Huawei Technologies Co. Ltd v Ubisoft Entertainment, Societe Anonyme

The matter before the court concerned an opposition by Huawei Technologies Co. Ltd (the Opponent) to the registration of trade marks by Ubisoft Entertainment, Societe Anonyme. The dispute centred on whether the Opponent's trade marks, specifically those featuring the word ‘HONOR’, were sufficiently similar to Ubisoft's proposed marks and whether the goods and services were closely related, as required by section 44 of the relevant Act. The court was required to determine the rights of the parties as at the Convention Priority Date of 11 June 2015.

The primary legal issue was whether the Opponent had established grounds for opposition under section 44 of the Act, which requires a demonstration that the applicant's trade mark is identical or deceptively similar to an earlier trade mark owned by the Opponent, and that the goods or services for which registration is sought are closely related to the goods or services in respect of which the earlier trade mark is registered. The court also considered whether the Opponent had adequately discharged the onus of proof, resting on the civil standard of the balance of probabilities, to establish this close relationship.

The court reasoned that while the Opponent owned a suite of ‘HONOR’ trade marks, the evidence presented did not adequately establish the necessary close relationship between the Opponent's registered services and Ubisoft's proposed goods. The Opponent relied on evidence of a third-party retailer, JB Hi-Fi, marketing and retailing its products, and third-party reviews of its smartphones. However, the court found that this evidence did not demonstrate that the services for which the Opponent's trade marks were registered were closely related to the goods for which Ubisoft sought registration. The court distinguished between the registration of services for advertising and marketing generally, and the specific goods or services in respect of which those services might be supplied.

Ultimately, the court found that the Opponent had failed to establish the grounds of opposition under section 44 of the Act. Consequently, the opposition was dismissed.