Honor Device Co Ltd v Tencent Holdings Limited

This matter concerned an opposition filed by Honor Device Co Ltd (the Opponent) against a trade mark application by Tencent Holdings Limited (the Applicant). The Opponent, a vendor of technology products under the HONOR brand, opposed the registration of the Applicant's trade mark, which was primarily associated with a mobile game titled "Honor of Kings." The Opponent relied on several grounds of opposition, including those under sections 42(b), 44, 59, 60, and 62A of the relevant legislation. The decision was made by a delegate of the Registrar of Trade Marks based on the written record, as the Opponent elected not to proceed to a hearing.

The primary legal issue before the delegate was whether the Opponent had established any of the grounds of opposition it had raised. Specifically, the delegate had to consider whether the Applicant's proposed trade mark registration, particularly in light of amendments made to limit the scope of goods and services, would infringe upon the Opponent's existing trade mark rights or otherwise contravene the provisions of the Trade Marks Act. The Opponent argued that its extensive use and ownership of numerous trade marks containing the term "HONOR" created a likelihood of confusion or deception.

The delegate's reasoning focused on the amended scope of the Applicant's trade mark application. After the Applicant amended its application to limit the goods and services to a revised set, the delegate found that the ground of opposition under section 59 was no longer established. The delegate concluded that the Opponent had failed to establish any of the grounds of opposition it had nominated in its Statement of Grounds and Particulars.

Consequently, the delegate ordered that the Applicant's trade mark application, number 2375282, could proceed to registration, subject to a one-month waiting period from the date of the decision, unless a notice of appeal was filed. In the event of an appeal, registration would be stayed until the appeal was resolved. As both parties had experienced a degree of success in the proceedings, no orders were made as to costs.