MARK: CLASSES: APPLICANT: GEMOLOGY … · applicant: gemology headquarters international, llc...

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TRADE MARKS ORDINANCE (Cap. 559)

OPPOSITION TO TRADE MARK APPLICATION NO. 301366542

MARK:

CLASSES:

16, 36, 42

APPLICANT: GEMOLOGY HEADQUARTERS INTERNATIONAL, LLC

OPPONENT: GEMOLOGICAL INSTITUTE OF AMERICA, INC.

STATEMENT OF REASONS FOR DECISION

Background

1. On 16 June 2009, Gemology Headquarters International, LLC (the “applicant”)

filed an application (the “subject application”) under the Trade Marks Ordinance, Cap.

559 (the “Ordinance”) for registration of the following mark:-

(“the subject mark”).

2. Registration is sought in respect of the following goods and services (“subject

goods and services”) in Classes 16, 36 and 42:-

Class 16

Certificates of authenticity and certificates of grading for diamonds, gemstones, pearls

and jewelry; certificates; printed certificates; printed award certificates.

Class 36

Appraisals of diamonds, gemstones, pearls and jewelry.

Class 42

Gemological services, namely, providing identification, authentication, and grading of

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diamonds, gemstones, pearls and jewelry, and issuing certificates related to such

grading; inscriptions on diamonds and gemstones (gemological services); precious

metal assaying.

3. Particulars of the subject application were published on 21 August 2009. On

20 January 2010, Gemological Institute of America, Inc. (the “opponent”) filed a Notice

of opposition attached with a Statement of Grounds of Opposition. That Statement of

Grounds of Opposition was later deemed to have been replaced with an Amended

Statement of Grounds of Opposition filed on 1 March 2010 (“Grounds of Opposition”).

4. The opposition hearing took place before me on 20 November 2013. Ms. Mok

Yee Ting of ONC Lawyers represented the applicant. Mr. Sebastian Hughes of

Counsel, instructed by DLA Piper, represented the opponent.

Grounds of Opposition

5. In the Grounds of Opposition, the opponent opposes registration of the subject

mark under sections 11(1)(b) and (c), 11(5)(b), 12(3), 12(4) and 12(5)(a) of the

Ordinance. A Schedule attached to the Grounds of Opposition lists out the trade marks

relied upon by the opponent in launching the opposition against the subject application.

That Schedule is reproduced in this decision as Annex 1 hereto.

Counter Statement

6. The applicant filed a Counter Statement on 20 April 2010, denying all the

grounds of opposition.

Preliminary issues

7. An issue arose just days before the hearing on 20 November 2013. The issue

was raised by the applicant in ONC Lawyers’ letter to the Registrar dated 8 November

2013, alleging that the Statutory Declaration of Seung-Hae Moon dated 2 March 2012,

which forms part of the opponent’s evidence, made reference to a settlement agreement

and contained related materials which were made on a without prejudice basis, as such

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the statutory declaration should be amended by re-execution in order that all reference

and materials in that regard would be removed. In the said letter, ONC Lawyers

further suggested that the hearing officer assigned for the hearing should be changed to

another one who had not previously perused the evidence.

8. DLA Piper’s letter in reply came to the Registrar on 15 November 2013. They

disagreed that the alleged materials in the Statutory Declaration of Seung-Hae Moon

were privileged, and submitted that the same were admissible as evidence in the

proceedings. They also disagreed that there should be a change of the hearing officer.

9. The Registrar issued a letter on 18 November 2013 indicating that the above two

issues cannot be determined without giving full opportunity to the parties to address the

hearing officer, hence they would be dealt with as preliminary issues at the scheduled

hearing before substantive hearing of the proceedings is to take place.

10. As it turned out, at the hearing on 20 November 2013 Ms. Mok of ONC Lawyers

representing the applicant agreed not to further pursue the two issues upon my

preliminary indication that the subject matters of the alleged materials, as mentioned in

the Statutory Declaration of Seung-Hae Moon, appeared not relevant to the core issues

of these proceedings. The hearing of the case then proceeded accordingly.

The opponent’s evidence in support

11. The opponent’s evidence in support comprises a statutory declaration of Seung-

Hae Moon dated 20 January 2011 (“Moon’s statutory declaration”) and a statutory

declaration of Robert Frank dated 13 January 2011 (“Frank’s statutory declaration”).

12. Ms. Seung-Hae Moon has been employed by the opponent for over 30 years,

acting as its Managing Director (for Asia Pacific) since 2007. The facts she deposed

to in her statutory declaration are from her personal knowledge or from the opponent’s

records, and she has been duly authorized by the opponent to make the statutory

declaration in these proceedings.

13. According to Ms. Moon, Mr. Robert M. Shipley founded the Gemological

Institute of America in 1931 in Los Angeles, the United States of America, which was

incorporated in October 1943 under the laws of the State of Ohio. The opponent, which

got the current name in January 1999, is a result of a series of mergers of a number of

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corporations which focused on different streams of the gem industry. From Moon’s

statutory declaration, it seems the merger had involved the following entities and their

subsequent merged entities:- the said Gemological Institute of America founded in 1931,

GEM Instruments incorporated in 1976 which later changed name to GIA Gem

Instruments, Gem Trade Laboratory incorporated in 1978 which later changed name to

GIA Gem Trade Laboratory.

14. The Gemological Institute of America had adopted “GIA” and “Gemological

Institute of America” as the corporation’s house marks since its foundation. It follows

that the opponent is alleged to have first used the trade marks “GIA” and “Gemological

Institute of America” in 1931 and has used the marks continuously since then in the

United States of America for goods in Class 16 goods. It is also alleged that these

opponent’s marks have been and continue to be used in relation to grading services for

precious gems in Class 36 and services in respect of services of grading precious gems

and gemological services, identifying, grading, registering and inscribing precious

gems and pearls identification in Class 42 since as early as 1996 in Hong Kong. For

the purposes of all the latter discussions, the opponent’s marks including the marks

“GIA” and “Gemological Institute of America” are hereinafter loosely and collectively

referred to as the “GIA Trade Marks”.

15. Moon’s statutory declaration is painstaking in showing that Hong Kong is among

one of the places in the world where the GIA Trade Marks have a long and extensive

history of use. For example, Exhibit-D and Exhibit-E to Moon’s statutory declaration

contain copies taken from the quarterly magazine “Gems & Gemology” allegedly

showing use of the GIA Trade Marks. It is alleged that the magazine has been in

distribution to key members of the Hong Kong jewelry community from 1977 through

to today. Exhibit-F contains what is said to be a list of the Hong Kong subscribers to

the magazine, with their personal data redacted.

16. Ms. Moon alleged that the GIA Trade Marks had been used in the United States

since 1931 for services in respect of correspondence courses in the field of gemology.

Exhibit-H contains copies of the 1958 course materials and 1986 Lab Manual. It is

said that in 1980, the opponent provided the first one-week gemology classes in Hong

Kong and Singapore. Exhibit-I to Exhibit K contain copy computer printout showing

classes taught in Hong Kong from 1980 to 1988, a list of 1995-2000 Hong Kong courses

and monthly enrolment, a summary of enrolment, copy of a diploma awarded by the

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opponent to a Hong Kong student, and enrollment figures for the residence classes and

courses in Hong Kong over the years. It is alleged that the GIA Trade marks were

used on course materials and other handouts given to student, as well as on brochures

and catalogs advertising gemology classes and soliciting students to enroll in these

courses since 1980.

17. Ms. Moon further said that in July 1994, the opponent licensed certain right to

Gemological Institute of America – Hong Kong as licensee for promotion, marketing

and solicitation of enrolments in distance education courses, extension classes and

seminars of instruction in jewelry sales, gemology and jewelry manufacturing arts

offered and taught by the opponent under the GIA Trade Marks. Exhibit-L is copy of

the licence agreement, and copies of the letterhead, business cards, envelopes, writing

pad, etc. used by the licensee since 1994 were exhibited in Exhibit-M. Exhibit-N

contains copies of brochures and catalogs using the GIA Trade Marks and distributed

by the licensee since 2003; Exhibit-O shows the Hong Kong enrolment figures and

worldwide enrolment figures of the extension classes since 1980.

18. Moon’s statutory declaration gives the gross revenue figures for educational

services provided under the GIA Trade Marks in Hong Kong for 2003-2010. Except

for the year 2003, the rest all have an annual gross revenue between US$1,000,000 and

2,000,000.

19. Exhibit-Q shows the numbers of grading reports issued to customers in Hong

Kong each year since 1996 to 2007. Exhibit-R contains sample diamond grading

reports and explanations about grading reports from the opponent’s website. The annual

figures of the gross revenue for diamond or precious gem grading laboratory services

rendered by the opponent under the GIA Trade Marks to clients in Hong Kong for 2004-

2010 are shown to be in the region between US$2,496,133 in 2004 to US$8,072,300 in

2010, with a peak in 2008 at US$9,664,767. Exhibit-S contains copies of various

invoices issued by the opponent in that connection.

20. The opponent established its new laboratory and diamond grading facility in

Hong Kong in 2010. Although this took place a bit after the subject application was

filed in 2009, there were other preceding promotional activities of the opponent’s goods

and services in Hong Kong, as evidenced by Exhibit-U to Exhibit-Y. I do not propose

to go into detail here but would refer to the relevant ones as and when appropriate.

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21. Mr. Robert Frank has been the owner, President and Founder of Illuminor LLC

(“Illuminor”) which was retained by the solicitors for the opponent to provide data to

support the oppositions in these proceedings. Frank’s statutory declaration, as well as

the various exhibits attached to it, was made with large chunks of it being devoted to

detailing Mr. Frank’s qualifications and professional profile, awards and honours

received by him, his research methodology and training practice, features of the

database he would use – all that having no direct relevance to the issues of these

proceedings. I am conscious that this tribunal should not get caught up in the thick of

these and lost sight of the main issues, and I do not propose to summarize them here.

22. Having said that, it is noted that search results conducted on the internet as well

as on the database known as Dialog in respect of words such as “Gemological Institute”,

“GIA”, “Gemological Headquarters International”, “GHI”, or combinations of these

words with “Hong Kong”, are set out in Exhibits “C” to “F” to Frank’s statutory

declaration. Claiming to be basing on these results, Mr. Frank formed the following

opinions:-

(1) The acronym GIA is strongly associated with the corporate name Gemological

Institute of America;

(2) The acronym GIA is more often used than is the full company name of the

Gemological Institute of America;

(3) The acronym GIA has a long association in Hong Kong with the company

Gemological Institute of America;

(4) GIA/Gemological Institute of America is the leader and most frequently referenced

business in the world that is involved in the diamond grading industry;

(5) There appears no brand association of the acronym GHI with the company

Gemological Headquarters International anyway in the world with respect to

magazine and newspaper stories or articles in magazines, professional publications,

journals, etc.;

(6) The acronym GHI does not appear to be associated with the jewelry business in

Hong Kong.

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The applicant’s evidence

23. The applicant’s evidence comprises a statutory declaration of Nachum

Krasnianski dated 24 June 2011 (“Krasnianski’s statutory declaration”). Mr.

Krasnianski is the President of the applicant since the founding of the company in

January 2006. Mr. Krasnianski has thirty years of experience in lab work related to

the field of gemology and has operated and owned gem laboratories in the United States

of America since 1986, Canada since 2002 and India since 2007. The facts he deposed

to in his statutory declaration are from his personal knowledge or from the applicant’s

books and records, and he has been duly authorized by the applicant to make the

statutory declaration in these proceedings.

24. In gist, according to Krasnianski’s statutory declaration, the applicant is a

corporation organized and existing under the laws of Delaware with offices in the

United States of America and India. The applicant operates advanced laboratories

specializing in identification, grading and certification of diamonds and research

services. It is claimed that the applicant is a leader in gemological and research

services and offers gemological services comprising identification, authentication and

grading of diamonds and jewellery under the applicant’s mark, which he identifies to

be the subject mark.

25. It is also alleged that the applicant has offered a variety of basic and advanced

education programs in the field of gemology under the subject mark in India. A list

of education programs offered by the applicant in India are given in Krasnianski’s

statutory declaration.

26. The applicant also offered certificates of authenticity as well as certificates of

grading of diamonds, gemstones, pearls and jewellery under the subject mark. It is

alleged that certificates offered under the subject mark have been available in the US

and India since 2007, exhibit “NK-3” to Krasnianski’s statutory declaration is said to

contain copies of representative gem identification reports produced by the applicant in

the ordinary course of business in association with its goods and services.

27. Exhibit “NK-4” is said to contain copies of representative gem identification

cards produced by the applicant and transferred to its customers in the ordinary course

of its business since 2007 in the US and in India. Exhibits “NK-5” and “NK-6” are

said to contain copies of representative brochures and pamphlets distributed by the

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applicant.

28. A book entitled “Laboratory-grown Diamonds” by Branko Deljanin and Dusan

Simic, which explains the different methods used to grow diamonds and educates about

the characteristics to be observed in examining laboratory grown diamonds with

standard gemological equipment, is alleged to have been published by the applicant

under the subject mark. Copy of the book is exhibited as “NK-7” to Krasnianski’s

statutory declaration. Exhibit “NK-8” is said to contain printout of EGL Canada’s

website which advertised the book in Canada, and exhibit “NK-9” contains printout

from the applicant’s website which is said to have been available since 2007. Exhibit

“NK-10” contains copies of pictures of a representative business card stationery and

redacted invoice of the applicant.

29. The rest of Krasnianski’s statutory declaration deal with the alleged co-existence

of the subject mark with the opponent’s marks in the United States of America and the

applicant’s other marks in other jurisdiction. I do not propose to summarize them here.

30. There is attached an expert report of Carole E. Ghaski as exhibit “NK-19” to

Krasnianski’s statutory declaration. Carole E. Ghaski, a PHD, prepared the report on

behalf of the applicant in respect of the lack of linguistic similarities of the GHI mark

and other representative trade marks of the opponent.

The opponent’s evidence in reply

31. The opponent’s evidence in reply comprises another statutory declaration of

Seung-Hae Moon dated 2 March 2012 (“Moon’s second statutory declaration”), a

statutory declaration of Dr. Arthur McNeill dated 2 March 2012 (“McNeill’s statutory

declaration”), a statutory declaration of Albert Chan dated 1 March 2012 (“Chan’s

statutory declaration”), a statutory declaration of Ephraim Zion dated 6 March 2012

(“Zion’s statutory declaration”) and a supplemental statutory declaration of Robert

Frank dated 27 February 2012 (“Frank’s supplemental statutory declaration”).

32. Moon’s second statutory declaration was filed as evidence in reply to the

applicant’s evidence, namely, Krasnianski’s statutory declaration, casting doubt on

many of the claims made by Mr. Krasnianski as discussed above. I do not propose to

summarize the points here but would refer to the relevant parts as and when appropriate.

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33. Dr. Arthur McNeill is the Director of the Language Centre, Hong Kong

University of Science and Technology. He has over 40 years of experience in English

language teaching, second language vocabulary, language awareness and policy, of

which more than 20 of those years were in Hong Kong. McNeill’s statutory

declaration is expressed to be offered in reply to the expert report of Carole E. Ghaski

(which is exhibit as “NK-19” to Krasnianski’s statutory declaration). I do not propose

to summarize the contentious points between the two expert views here but would refer

to the relevant parts as and when appropriate in the latter discussions.

34. Mr. Chan Hiu-Sang, Albert, who made Chan’s statutory declaration, is an

Executive Director of Chow Tai Fook Jewellery Group Limited and a director of Chow

Tai Fook Jewellery Co., Ltd. (the two companies are referred to collectively as “Chow

Tai Fook”). Mr. Chan has his career in the diamond and jewellery business started in

1977 when he joined Chow Tai Fook as a diamond procurement staff. Drawing on his

considerable experience in grading and procuring diamonds, he testified to the use and

reputation of the GIA Trade Marks. I do not propose to summarize his testimony here

but would refer to the relevant parts as and when appropriate.

35. Mr. Ephraim Zion is the Managing Director of Dehres Limited which is a Hong

Kong based company in the jewellery and diamond industry. Mr. Zion’s career in the

diamond and jewellery business started in 1960 when serving an apprenticeship as a

diamond cutter in a diamond factory in Isreal. Having accumulated significant

experience in procuring and dealing in diamonds and precious gems, and recognizing

the demand for large certified diamonds in Asia, Mr. Zion came to Hong Kong in 1971

and set up his own diamond and gem business. Dehres is a company he founded in

1985. He testified to the use and reputation of the GIA Trade Marks. I do not

propose to summarize his testimony here but would refer to the relevant parts as and

when appropriate.

36. The supplemental statutory declaration of Robert Frank was made only to rectify

certain minor technical deficiencies of Frank’s statutory declaration. There is nothing

significant of that.

Findings on goodwill and reputation of the GIA Trade Marks

37. The opponent oppose registration of the subject mark under sections 11(1)(b) and

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(c), 11(5)(b), 12(3), 12(4) and 12(5)(a) of the Ordinance. At the hearing, Mr.

Sebastian Hughes, counsel for the opponent, made it clear that the opponent would only

be proceeding on sections 11(5)(b), 12(3), 12(4) and 12(5)(a). I would therefore treat

the opposition based on the other pleaded grounds as no longer being pursued by the

opponent.

38. Mr. Hughes said in the opponent’s skeleton argument that the opponent relies on

its registered trade marks in Hong Kong as listed in the Schedule to the Grounds of

Opposition (see Annex 1) and the goodwill and reputation in these marks. That has

connotations of the opposition being premised in large part on sections 12(3), 12(4) and

12(5)(a) of the Ordinance where the opponent’s marks must be assessed with reference

to any enhanced distinctive character, or reputation and goodwill, that it has acquired

or generated. It is convenient for me to first investigate the evidence and make the

relevant findings in this connection.

39. I have outlined the opponent’s evidence in support of the opposition in

paragraphs 11 to 22 above. In gist, evidence is produced to show that the opponent

has been using the GIA Trade Marks, namely, “GIA” and “Gemological Institute of

America”, since 1931 in the United States of America for goods in Class 16, and in

relation to grading services for precious gems in Class 36 and services in respect of

services of grading precious gems and gemological services, identifying, grading,

registering and inscribing precious gems and pearls identification in Class 42 since as

early as 1996 in Hong Kong.

40. From the various exhibits to Moon’s statutory declaration, there is no doubt about

the use of the GIA Trade Marks or related marks by the opponent in the US as well as

in Hong Kong as claimed. The following is extracted from the 2001 issue of the

quarterly magazine “Gems & Gemology” (Exhibit-E to Moon’s statutory declaration)

where the GIA Trade Marks featured:-

41. That magazine is said to have been in distribution to key members of the Hong

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Kong jewelry community from 1977 through to the present. Exhibit-F to Moon’s

statutory declaration is produced to support this.

42. The mark or marks were used in Hong Kong more directly in residence classes

and courses being run here. The marks reproduced below are extracted from the

letterhead, business cards, envelopes, writing pad, etc. exhibited in Exhibit-M:-

43. The one appearing on the left above also appears in the brochures and catalogs

(exhibited in Exhibit-N) distributed by the opponent’s Hong Kong licensee. On the

last page of the brochure, which lists the opponent’s campuses over the world including

Hong Kong, the mark or marks below appear at the top corner of the page:-

44. It seems the marks being used in Hong Kong are more or less the same as the

marks used by the opponent in the US and over the world. More importantly, the

marks in use always come together – in the manner as shown by the various pictures

above. But first it must be identified that the following three marks are always in use

together: (1) the logo which has a crown-like outer layer with the words

“GEMOLOGICAL INSTITUTE OF AMERICA” and the word “KNOWLEDGE”

displaced concentrically in it (the “Opponent’s Logo”), (2) the mere word mark

“GEMOLOGICAL INSTITUTE OF AMERICA”, and (3) the letter mark “GIA”. The

three marks are always put together such that the Opponent’s Logo is on the left, and

the “GIA” together with the “GEMOLOGICAL INSTITUTE OF AMERICA” on the

right, with the “GIA” usually on top of or go before the “GEMOLOGICAL

INSTITUTE OF AMERICA”. I am aware of the picture on the right under paragraph

40, where “GEM TRADE LABORATORY” was used in place of “GEMOLOGICAL

INSTITUTE OF AMERICA”. Given the corporate history of the opponent as given

in paragraph 5 of Moon’s statutory declaration (which I summarized in paragraphs 13

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and 14 above), in particular the fact that the opponent was the result of various mergers

that took place over a long span of time, it’s not surprising to find in some cases or

occasions that this is so. Nevertheless, taking all the materials exhibited by Moon’s

statutory declaration into consideration, I find a pattern of use of the marks, as discussed

above, has been clearly established. Moreover, beneath “GIA” and “GEMOLOGICAL

INSTITUTE OF AMERICA” on the right of such a combination of marks, there are

usually descriptive words which give information about the locality or the occasion or

event in which the marks are being used. I shall hereinafter refer to this way of use of

the three said marks alongside certain descriptive words to be the “GIA Trade Marks

Combination”.

45. The GIA Trade Marks Combination also appear in all the grading reports issued

to customers in Hong Kong and the promotional activities of the opponent in Hong

Kong and elsewhere. In view of the gross revenue figures for educational services

provided under the GIA Trade Marks in Hong Kong for 2003-2010, the numbers of

grading reports issued to customers in Hong Kong each year since 1996 to 2007, the

annual figures of the gross revenue for diamond or precious gem grading laboratory

services rendered by the opponent under the GIA Trade Marks Combination to clients

in Hong Kong for 2004-2010, and the various advertising and promotional activities of

the opponent’s goods and services in Hong Kong, as evidenced by Exhibit-U to Exhibit-

Y to Moon’s statutory declaration, I have no doubt that the GIA Trade Marks

Combination has become the distinguishing feature of the opponent, and has

undeniably acquired through it a substantial reputation and goodwill in its goods and

services offered and promoted in Hong Kong since 1980s.

46. As to the three individual trade marks that comprise the GIA Trade Marks

Combination, from the evidence filed I find they are under different treatments. I am

not aware of any independent use or appearance of the Opponent’s Logo. The mere

word mark “GEMOLOGICAL INSTITUTE OF AMERICA” is virtually the corporate

name of the opponent and has been used as such, its rare use outside the context of the

GIA Trade Marks Combination is nothing more than that. I do not find any goodwill

or reputation have been established on the Opponent’s Logo or the mere word mark

“GEMOLOGICAL INSTITUTE OF AMERICA” outside the context of the GIA Trade

Marks Combination.

47. The use of the letter mark “GIA” is another story. There is evidence showing

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that “GIA” had independently appeared or been used, say for example in the opponent’s

booths at various jewellery trade fairs in Hong Kong (Exhibit-X2 to Moon’s statutory

declaration), in advertising for the “GIA courses” offered in Hong Kong as advertised

in the jewellery magazine “Hong Kong Jewellery” (Exhibit-W3). More importantly,

the three letters mark GIA featured in numerous textual context, say for example in

advertisements and articles in magazines (Exhibits-W2 to W7), and its appearance

constituted not only as an acronym for referring to the opponent but as a branding in

itself.

48. The opponent has produced in its evidence certain testimony of people in the

trade or industry of gemstone and other jewellery. Mr. Chan Hiu-Sang, Albert is a

director of Chow Tai Fook, a famous local jewellery retail brand. Mr. Chan’s

experience is that many consumers on buying a diamond ring or any other piece of

diamond jewellery would look to buy certified diamonds, in respect of which he cited

the “GIA” certified diamonds as a symbol of credibility, to get the assurance that they

are purchasing high quality diamonds.

49. Another people in the trade, Mr. Ephraim Zion, who has dealt with diamond and

jewellery manufacturers, dealers, retailers and certification laboratories on a daily basis

for half a century globally including Hong Kong, said that diamond certification by a

reputable gemological laboratory to authenticate a diamond’s attributes is integral to its

valuation, and he cited GIA to be generally regarded by the industry and consumers as

the most prestigious and authoritative gemological laboratories and the widely

recognized authority in diamond certification. Mr. Zion also mentioned that GIA has

made considerable effort in educating the gem and jewellery industry and the general

public through its publication, for example the quarterly publication of the magazine

“Gems & Gemology” and the monthly electronic newsletter “GIA Insider”.

50. Again taking all the evidence as a whole, I have no doubt that the letter mark

“GIA” has become the distinguishing feature of the opponent and has acquired through

it a substantial reputation and goodwill in its goods and services offered and promoted

in Hong Kong.

Assessment of use of the applicant’s subject mark in Hong Kong

51. Though not strictly required at this stage to do so, I find it useful to also give an

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assessment on the applicant’s evidence in relation to the use of the subject mark in Hong

Kong.

52. I have summarized the applicant’s evidence in paragraphs 23 to 30 above. Given

that the applicant is a corporation organized and existing under the laws of Delaware

with offices in the United States of America and India, it is assumed that the applicant

operates its laboratories specializing in identification, grading and certification of

diamonds and research services also in these areas unless it is shown otherwise. It is

the opponent’s case that the applicant has not commenced business in Hong Kong and

has not used the subject mark in Hong Kong, and I would say the applicant has not

produced any credible evidence to counter this allegation.

53. As mentioned above, a list of education programs offered by the applicant in

India are given in Krasnianski’s statutory declaration. There is no evidence that the

applicant has run similar programs in Hong Kong.

54. The applicant also offered certificates of authenticity as well as certificates of

grading of diamonds, gemstones, pearls and jewellery under the subject mark. It is

alleged that certificates offered under the subject mark have been available in the US

and India since 2007, exhibit “NK-3” to Krasnianski’s statutory declaration is said to

contain copies of representative gem identification reports produced by the applicant in

the ordinary course of business in association with its goods and services. Exhibit “NK-

4” is said to contain copies of representative gem identification cards produced by the

applicant and transferred to its customers in the ordinary course of its business since

2007 in the US and in India. Exhibits “NK-5” and “NK-6” are said to contain copies

of representative brochures and pamphlets distributed by the applicant.

55. All the above, however, have no Hong Kong connection.

56. In the applicant’s evidence, a book entitled “Laboratory-grown Diamonds” by

Branko Deljanin and Dusan Simic is alleged to have been published by the applicant

under the subject mark. Exhibit “NK-8” contains printout of EGL Canada’s website

which advertised the book in Canada, and exhibit “NK-9” contains printout from the

applicant’s website which is said to have been available since 2007. Exhibit “NK-10”

contains copies of pictures of a representative business card stationery and redacted

invoice of the applicant. In these there is no suggestion that the book has any sale in

Hong Kong.

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57. As there is no evidence to show the use of the subject mark in Hong Kong, I

conclude that the subject mark is not known in the Hong Kong market as far as the

goods and services in question are involved.

58. Mr. Hughes further pointed out that aside from the miniscule total annual sales

figure of US$150,000 from the year 2005 for the applicant’s predecessor in title, namely,

Gem House International of USA, Inc., the applicant has filed no evidence of turnover

under the subject mark, nor is there any evidence of advertising expenditure. Indeed

Moon’s second statutory declaration, filed as evidence in reply to the applicant’s

evidence, cast doubt on many of the claims made by Mr. Krasnianski in relation to the

various use of the subject mark. For the present purposes of examining the use of the

subject mark, I do not find it has been used in Hong Kong.

Decision

59. I just record that for any of the grounds of opposition discussed in this decision,

it’s not in dispute that the relevant date is the date the subject application was filed, viz.,

16 June 2009 (“the relevant date”).

Section 12(3) of the Ordinance

60. Section 12(3) of the Ordinance provides as follows:

“(3) A trade mark shall not be registered if-

(a) the trade mark is similar to an earlier trade mark;

(b) the goods or services for which the application for registration is made are

identical or similar to those for which the earlier trade mark is protected; and

(c) the use of the trade mark in relation to those goods or services is likely to cause

confusion on the part of the public.”

61. Under section 7(1) of the Ordinance, in determining whether the use of a trade

mark is likely to cause confusion on the part of the public, the Registrar may take into

account all factors relevant in the circumstances, including whether the use is likely to

be associated with an earlier trade mark.

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62. Section 12(3) of the Ordinance is similar in effect to section 5(2) of the U.K.

Trade Marks Act 1994, which implements Article 4(1)(b) of the First Council Directive

89/104 of 21 December 1998 of the Council of the European Communities (“the

Council Directive”). In interpreting Article 4(1)(b) of the Council Directive, the

European Court of Justice (“ECJ”) has formulated the “global appreciation” test, the

principles of which can be found in the ECJ decisions in Sabel BV v Puma AG [1998]

R.P.C. 199, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. [1999] R.P.C. 117,

Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel B.V. [2000] F.S.R. 77 and

Marca Mode CV v Adidas AG [2000] E.T.M.R. 723.

63. In essence, the test under section 12(3) is whether there are similarities in marks

and goods which would combine to create a likelihood of confusion. The likelihood

of confusion must be appreciated globally and I need to address the degree of visual,

aural and conceptual similarity between the marks, evaluating the importance to be

attached to those differing elements, and taking into account the degree of similarity in

the goods and how they are marketed. I must compare the marks at issue, having

regard to the distinctive character of each and assuming normal and fair use of the marks

across the full range of the goods within their respective specifications. I must do all

of this from the standpoint of the average consumer for the goods in question.

Earlier trade marks

64. The term “earlier trade mark” is defined in section 5 of the Ordinance.

References to an earlier trade mark shall be construed as including a trade mark in

respect of which an application for registration has been made under the Ordinance and

which, if registered, would constitute an earlier trade mark under or by virtue of section

5(1)(a), subject to its being so registered.

65. As I have pointed out, the Schedule attached to the Grounds of Opposition,

reproduced in this decision as Annex 1 hereto, lists out the trade marks relied upon by

the opponent in launching the opposition against the subject application. There are

many of them and it is just impracticable and unnecessary for me to consider each of

them here, suffice to say that I find the only mark that really matters for the present

purposes is the following mark which has been registered in Class 16 and Class 42:-

17

Registration

No.

Trade Mark Class

Specification &

Disclaimer

1982B0478

16

printed matter, periodical

publications, books,

instructional material (other

than apparatus) all relating

to gemology or to gems.

200104503

421

gemological services;

registration services relating

to precious gems; grading of

precious gems; all included

in Class 42.

66. The letter mark chosen above, which I shall call the “GIA” mark, is the mark that

I can reasonably say is the mark, among the various marks listed out at the Schedule to

the Grounds of Opposition or Annex 1 here, closest to the subject mark in terms of

appearance and the goods and services concerned. As to the other marks including

those identified by the opponent to constitute the GIA Trade Marks, though they may

be used alongside the “GIA” mark or form part of the GIA Trade Marks Combination

as discussed above, they are just marks that are rather different from that mark and from

the subject mark, hence I would ignore them as they practically could not stand a better

chance of success against the subject mark than the “GIA” mark for the present

purposes of section 12(3). The “GIA” mark has obtained registrations in Hong Kong

in respect of goods and services in Classes 16 and 42 and meets the criteria of “earlier

trade mark” as defined under section 5(1)(a) of the Ordinance.

1 There were changes of classification of goods and services effected from 25 August 2011, the

classification in this class had been divided up into 2 classes, namely, “gemological services; grading of

precious gems; all included in Class 42”; and “registration services relating to precious gems; all

included in Class 45”.

18

The average consumer

67. As the case law indicates, in the global assessment of the likelihood of confusion,

account should be taken of the average consumer of the category of goods and services

concerned, who is reasonably well informed and reasonably observant and circumspect.

It should also be borne in mind that the average consumer’s level of attention is likely

to vary according to the category of goods or services in question (Mundipharma AG v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) –

Altana Pharma (RESPICUR) (T-256/04) [2007] E.C.R. II-449 at [42] and the case law

cited), and I have to determine the manner in which these goods and services are likely

to be selected by the average consumer in the course of trade.

68. The goods at issue in this case, take for example the applicant’s applied for goods,

are “certificates of authenticity and certificates of grading for diamonds, gemstones,

pearls and jewelry; certificates; printed certificates; printed award certificates”.

Although they are mere printed matters, they are all related to the appraisals service in

Class 36 and in providing identification, authentication and grading services in Class

42 of diamonds, gemstones, pearls and jewelry such that relevant certificates would be

issued in respect of the services rendered. More generally, the applicant’s applied for

goods and services can be said to be rendered in relation to the field of gemology, which

has a market for both professional gemologists and non-professional gemstone or

jewellery buyers.

69. I would say that the relevant public is comprised of members of the general

public in Hong Kong interested in those goods and services, which means it is made up

of the general public in Hong Kong. As goods and services rendered in relation to the

field of gemology is not one that would be required by an average consumer on a daily

basis, and the costs and expenses involved is usually high, the public concerned is

therefore one which is reasonably well informed and reasonably observant and

circumspect.

Comparison of goods and services

70. 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

19

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 or services 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

(PiraÑ AM diseño original Juan Bolaños) [2007] ECR II-2579, paragraph 37 and the

case-law cited).

71. As I have discussed above, the applicant’s applied for goods and services can be

said to be rendered in the field of gemology. This also suits the description of the

goods and services covered by the opponent’s mark “GIA” in Class 16 and 42 as set out

above.

72. In Gérard Meric v Office for Harmonization in the Internal Market (Trade Marks

and Designs) (OHIM) Case T-133/05, at paragraph 29 the General Court said:

“In addition, the goods can be considered as identical when the goods designated by the earlier

mark are included in a more general category, designated by the trade mark application (Case

T-388/00 Institut für Lernsysteme v OHIM – Educational Services (ELS) [2002] ECR II-4301,

paragraph 53) or when the goods designated by the trade mark application are included in a

more general category designated by the earlier mark (Case T-104/01 Oberhauser v OHIM –

Petit Liberto (Fifties) [2002] ECR II-4359, paragraphs 32 and 33; Case T-110/01 Vedial v

OHIM – France Distribution (HUBERT) [2002] ECR II-5275,paragraphs 43 and 44; and Case

T-10/03 Koubi v OHIM – Flabesa (CONFORFLEX) [2004] ECR II-719, paragraphs 41 and

42.”

73. The comparison of the goods and services must concern the description of the

goods and services covered by the marks at issue and not the goods and services for

which the trade marks are actually used. In this connection, although the applicant’s

goods and services are more in relation to the provision of identification, authentication

and grading services in respect of diamonds, gemstones, pearls, jewelry etc., whilst the

goods and services covered by the registrations of the opponent’s mark “GIA” seem to

be more inclined to providing educational service in respect of gemology and the

grading of precious gems, it can still be said that they are all goods and services that are

rendered in the field of gemology. I am of the view that the goods and services

covered by the marks at issue were identical or similar.

20

Comparison of marks

74. According to consistent case law, in order to assess the degree of similarity

between the marks concerned, it is necessary to determine the degree of visual, aural

and conceptual similarity between them and, where appropriate, to determine the

importance to be attached to those different elements, taking account of the category of

goods or services in question and the circumstances in which they are marketed (see

Lloyd Schuhfabrik Meyer v Klijsen Handel, paragraph 27).

75. In addition, the global assessment of the likelihood of confusion must, as regards

the visual, aural and conceptual similarity of the marks in question, be based on the

overall impression created by them, bearing in mind, in particular, their distinctive and

dominant components. The perception of the marks in the mind of the average

consumer of the goods or services in question plays a decisive role in the global

assessment of the likelihood of confusion (see Sabel BV v Puma AG, para 23; Lloyd

Schuhfabrik Meyer, para 25; and the order in P Matratzen Concord v OHIM (Case C-

3/03), para 29). In that regard, the average consumer normally perceives a mark as a

whole and does not proceed to analyse its various details (see Office for Harmonisation

in the Internal Market (Trade Marks and Designs) v Shaker di L. Laudato & C. Sas,

Limiñana y Botella, SL (C-334/05 P) [2007] E.C.R. I-4529 at [35] and the case law

cited).

76. I should point out here that both the applicant and the opponent had tried to

introduce expert evidence into the comparison of marks here. The applicant’s is an

expert report of Carole E. Ghaski which is exhibit as “NK-19” to Krasnianski’s statutory

declaration. The opponent’s is McNeill’s statutory declaration filed as evidence in

reply. Whilst I would not entirely rule out the relevance of these reports to the issues

of comparison, they are only reference material that could not substitute my own

assessment of the marks from the angle of how average consumers would perceive the

marks and whether there is any similarity and likelihood of confusion between them.

There is argument about the use of Ghaski’s report in the present proceedings as the

report was originally prepared not for this case but for use in other proceedings, but as

I have indicated, this kind of reports are only for reference purpose. In any event, I

note with agreement the comments in McNeill’s statutory declaration that many of the

tests and scenarios discussed in Ghaski’s report had no empirical validation to support

the assumptions therein made, and that Dr. Ghaski adopted an overly “forensic”

21

approach to assessing the similarity of the two marks, which was not very helpful for a

proper trade mark comparison. The reference value of this report is therefore very

minimal.

77. Whilst the comparison must be made by examining each of the marks in question

as a whole, that does not mean that the overall impression conveyed to the relevant

public by a composite trade mark may not, in certain circumstances, be dominated by

one or more of its components (see OHIM v Shaker [2007] E.C.R. I-4529 at [41] and

the case law cited). It is only if all the other components of the mark are negligible

that the assessment of the similarity can be carried out solely on the basis of the

dominant element (OHIM v Shaker [2007] E.C.R. I-4529 at [42]).

Distinctive and dominant components of the “GIA” mark and the subject mark

78. As discussed at paragraphs 65 and 66 above, among the earlier trade marks that

are relied upon by the opponent in the present proceedings, I have chosen the “GIA”

mark to be the mark for consideration. This is a three letters mark.

79. Section 3(2) of the Ordinance, like section 1(1) of the U.K. Trade Marks Act

1994 or Article 2 of the Council Directive, confirms that a trade mark may consist of

letters. Hence letters are registrable, unless the letters designate a characteristic of the

goods or services of the application or are devoid of any distinctive character. However,

unless research or general knowledge shows that there is a history of non-trade mark

use of similar combinations of letters in a particular trade, it would just be assumed that

the letters are sufficiently random (see FSS Trade Mark [2001] R.P.C. 40).

80. There is no suggestion that the three letters combination GIA has become no

more than a descriptive indication or abbreviation for the type of goods or services at

issue, nor it resembles signs commonly used in the field of gemology for non-trade

mark purposes such that it is devoid of any distinctive character in the relevant trade.

I do not think in such a three letters combination, a most distinctive and dominant

component can be found. The combination should be looked at as a whole.

81. Similarly, the subject mark, namely, “GHI”, is also a mark of three letters

combination in respect of which no specific reason can be attributed to suspect that the

particular letters will not be taken, by the average consumer, as a trade mark.

22

82. Putting aside the question of whether the marks have acquired an enhanced

degree of distinctive character through use, I consider that both trade marks to be at the

same inherent distinctiveness level.

Visual similarity

83. Visually speaking, taking each of the marks as a whole, there are a number of

similarities between them: - both are a three letters combination; both combinations

consist of merely capital letters; both start with the letter G; both contain the letter I. I

think the similarities between the marks are qualitatively and quantitatively strong and

they are not much mitigated by the presence of the letter H in the subject mark and the

letter A in the “GIA” mark, nor by the different positioning of the letter I. The overall

effect is that there is high degree of visual similarity between the “GIA” mark and the

subject mark.

Aural similarity

84. Aurally, only one of them, namely, “GIA” is a pronounceable word (i.e., an

acronyms made up of a series of initial letters). However, I am not aware there is

anything in the evidence showing that “GIA” will ordinarily be pronounced by the

consumers as an acronym. I think it is more natural that both marks will be

pronounced as an abbreviation, meaning that each individual letter will be said and

heard. I also note that both the expert report of Carole E. Ghaski and McNeill’s

statutory declaration assess the marks on that basis.

85. As both marks begin with the letter G, and somewhere there comes the letter I, I

think there is a medium to high degree of aural similarity between the “GIA” mark and

the subject mark.

Conceptual similarity

86. Conceptually speaking, it is understandable that “GIA” and “GHI” represent the

corporate names of the opponent and the applicant respectively. Given this same

underlying message, and the fact that both marks are a three letters combination mark

beginning with the letter G, there is a high degree of conceptual similarity between the

23

marks.

Distinctiveness of the “GIA” mark

87. A mark may be particularly distinctive either per se or because of the reputation

it enjoys with the public. The more distinctive an earlier mark, the greater will be the

likelihood of confusion (Sabel BV v Puma AG).

88. In determining the distinctive character of an earlier trade mark, I must make an

overall assessment of the greater or lesser capacity of the mark to identify the goods or

services for which it has been registered as coming from a particular undertaking, and

thus to distinguish those goods or services from those of other undertakings. In

making that assessment, account should be taken, in particular, of the inherent

characteristics of the mark, including the fact that it does or does not contain an element

descriptive of the goods or services for which it has been registered; the market share

held by the mark; how intensive, geographically widespread and long standing use of

the mark has been; the amount invested by the undertaking in promoting the mark; the

proportion of the relevant section of the public which, because of the mark, identifies

the goods or services as originating from a particular undertaking; and statements from

chambers of commerce and industry or other trade and professional associations

(Windsurfing Chiemsee v Huber and Attenberger [1999] E.C.R. I-2779; Lloyd

Schuhfabrik Meyer v Klijsen Handel [1999] E.T.M.R. 690).

89. As I have analysed above, the letter mark “GIA” as well as the GIA Trade Marks

Combination (of which the “GIA” mark forms part) have become the distinguishing

feature of the opponent and has acquired through them a substantial reputation and

goodwill in its goods and services offered and promoted in Hong Kong.

90. Hence, as far as the question of whether the “GIA” mark has acquired an

enhanced degree of distinctive character through use is concerned, I would hold that it

has.

Likelihood of confusion

91. The global assessment that I am required to undertake implies some

interdependence between the relevant factors. Thus, a lesser degree of similarity

24

between those goods or services may be offset by a greater degree of similarity between

the marks, and vice versa.

92. In the present case, having found that the parties’ goods and services are identical

or similar, I find that visually and conceptually the “GIA” mark and the subject mark

are of a high degree of similarity, and aurally, they are of a medium to high degree of

similarity.

93. It has been said that the more distinctive the earlier mark, the greater the risk of

confusion (SABEL, paragraph 24). Marks with a highly distinctive character, either

per se or because of the reputation they possess on the market, enjoy broader protection

than marks with a less distinctive character (see Canon, paragraph 18, and Lloyd

Schuhfabrik Meyer, paragraph 20). As obvious from the discussions so far, the “GIA”

mark has acquired an enhanced degree of distinctive character through use in the field

of gemology.

94. In the evidence there had been discussions about how consumers would make a

purchase of gemstone or jewellery products. According to Chan Hiu-Sang, Albert, who

is a director of Chow Tai Fook, a famous local jewellery retail brand, for most people,

buying a diamond ring or any other piece of diamond jewellery would qualify as one

of the largest purchases they will ever make; many purchasers of diamond and jewellery

would therefore undertake research before making such a purchase, and because of the

internet, finding and evaluating standards and laboratories is freely and easily available

and allows consumers to make smarter purchasing decisions.

95. Mr. McNeill said that diamonds are of very high value, their significance as

precious gemstones are generally purchased for special occasions such as engagement,

weddings, or other significant occasions in life.

96. All this suggest that the goods and services involved will be expensive, and of a

kind to which potential purchasers would give careful and due consideration before

purchase. But would the fact that consumers would pay a high level of attention to

the selection of the goods and services means that they would also pay high attention

to the marks involved?

97. Mr. Ephraim Zion, a person experienced in the field of gemology, said that

diamond certification by a reputable gemological laboratory to authenticate a

diamond’s attributes is integral to its valuation, and he cited “GIA” to be generally

25

regarded by the industry and consumers as the most prestigious and authoritative

gemological laboratories and the widely recognized authority in diamond certification.

98. Mr. Chan also cited the “GIA” certified diamonds as a symbol of credibility, in

respect of which many consumers would look to buy certified diamonds to get the

assurance that they are purchasing high quality diamonds.

99. Mr. McNeill is of the view that the public’s ability to discern two similar marks

will be greatly influenced by their emotional state, and this is particularly relevant in

the case of diamonds given the special value and the occasions as mentioned above.

100. With regard to the global assessment of the likelihood of confusion, how such a

high level of attention paid to the goods and services as well as the marks would fare in

the case of high degrees of similarity between the goods and services and between the

marks is a question that the present case must answer.

101. Mr. Chan offered his opinion which I would like to reproduce below:-

“Typically, diamond grading laboratories are referred to by their abbreviation

(e.g., GIA, AGS and HRD). Given that both “GIA” and “GHI” are 3-letter

acronyms which begin with the letter “G” and consist of the letter “I” and that

the opponent is the only famous diamond laboratory which begins with the letter

“G”, I think that there is a risk of confusion between GIA and GHI in the

marketplace amongst the consumers. Whilst purchasers of diamonds and

jewellery are relatively better informed than before, most of them are

inexperienced and unsophisticated purchasers who buy diamonds and jewellery

only on special occasions like engagements and other special occasions. As

such, although consumers who read about GIA on the Internet know that they

would like to buy diamonds and gemstones certified by GIA, due to imperfect

recollection, they may not have the ability to discern between GIA and GHI

when they walk into a jewellery store and are exposed to an array of diamond

jewellery. They might remember to ask for a grading certificate, but if they

were presented with a GHI grading certificate, they would likely see the 3-letter

name/acronym, see the “G” at the beginning, and think the diamonds were

graded by GIA, the institution they had read about on the Internet.”

102. I have discussed above that goods and services rendered in relation to the field

of gemology has a market for both professional gemologists and non-professional

26

gemstone or jewellery buyers. Mr. Zion said that whilst experienced industry

professional may be more able to distinguish between the “GHI” mark and the “GIA”

mark, he thought there is a risk of confusion in the marketplace amongst end consumers

of diamonds and precious stones who are, for the most part, inexperienced, untrained

and unsophisticated purchasers who buy diamonds and precious stones very

infrequently.

103. Mr. Chan, Mr. Zion and Mr. McNeill are third parties that have not been shown

to have any connection with the opponent other than that in their business they may

have to deal with the opponent’s goods and services. I trust their observations of how

consumers would perceive the marks and the manner in which they would purchase

gemstone or jewellery are fair assessments.

104. Mr. Hughes, the opponent’s counsel, submitted that the general purchasing public

would include the increasing number of persons from mainland China residing or

visiting Hong Kong on business or as tourists, many of them don’t have a high level of

fluency in the English language. Be that as it may, I think their position is not much

different from many of the Cantonese-speaking purchasing public of diamonds and

precious stones in Hong Kong who would not undertake a side-by-side comparison

between the marks and must instead rely upon the imperfect picture of them he kept in

his mind, who might have a vague recollection of his own research or friends’ advice

that a three-letter acronym mark beginning with the letter G and a letter I somewhere is

the brand name he should go for if he wants to buy a high quality certified diamonds.

As such I think the risk that the consumer would mistake “GHI” for “GIA” is very high

if he were presented with the relevant goods and services offered by the applicant, or

that it is likely that he would wrongly believe that the respective goods and services

come from the same or economically-linked undertakings as the opponent’s. There is

a likelihood of confusion within the meaning of section 12(3) of the Ordinance (Canon

Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc., op. cit.).

105. It follows that the ground of opposition under section 12(3) succeeds.

106. As I have found in favour of the opponent on the ground of opposition under

section 12(3) of the Ordinance, it is not necessary for me to consider the other grounds

of opposition.

27

Conclusion

107. As the opponent has been successful in this opposition, I award the opponent

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

19 May 2014

28

Annex 1

Trade Mark

No.

Trade Mark Class

No.

Specification of Goods or Services

1. 19810813 GEMOLOGICAL

INSTITUTE OF AMERICA

16 paper and paper articles, cardboard and

cardboard articles, printed matter, periodical

publications, books, photographs, stationery,

instructional and teaching material (other than

apparatus); all relating to gemology or to

gems.

2. 1982B0478 GIA

16 printed matter, periodical publications, books,

instructional material (other than apparatus)

all relating to gemology or to gems.

3. 199900489AA GIA 9, 35 video tapes, compact disc read-only-

memories, audio tapes; all being educational

materials relating to gemology; data carriers,

transmitters and reproducers of sound, images

or data; all included in Class 9.

mail order services by product catalog;

computerized ordering via computer

terminals; all included in Class 35.

4. 200104503 GIA 42 gemological services; registration services

relating to precious gems; grading precious

gems; all included in Class 42.

5. 2002B08340 GTL 42 identifying, grading, registering, and

inscribing precious gems; pearl identification;

all being gemological services and included in

Class 42.

6. 2002B13902 GIA GEM TRADE

LABORATORY

INTEGRITY

42 gemological services; identifying, grading,

registering, and inscribing precious gems;

pearl identification; all included in Class 42.

7. 200306517 GIA GEM TRADE

LABORATORY

INTEGRITY

42 gemological services, registration services

relating to precious gems; grading of precious

gems; all included in Class 42.

29

Trade Mark

No.

Trade Mark Class

No.


8. 200315802 GIA 14 jewelry, jewelry boxes, jewelry cases, pearls,

gems, gem replicas, gem cases, beads, pins,

label pins, rings, ring stands; all included in

Class 14.

9. 200401163 GIA 41 conducting a school training people in the arts

of gem identification and jewelry making; all

included in Class 41.

10 200401909 GIA 9 scientific instruments and apparatus,

microscopes, measuring instruments, scales,

refractometers, lamps for the microscopes,

color testing equipment, ultraviolet and

fluorescent testing equipment and photo-

optical instruments and spectroscopes, tubes,

filters, color testing equipment, color

comparaturos, ultraviolet and fluorescent

testing equipment, photo-optical instruments,

spectroscopes, microscopes for grading gems,

and portable laboratory equipment; scientific

instruments and apparatus for examining,

testing, evaluating, and appraising pearls and

jewelry; all included in Class 9.

11. 200403770 GIA 9 microscopes, measuring instruments, scales,

refractometers, lamps for the microscopes,

color testing equipment, ultraviolet and

fluorescent testing equipment and photo-

optical instruments and spectroscopes, tubes,

filters, color testing equipment, ultraviolet and

fluorescent testing equipment, photo-optical

instruments, spectroscopes, microscopes for

grading gems, and portable laboratory

equipment; scientific instruments and

apparatus for examining, testing, evaluating,

and appraising gems, pearls and jewelry; data

carriers, computer software, video tapes, CD-

ROMs, audio tapes; all featuring educational

materials; transmitters and reproducers of

sound images, data, telephonic and digital

transmitters of information; all in the field of

gemology, pearls and jewelry; all included in

Class 9.

30

Trade Mark

No.

Trade Mark Class

No.


12. 2004B08504 GEMOLOGICAL


KNOWLEDGE

41 conducting a school training people in the arts

of gem identification and jewelry making; all


13. 2005B00434 GEMOLOGICAL


16 printed matter, periodical publications, books,

instructional and teaching materials (other

than apparatus); all relating to gemology or to

gems.



KNOWLEDGE

9 video tapes, compact disc read only

memories, audiotapes; all being educational

materials relating to gemology; data carriers,

transmitters and reproducers of sound, images

or data; all included in Class 9.

15 300176823 GIA GEMOLOGICAL


9 data carriers, videotapes, CD-ROMs,

audiotapes and transmitters and reproducers

of sound, images or data; all featuring

educational materials in the field of

gemology; all included in Class 9.

16. 300176832 GIA GEMOLOGICAL


16 paper, paper articles, cardboard and cardboard

articles, printed matter, periodical

publications, books, photographs, stationery,

and instructional and teaching materials.

17. 300176841 GIA GEMOLOGICAL


41 in-residence, on-site and correspondence

courses in gemology including jewelry

design, sale and promotion of gems, pearls

and jewelry, investigation of genuineness of

gems and valuation of gems and pearls.



KNOWLEDGE

35 mail order services by product catalog;


terminals.

31

Trade Mark

No.

Trade Mark Class

No.



INSTITUTE OF

AMERICA

41 in-residence, on-site and correspondence

courses in gemological including jewelry

design, sale and promotion of gems, pearls

and jewelry, investigation of genuineness of

gems and valuation of gems and pearls; all




9 video tapes, compact disc read only

memories, audio tapes; all being educational

materials relating to gemology; all included in

Class 9.



35 mail order services by product catalog;


terminals.

~ End ~

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