepresentation is therefore not made
out.
78. The opponent’s possible claim of passing off could not succeed. I must
therefore also hold that the opposition based on section 12(5)(a) of the Ordinance
fails.
10 The judge in JC Penney Co Inc v Penneys Ltd, Huggins, J., expressly stated that the reason he accepts such a proposition is because Leonard J., in a passage contained in another judgment earlier, thought that that proposition is clear. Huggins J. himself said, “I confess it is not obvious to me that actionable damage might result in such a case. It is sufficient that in deference to [Leonard J.’s] view I think it would be wrong for me to say that there is not a serious question to be tried and that the Plaintiffs have no reasonable prospect of success in their action, however much I may doubt the propriety of extending the tort in this way.” (paragraph 4) And towards the end of the judgment, Huggins, J. said again, “In the result I think I must grant the injunction asked for. I do so with great hesitation and only because another judge has thought it was obvious that the tort of passing off extends to cases other than those where both parties are selling similar goods.” (paragraph 8)
26
Conclusion
79. As the opponent has not succeeded in any of the grounds of opposition, I
award the applicant 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
18 February 2011
27
Appendix A
Trade Mark
No.
Trade
Mark
Class Specification
200016363 TESCO 1 chemicals used in industry, science and
photography, as well as in agriculture,
horticulture and forestry; unprocessed
artificial resins, unprocessed plastics;
manures; fire extinguishing compositions;
tempering and soldering preparations;
chemical substances for preserving
foodstuffs; tanning substances; adhesives
used in industry
200016351 TESCO 2 paints, varnishes, enamels; painters' colours;
distempers; japans; lacquers; paint and
varnish fixatives; wood preservatives; wood
stains; anti-corrosive and anti-fouling
compositions; anti-corrosive oils;
preservatives against rust; mordants; raw
natural resins; metals in foil and powder form
for painters; decorators and artists; shoe dyes;
leather stains; wallpaper removing
preparations; all included in Class 2.
199711223 TESCO 3 bleaching preparations and other substances
for laundry use; cleaning, polishing, scouring
and abrasive preparations; soaps; perfumery,
essential oils, cosmetics, hair lotions;
dentifrices.
200016350 TESCO 4 industrial oils and greases; motor oils; fuels,
lubricants; firelighters; candles; wicks;
28
illuminants; dust absorbing, wetting and
binding compositions; charcoal, coke, coal,
wood briquettes, wood coal for grilling and
wood spilling for lighting, briquettes; all
included in Class 4.
199508509 TESCO 5 pharmaceutical and sanitary preparations;
dietetic substances adapted for medical use,
food for babies; plasters, materials for
dressings; material for stopping teeth, dental
wax; disinfectants; preparations for
destroying vermin; fungicides; herbicides.
200016360 TESCO 6 common metals and their alloys; metal
building materials; transportable buildings of
metal; materials of metal for railway tracks;
non-electric cables and wires of common
metal; ironmongery, small items of metal
hardware; pipes and tubes of metal; safes;
goods of common metal not included in other
classes; ores; and parts and fittings therefor;
all included in Class 6.
200113991 TESCO 7 machines and machine tools; motors and
engines (except for land vehicles); machine
coupling and transmission components
(except for land vehicles); agricultural
implements other than hand-operated;
incubators for eggs; and parts and fittings
therefor; none of these goods being blenders,
mixers or juice extractors; all included in
Class 7.
29
200113990 TESCO 8 cutlery, hand operated hand tools and implements;
non-electric can openers; irons (non-electric hand tools);
nail files; needle-threaders; vegetable shredders and
slicers; and parts and fittings therefor; none of these
goods being hair clippers for personal use or curling
tongs; all included in Class 8.
200107005 TESCO 9 scientific, nautical, photographic, photocopying,
cinematographic, optical, weighing, teaching apparatus
and instruments; apparatus for recording, transmission or
reproduction of sound or images; magnetic data carriers,
recording discs; automatic vending machines and
mechanisms for coin-operated apparatus; cash registers,
calculating machines; computers, computer hardware,
computer software; data processing equipment; batteries;
communications apparatus and instruments; spectacle
frames and glasses; sunglasses; telephone directory
databases; vehicle breakdown warning triangles; parts
and fittings for the aforesaid goods; all included in Class
9.
200016346 TESCO 10 surgical, medical, dental and veterinary apparatus and
instruments, artificial limbs, eyes and teeth; orthopaedic
articles; suture materials; babies' feeding apparatus;
contraceptive; contraceptive appliances and devices; and
parts and fittings therefor; all included in Class 10.
200016352 TESCO 11 apparatus for lighting, heating, steam generating,
cooking, refrigerating, drying, ventilating, water supply
and sanitary purposes; and parts and fittings therefor; all
included in Class 11.
30
200016353 TESCO 12 vehicles; apparatus for locomotion by land, air or water;
and parts and fittings therefor; all included in Class 12.
200016354 TESCO 13 firearms, ammunition and projectiles; explosives;
fireworks; and parts and fittings therefor; all included in
Class 13.
200016355 TESCO 14 precious metals and their alloys and goods in precious
metals or coated therewith, not included in other classes;
jewellery, precious stones; horological and chronometric
instruments; and parts and fittings therefor; all included
in Class 14.
200016357 TESCO 15 musical instruments; musical boxes; and parts and fittings
therefor; all included in Class 15.
199506594 TESCO 16 paper, cardboard; printed matter; bookbinding material;
photographs; stationery; adhesives for stationery or
household purposes; artists' materials; paint brushes;
typewriters and office requisites (except furniture);
instructional and teaching material (except apparatus);
plastic materials for packaging (not included in other
classes); playing cards; printers' type; printing blocks.
200016358 TESCO 17 rubber, gutta-percha, gum, asbestos, mica and goods
made from these materials and not included in other
classes; plastics in extruded form for use in manufacture;
packing, stopping and insulating materials; flexible pipes,
not of metal; and parts and fittings therefor; all included
in Class 17.
200016359 TESCO 18 leather and imitations of leather, and goods made of these
materials and not included in other classes; animal skins,
hides; trunks and travelling bags; umbrellas, parasols and
walking sticks; whips, harness and saddlery; and parts
31
and fittings therefor; all included in Class 18.
200016362 TESCO 19 portable sheds; cloches; huts; greenhouses; non-metallic
horticultural frames; ceramic tiles; concrete garden
ponds; bird baths (structures); plaster; cement;
non-metallic sealing and filling compounds and
materials; non-metallic building materials; non-metallic
rigid pipes for building; asphalt; pitch; bitumen;
non-metallic transportable buildings; monuments not of
metal; outdoor blinds, not of metal or textile; parquet
flooring; non-metallic floor tiles; non-metallic flooring,
and non-metallic paving materials; non-metallic gates;
gravestones; mantelpieces; marble; limestone; sandstone;
mosaics; non-metallic swimming pool (structures); and
parts and fittings therefor; all included in Class 19.
200016356 TESCO 20 furniture; mirrors; picture frames; drinking straws; works
of art made of wood, wax, bamboo, plaster or of plaster
materials; articles of wood, wax, bamboo, plaster or of
plaster materials for ornamental purposes; sleeping bags;
ladders; barrels; air mattresses, cushions and pillows;
bead and bamboo curtains and parts and fittings for
curtains; beds, bedding (except linen) and non-metallic
bed fittings; display boards; cots and cradles; cushions;
non-metallic door and window fittings; kennels and
containers for household pets; slatted indoor blinds;
goods (not included in other classes) of wood, plaster or
of plaster materials, cork, reed, cane, wicker, horn, bone,
ivory, whalebone, shell, amber, mother-of-pearl,
meerschaum and substitutes for all these materials, or of
plastics; and parts and fittings therefor; all included in
Class 20.
199505035 TESCO 21 household or kitchen utensils and containers (not of
precious metal or coated therewith); combs and sponges;
32
brushes (except paint brushes); brush-making materials;
articles for cleaning purposes; steelwool; unworked or
semi-worked glass (except glass used in building);
glassware, porcelain and earthenware not included in
other classes.
200016361 TESCO 22 ropes, string, nets, windbreaks (screening), tents,
awnings, tarpaulins, sails, sacks and bags (not included in
other classes); padding and stuffing materials (except of
rubber or plastics); raw fibrous textile materials; ladder
tapes and webbing for venetian blinds; eiderdowns; and
parts and fittings for all of the aforesaid; all included in
Class 22.
200016349 TESCO 23 yarns and threads for textile use; sewing thread and yarn;
cotton thread and yarn; all included in Class 23.
200009399 TESCO 24 textiles and textile goods, not included in other classes;
bed and table covers; plastic coverings for furniture;
pillow cases or cushion covers; plastic or textile or net
curtains; upholstery fabrics; woollen fabric; all included
in Class 24.
199702582 TESCO 25 clothing, footwear, headgear.
200016348 TESCO 26 lace and embroidery, ribbons and braid; buttons, hooks
and eyes, pins and needles; needle boxes and pin
cushions; artificial flowers and fruit; badges (not of
precious metal); hair ornament accessories; buckles,
brooches and feathers, all being accessories for shoes
and/or clothing; tea cosies; haberdashery except thread;
wigs; all included in Class 26.
200016347 TESCO 27 floor coverings; carpets; rugs; mats; matting; linoleum;
wall hangings (non-textile); wallpaper; artificial turf; all
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included in Class 27.
200016341 TESCO 28 games and playthings and dolls; gymnastic and sporting
articles not included in other classes; decorations and
artificial snow for Christmas trees; Christmas trees of
synthetic materials; Christmas crackers; marionettes; and
parts and fittings therefor; all included in Class 28.
19872168 TESCO 29 meat, fish, poultry and game; meat extracts; preserved,
dried and cooked fruits and vegetables; jellies, jams;
eggs, milk and milk products; edible oils and fats; salad
dressings; preserves.
19872169 TESCO 30 coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial
coffee, flour and preparations made from cereals, bread,
pastry and confectionery, ices; honey, treacle; yeast,
baking-powder; salt, mustard; vinegar, sauces (not
including salad dressings); spices; ice.
199504759 TESCO 31 agricultural, horticultural and forestry products and grains
not included in other classes; living animals; fresh fruits
and vegetables; seeds, natural plants and flowers;
foodstuffs for animals, malt
19872170 TESCO 32 beers; mineral and aerated waters and other non-alcoholic
drinks; fruit drinks and fruit juices; syrups and other
preparations for making beverages.
199504758 TESCO 33 alcoholic beverages (except beers).
200016345 TESCO 34 tobacco; cigarettes, cigars; smokers' articles; matches;
herbs for smoking; and parts and fittings therefor; all
included in Class 34.
200011988 TESCO 35 departmental store retailing services; supermarket and/or
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hypermarket retailing services; advertising and
promotional services; dissemination of advertising and
promotional materials; direct mail advertising; market
research services; marketing services; distribution of
samples; shop window dressing; sales promotion services
in relation to organising, operating and supervising of
sales and promotional incentive schemes; information
and advice relating to all the aforesaid services;
compilation of information into computer databases;
business appraisals and research; cost price analysis;
document reproduction and photocopying services;
business management and administration services relating
to printed matter; organisation of exhibitions for
commercial or advertising purposes; economic and
business forecasting; advisory services for business
management; office machines and equipment rental; word
processing services; import and export agency services;
mail order catalogues; all included in Class 35.
200105567 TESCO 36 insurance services; financing of loans; cheque
encashment services; credit services; provision of cash
dispensing facilities; saving scheme services; banking;
financial leasing; mortgaging; securities; brokerage;
guarantee; investment; safe deposit services; financial
and investment consultancy and analysis services; money
transfer services by electronic means; cheque clearing
services; payment administration services; fund
management services; recording and billing services for
financial transactions; exchanging money, electronic
funds transfer, issuing of travellers cheques; leasing retail
store space; all included in Class 36
200016342 TESCO 37 building construction; vehicle services stations; motor
vehicle maintenance and repair; cleaning of motor
vehicles; dry cleaning, pressing, ironing and repair of
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clothes; leather care, cleaning and repair; shoe repair; all
included in Class 37.
200016343 TESCO 38 telecommunication services; transmission, storage,
collection and delivery of data and of information by
electronic means, computer, cable, radio, teleprinter,
electronic mail, television, microwave, laser beam or
communication satellite means; all included in Class 38.
200016344 TESCO 39 transport of goods; packaging and storage and delivery of
goods; porterage; chauffeur and taxi services; travel
agency services; arranging and reservation of travel, tours
and cruises, tourist office services; wrapping of goods;
rental and parking of vehicles; all included in Class 39.
200204884 TESCO 40 photographic services related to enlarging, film
development, printing, processing and reproduction;
photographic finishing, etching and duplication; services
for the transfer of photographic prints, photographic
transparencies or cinematographic film onto video tapes;
mounting services for photographic transparencies;
framing, collation, folding, stapling, perforating, cutting
and binding of printed, copied and typewritten material;
processing and printing of films by digital imaging
equipment, all being print finishing services; tailoring;
collating of paper materials; all included in Class 40.
200101811 TESCO 41 education, entertainment and training services relating to
department stores; amusement services, organising of
sporting activities, organising events for cultural
purposes, library services, rental of video tapes and video
recorders; all included in Class 41.
200208402 TESCO 42 cafe cafeteria, catering and restaurant services; health
care and beauty treatment services; provision of creche
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facilities; professional consultancy relating to franchising
and retailing; pharmacy advice services; interior design
consultancy; design services relating to shop fitting and
shop layouts; design consultancy services relating to shop
fitting and shop layouts; consultancy services relating to
branding of goods; veterinary services and animal
grooming, horticultural services; computer services,
design of computer software; printing, typesetting and
graphic design services; reproduction of artwork; design
services, computer-aided design services, custom design
services; editing of written texts; information and
advisory services relating to the aforesaid services; offset
printing services; hotel reservation services; flower
arranging; funeral and cremation services; hairdressing
salons; all included in Class 42; none of these services
relating to the sale of radios, cassette recorders; cassette
recorders with radios, combined sound systems, CD
home system or sound systems for singing with
pre-recorded background music and with lyric shown on
a screen.
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