Yakult Secures Trademark Victory In Hong Kong

by Mary Swire, for LawAndTax-News.com, Hong Kong

04 March 2004

Pro-biotic yoghurt drink manufacturer, Yakult has secured a landmark victory against rival firm, Yakudo in a recently concluded trademark dispute.

Ruling in the Hong Kong High Court on February 26, in the first case brought under Hong Kong's new trademark laws examining whether a firm's international reputation can be protected in the jurisdiction even if it has no local presence, Justice Lam announced that Yakult could claim injunctive relief against Yakudo for passing off, and for trademark infringement.

According to reports, Yakult sells its product in Hong Kong and Taiwan under the name Yakult, and its local language equivalent in the former territory, and under a distinctive trademark in the local script in the latter.

Yakudo, meanwhile, started to make similar products in the China under the Yakudo name and its Chinese equivalent. However, when the firm attempted to register these names as trademarks in Hong Kong, Yakult took legal action to prevent it from doing so.

Explaining the reasoning behind his decision last week, Justice Lam announced that:

"Due to the image of all Yakult companies as being part of a large international group and the popularity of the name in Taiwan, with the large volume of travellers between Hong Kong and Taiwan and the availability of Taiwanese advertisements in Hong Kong through magazines and the Internet, the association of the local name with Yakult is well-known to a sufficient portion of members of the public in Hong Kong so as to create confusion in Hong Kong if the Defendants were allowed to use this name."

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