The High Court of Hong Kong has ruled that the word aqua should not be reserved for the exclusive use of US company Aqua-Leisure Industries in Hong Kong for swimming- and water-related products.
The ruling on May 4 was a success for Dutch company Impag Toys Europe BV, which had been sued by Aqua-Leisure and its Hong Kong subsidiary for trade mark infringement and passing off.
Aqua-Leisure claimed that Impag's use of the mark Aqua Splash in relation to water-related products infringed its Aqua and Aqua Leisure trade marks, which are registered for water-related products.
The US company further held that the two businesses were confusing, claiming that the design of Impag's goods and its Aqua Splash logo were deceptively similar to Aqua-Leisure's.
But the High Court found in favour of Impag, ruling that Aqua-Leisure had to renounce its exclusive right to use the word aqua in order to keep its trade mark registration.
"Aqua-Leisure are very disappointed. Aqua and Aqua Leisure are marks of great importance to the client and the disclaimer of "aqua" leaves them very exposed," said Henry Wheare, of Lovells, who represented Aqua-Leisure in the case.
"The case was particularly hard on the client because it had already achieved a default judgment in Hong Kong for passing off and a substantial award against Aqua Splash which could not be enforced due to that company being liquidated," Wheare told MIP in an email interview.
The action was an attempt to recover damages from the parent company and its principal director as joint tortfeasors, an issue that was not itself seriously disputed, he said. The main issue was the validity of Aqua-Leisure's trade marks, which are registered in several countries, including the US, China and Europe, without the disclaimer concerning the word aqua. No infringement was found concerning the disclaimer.
"The judgment entirely vindicates our view that the word aqua simply means water and should be freely available for use by traders in relation to swimming and water-related products," said Patrick Swain, a partner of Freshfields Bruckhaus Deringer, who led the legal team representing Impag in the case.
Aqua-Leisure is considering an appeal.
