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

36

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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