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huawei technologies co v ubisoft entertainment case summary

Huawei, a major Chinese telecommunications and technology company, owns the trade mark for “HONOUR”, which it uses in relation to phone devices.  It is registered in classes 9 (navigation and mobile-phone related items) and 35 (advertising).

Ubisoft, a French video game company, sought registration of the mark “FOR HONOUR” in classes 9 (hardware and software), 28 (games and merchandise) and 41 (games including via mobiles etc.).  This application was opposed by Huawei on the grounds that HONOUR and FOR HONOUR are substantially identical/deceptively similar.

  1. Huawei was successful in relation to the hardware technology products in class 9, due to being able to demonstrate the marks are deceptively similar in relation to these goods, namely –
    • The word “FOR” merely served to channel attention to the other word “HONOUR”;
    • The consumer impression of both marks was secured to the word “HONOUR”;
    • The hardware technology was held similar, as the claims of both trade marks were broad and would cover goods of the same description. Further “in the modern era” many technological apparatus can perform multiple functions.
  2. Huawei failed to demonstrate any additional ground of opposition due to deficiencies in their evidence, namely:
    • Their sales figures were not dated
    • Their retail outlet listings only demonstrated that there were many stores it may have been available to purchase from; and
    • Articles/reviews of the product were provided but no information given as to the viewership/readership for the publishers.

Accordingly, they were deemed not to have a sufficient reputation.

key takeaways
  • In assessing similarity, you should identify whether an additional word adds to the distinctiveness of the trade mark, or whether it merely serves to emphasise the other word.
  • In oppositions, it’s vital to file submissions and not rely on evidence alone.  Submissions serve to provide the link between the grounds of opposition and the evidence filed. Without them it is very difficult for the Delegate to infer a correlation from evidence alone.