Top court rules in favor of ice cream brand in trademark dispute

The Court of Final Appeal has ruled that registering trademarks using similar designs or elements should not be approved.

In a recent case, a bakery owner who owns the Lai Kei Bakery brand – and its name in Chinese characters – wanted to register the brand as trademarks in November 2018. The trademark would include two Chinese characters depicting the name of the bakery, as well as its Romanized form, Lai Kei.

In March 2020, the then Economic Bureau declined the application. The bakery put the matter to the court, challenging the decision.

During the procedure, the court summoned the brand holder of Lai Kei Ice Cream – officially Estabelecimento de Bebidas Lai Kei – the logo of which is a painted girl. Despite the trademark registration of the ice cream vendor being valid until May 2026, the Court of First Instance ruled in favor of the bakery.

The ice cream shop brought the case to the appeal court, which ruled in favor of the appellant, citing the reputation and fame of the brand in support of the judgment. This decision triggered the bakery to take the case to the top court.

The Court of Final Appeal upheld the decision of the second court, in addition to explaining that the “legal function” of a registered trademark is to differentiate the registered brand from others. Trademarks should be understood as a unique symbol among competitors, the court noted. Two registered trademarks should not be similar to a degree that could cause confusion.

The court even mentioned that the ice cream shop was identified as a “Macau Specialty Brand” by the Economic and Technological Development Bureau, in support of its reputation and history.

As such, the court upheld the judgment of the second court. AL