TRADE MARKS ORDINANCE (CAP. 559)
OPPOSITION TO TRADE MARK APPLICATION NO. 300402759
MARK:
CLASSES:
18 and 25
APPLICANT:
PACIFIC RIM INDUSTRIES PTE LTD
OPPONENT:
VALENTINO S.P.A
_____________________________________________________________________
STATEMENT OF REASONS FOR DECISION
Background
1.
On 14 April 2005, the applicant filed an application for registration (“the
subject application”) under the Trade Marks Ordinance (Cap. 559) (“the Ordinance”)
for the registration of the following mark :-
(“the suit mark”).
2.
Registration is sought in respect of goods of the following classes :Class 18
skins (cattle-); skin (goldbeaters'-); gold beaters' skin; cattle skins;
leatherboard; curried skins; pelts; animal skins; leather, unworked or
semi-worked; butts [parts of kides]; imitation leather; leather
(imitation-); skins of chamois, other than for cleaning purposes; chamois
leather; other than for cleaning purposes; bags (net-) for shopping;
beach bags; trimmings of leather for furniture; card cases [notecases];
music cases; bags (game-) [hunting accessory]; straps for skates; boxes
of vulcanised fibre; travelling bags; valises; bags (garment-) for travel;
travelling trunks; travelling sets [leatherware]; garment bags for travel;
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bags for climbers; straps (leather-); straps of leather [saddlery]; tool bags
of leather [empty]; boxes of leather or leather board; bands of leather;
valves of leather; leather shoulder belts; boxer of leather (hat-); leather
thongs; leather leads; leather thread; cases, of leather or leatherboard;
leather leashes; leather straps; coverings (furniture-) of leather; leather
twist; chin straps, ol leather; laces (leather-); purses; pocket wallets;
leatheroid box; soldier's equipment (straps for-); handbags; frames
(handbag-); handles (suitcase-); school satchels; wallets (pocket-);
satchels (school-); school bags; coverings of skins (furs); bags for
campers; suitcases; suitcase handles; varsity cases [not fitted]; key cases
[leatherware]; belts (leather shoulder-); pouches, of leather, for
packaging; bags [envelopes, pouches] of leather, for packaging;
envelops, of leather, for packaging; sling bags for carrying infants;
backpacks; skates (straps for-); trunks [luggage]; wheeled shopping
bags; springs (casings, of leather, for plate-); casings, of leather, for
springs; haversacks; canvas box; chain mesh purses, not of precious
metal; purses, not of precious metal; briefcases; attache cases; shopping
bags; parasols; umbrellas; umbrella sticks; umbrella handles; umbrella
rings; covers (umbrella-); umbrella or parasol ribs; frames for umbrellas
or parasols.
Class 25
bath robes; bath sandals; bath slippers; bathing caps; bathing drawers;
belts [clothing]; breeches [for wear]; clothing; coats; top coats ;
footwear; galoshes; garters; girdles; gloves [clothing]; dressing gowns;
gymnastics [clothing]; gymnastic shoes; hosiery; jackets [clothing];
jerseys [clothing]; jumpers [shirt fronts]; knitwear [clothing]; clothing of
leather; clothing of imitations of leather; liveries; mittens; neckties;
overalls; overcoats; pants; pelisses; pullovers; pyjamas; sandals; shirts;
shoes; singlets; skirts; slippers; smocks; sock suspenders; socks; soles
for footwear; boots for sports; sports jerseys; sports shoes; stockings;
stuff jackets [clothing]; suits; bathing suits; suspenders; sweat-absorbent
underclothing [underwear]; sweaters; swimsuits; tee-shirts; togas; top
hats; trouser straps; trousers; underclothing; anti-sweat underclothing;
underpants; underwear; anti-sweat underwear; uniforms; vests;
waistcoats; waterproofing clothing.
3.
Particulars of the subject application were published on 3 November
2006. The opponent filed a notice of opposition with the “grounds of opposition” on
8 March 2007.
4.
The opposition hearing was heard on 16 January 2013. Mr. Jeffrey
Chau, counsel instructed by Messrs. Deacons, represented the opponent at the hearing.
The applicant did not file a notice of intention to appear and was not represented at
the hearing.
5.
I reserved my decision at the conclusion of the hearing.
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Grounds of opposition
6.
The grounds on which the opponent opposes registration of the suit mark
as stated in the grounds of opposition are sections 11(5)(b), 12(3), 12(4) and 12(5)(a)
of the Ordinance.
7.
The opponent stated that it is the proprietor of a well-known family of
and
logos and variations
“VALENTINO” trade marks including the
(“the opponent’s marks”). The marks are registered in Hong Kong and in many
countries worldwide. The opponent relies on 11 marks registered in Hong Kong as
listed in a Schedule A which is annexed to the grounds of opposition. Particulars of
the 11 marks are reproduced at the Appendix. Schedule B to the grounds of
opposition sets out particulars of registrations or applications for registration of the
“VALENTINO” related marks in various countries or regions in the world.
The opponent1 has used the opponent's marks, inter alia, extensively in
various places worldwide including Hong Kong in respect of prestigious goods
including, inter alia, leather and imitations of leather, animal skin, hides, leather goods,
leather accessories, trunks, travelling bags, belts, bags, purses, handbags, wallets,
attaché cases, brief cases, card cases, pocket wallets, umbrellas, parasols, walking
sticks, whips, harness, saddlery; clothing, footwear, headgear, knitwear, polo shirts
and T-shirts, sweaters, blouses, raincoats, outer clothing, trousers, top coats, sports
wear, swimwear, ties, gloves, scarves, hosiery, shoes, boots, slippers, sports shoes;
soaps, perfumery and cosmetic products; optical apparatus and instruments, spectacles
and sunglasses and their parts and fittings; precious metals and their alloys and goods
in precious metals or coated therewith, gold and silverware; jewellery, costume
jewellery, precious stones, horological and chronometric apparatus and instruments
and parts and fittings therefor; fashion accessories, smokers’ articles, textiles, towels,
bed and table covers, bathroom and other ceramic tiles, furniture, glassware, porcelain,
wallpaper, and other luxury products and accessories (“the opponent’s goods”).
8.
9.
The opponent asserts that, by reason of the long continued and extensive
use and promotion of the opponent’s marks by the opponent and its predecessors
and/or licensees, the marks have acquired recognition by the public at large as unique
to identify the opponent’s goods and have acquired significant and valuable goodwill
and reputation in favour of the opponent.
1
In this decision, the references to the opponent also encompass its predecessors, as the case may be.
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10.
The suit mark incorporates and closely resembles the opponent’s marks
by incorporating the opponent’s housemark “VALENTINO” and the “
” logo
(“the
logo”). The goods applied for also overlap with and/or are associated with
the goods covered by the opponent’s registrations in Hong Kong and other countries.
Counter-statement
11.
The applicant filed a counter-statement on 7 June 2007.
12.
The applicant avers that the opponent is in essence claiming the
exclusive right to use the name “VALENTINO” which the opponent is not entitled to.
There are other users and owners of trade marks containing the name “VALENTINO”
in other countries and Hong Kong, for example “GIOVANNI VALENTINO” and
“MARIO VALENTINO”.
13.
In view of the lack of visual, aural and conceptual similarities between
the suit mark and the opponent’s marks, there is no likelihood that the applied for
goods would be perceived by the public as being provided by or connected with the
opponent.
14.
It is further averred that the suit mark was created and adopted by the
applicant independently without reference to and/or knowledge of the opponent’s
marks. The suit mark is inherently distinctive and the applicant has filed
applications for registration in other countries.
15.
The applicant first used the suit mark on the goods applied for in around
1999 and has been using the suit mark on the applicant’s goods and business since
then. Sales were made in countries and regions including Singapore, China, Hong
Kong, Indonesia, the United States and the Philippines.
16.
The suit mark has acquired substantial goodwill and reputation for the
applicant’s goods and business independent of the opponent’s marks as a result of the
sales achieved and the substantial promotional efforts. The applicant’s business
conducted under the suit mark has been developed with honest and genuine
commercial interest in Singapore since 1999. There is no intention to make use of or
take advantage of the goodwill and reputation, if any, of the opponent’s marks.
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Evidence
17.
Under Rule 18 of the Trade Marks Rules (Cap.559, sub. leg.)(“Rule/s”),
the opponent filed a statutory declaration from Antonella Andrioli, together with
exhibits, which was declared on 4 February 2010, and a first supplementary statutory
declaration from the same Antonella Andrioli, together with exhibits, which was
declared on 27 May 2010 (“Andrioli’s first statutory declaration” and “Andrioli’s
supplementary statutory declaration” respectively).
18.
The applicant did not file any evidence under Rule 19. Although the
applicant has in the counter-statement referred to the use made of the suit mark and
the creation of the suit mark independently, these indications are not contained in and
filed by way of statutory declaration or affidavit in accordance with Rules 79 and 80
of the Rules. As such, I would not take those indications as the applicant’s evidence.
Relevant date
19.
The relevant date for considering the opposition is 14 April 2005, the
date of the subject application for registration.
Opponent’s evidence
Andrioli’s first statutory declaration
20.
Ms. Andrioli has been the proxy holder of the opponent since 1
September 2006, and is duly authorised by the opponent to make the declaration.
21.
She deposes that the opponent acquired the “VALENTINO” trade mark
portfolio of Valentino Globe S.p.A and associated business, goodwill and reputation in
September 2003. The opponent is wholly-owned by Valentino Fashion Group
S.p.A..
22.
The opponent is in the business of designing, manufacturing, marketing
and distributing a wide range of luxury and fashion products. The products cover the
goods described as “the opponent’s goods” in paragraph 8 above.
23.
The opponent is the proprietor of the family of “VALENTINO” trade
marks including word marks such as “VALENTINO”, “VALENTINO GARAVANI”,
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“VALENTINO ROMA”, “R.E.D. VALENTINO”, device marks featuring a
or
sign, and other composite marks formed by devices of such sign plus word
elements such as
and
.
24.
A list of registrations and a list of pending applications for registration of
the opponent’s marks in Hong Kong with certified entries from the Trade Mark
Register are produced at Exhibit AA-11. Another list of registrations in other
countries together with copies of certificates of registrations are produced at Exhibit
AA-12.
25.
The opponent is an international luxury fashion brand founded in 1959
by designer Mr. Valentino Garavani in Rome, Italy. Ms. Andrioli sets out in
paragraphs 5 to 17 of her first statutory declaration an account of how Mr. Garavani
established his business and subsequently attained recognition and fame in the fashion
industry in Italy and internationally.
26.
The opponent’s “VALENTINO” mark was first used on clothing in Italy
in the late 1950s. Since then, the opponent’s predecessors had expanded the
business in association with the housemark “VALENTINO” to encompass sales and
production of the opponent’s goods and related services on a worldwide scale.
27.
For the Hong Kong market, Ms. Andrioli deposes that the use of the
mark “VALENTINO” and its variant marks began since at least the 1970s. The
mark in relation to
opponent’s predecessors and/or licensees have first used the
the opponent’s goods in Hong Kong since at least the late 1980s and the
mark
since at least 1999/2000. Since then, these marks have been used continuously and
extensively in Hong Kong in relation to the opponent’s goods.
28.
In the 1970s, the opponent’s goods were sold by Joyce Boutique.
Exhibit AA-13 is a copy of an article published in Forbes Hong Kong on 2 December
1996 on the interview of Ms. Joyce Ma, founder of Joyce Boutique Holdings. In the
article, there was reference to the opening of the first Joyce Boutique in Mandarin
Oriental Hotel in Central in 1970, and “VALENTINO” was one of the Italian labels of
products offered in the Boutique.
29.
Since at least the 1980s, the opponent’s goods were sold through The
Swank Shop Ltd (“The Swank”), its licensee/distributor in Hong Kong. A printout
from the website of The Swank is produced at Exhibit AA-14 which gives an account
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of the business of The Swank since 1955 in selling products of various famous
international fashion brands through its shops and boutiques.
30.
The opponent’s goods were subsequently sold in boutiques jointly
operated by the opponent and The Swank. In 2000, the opponent and The Swank
established a joint venture company to promote and market the opponent’s goods.
Copies of 7 undated photographs showing window displays and the interior of
“VALENTINO” retail shops (said to be taken in Landmark and Mitsukoshi
department stores in 1990, 1991 and 1995 respectively) are produced at Exhibit
AA-15.
31.
In 2005, the opponent acquired shares of The Swank in the joint venture
V.S. Limited and became the sole owner of the retail operations in Hong Kong. As
of 14 April 2005, the opponent through V.S. Limited operated 3 stores in Hong Kong.
Copy of a press release dated 3 November 2005 retrieved from the website of
www.valentinofashiongroup.com reported the acquisition of the shares of The Swank
in the joint venture and the operation of shops and sales outlets selling the opponent’s
goods in Hong Kong (Exhibit AA-16).
32.
Exhibit AA-17 is a printout (printed on 20 August 2009) from
http://corporate.valentino.com/home2.html showing the addresses of 5 retail outlets in
Hong Kong. Exhibit AA-18 provides, inter alia, extracts of business registration
records of Valentino Hong Kong Limited (formerly V.S. Limited) showing the dates
from which a number of Valentino boutiques commenced business in Hong Kong. It
can be discerned from the records that the earliest date of operation of one boutique
was 1 September 2001.
33.
Ms. Andrioli deposes that for the period from 1980 to 1983, the recorded
sales figures of the opponent’s goods bearing the opponent’s marks in Hong Kong
were roughly around US$1.16 million, i.e. approximately HK$9.048 million. For
the period from 1990 to 1997, the annual sales figures of the opponent’s goods in
Hong Kong ranged from HK$754,000 to HK$1.176 million. Exhibit AA-19
comprises copies of sales invoices randomly selected from 1980 to 2005 on sales
conducted in Hong Kong.
34.
The total worldwide turnover of the opponent’s goods for 2004 is
approximately €42,240,159, and the figure for the first 3.5 months of 2005 up to 14
April 2005 is approximately €1,364,806. According to the press release issued by
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Valentino Fashion Group on 10 November 2005, the net consolidated sales of the
Group for the first 9 months of 2005 was €1,384.2 million, reflecting an increase of
11% from the figure of €1,244 million achieved for the same period in 2004 (Exhibit
AA-20; printout downloaded from www.valentinofashiongroup.com).
35.
On advertisement and promotion of the opponent’s marks, Ms. Andrioli
states that the opponent’s marks have been extensively advertised and marketed
worldwide including in Hong Kong. In Hong Kong, the opponent has promoted its
marks by placing advertisements on light-boxes in Central and through direct
advertising. The opponent also concentrates on advertisement through international
fashion-oriented and beauty-oriented magazines, and enjoys regular editorial coverage
in international magazines and newspapers most of which are available in Hong Kong.
Brochures are distributed directly to customers, and fashion shows are held 4 times a
year in Paris, Milan and other major cities.
36.
During the period from 1993 to 1999, the worldwide advertising
expenditure exceeded US$40 million. It is however not possible to apportion the
share of the advertising expenditure among individual countries.
37.
Ms. Andrioli deposes that Mr. Valentino Garavani has been known in the
international press simply by “Valentino”, his forename, for the past 50 years, as
shown in various publications and advertisements.
38.
Copies of advertisements are produced at Exhibits AA-21, AA-22,
AA-23 and AA-24 including advertisements in international magazines such as Vogue,
Vanity Fair, Marie Claire, Elle etc which are available for sale in bookstores,
newsstands and convenience stores in Hong Kong.
39.
Exhibit AA-25 is a copy of a publication known as “CAMPAGNES
PUBLICITAIRES 1968-2008” showing pictures of advertising campaigns of
“VALENTINO” goods in various places worldwide. On one page, there is reference
to a “valentino boutique” with an address in Hong Kong.
40.
Exhibit AA-33 contains copies of sample advertisements in Femina
magazines which were circulated in Hong Kong and in the Asian region in the 1970s
and 1980s.
41.
Exhibit AA-35 comprises copies of advertisements and newspaper
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clippings from local newspapers from 1998 to 2005 referring to “VALENTINO”
goods and/or marks in Hong Kong. There are copies showing goods including
clothing, bags and shoes of the “VALENTINO” brand. There are also references to
“VALENTINO” goods favoured by local celebrities, and the publicity aroused on
occasions such as fashion shows. Copies of samples of archived news reports of
Sing Tao Daily from April 2002 to 1 March 2005 touching on “VALENTINO” goods
are produced at Exhibit AA-36. Copies of advertisements and reports extracted from
local magazines such as the Style magazine of South China Morning Post from 2001
up to spring/summer 2005 are produced at Exhibit AA-37.
42.
In paragraphs 63 to 66 of the statutory declaration, Ms. Andrioli refers to
applications to register the suit mark (or variant marks) in Thailand, Italy and Taiwan
which are either successfully opposed by the opponent, or are withdrawn. Exhibits
AA-38 to AA-40 consist of copies of letters or decisions of successful oppositions
against these applications.
Andrioli’s supplementary statutory declaration
43.
By the supplementary statutory declaration, Ms. Andrioli produces
copies of advertisements placed in local publications in Hong Kong in relation to
goods bearing the opponent’s marks which fall within Class 18 and Class 25
respectively.
44.
Exhibits AA-1 to AA-12 are copies of advertisements placed in local
magazines including Oriental Sunday, Ming Pao Weekly and Cosmopolitan in respect
of the opponent’s leather goods such as wallets, key holder cases, bags and briefcases
which fall within Class 18. The advertisements cover various dates from 1991 to
1993 and in 1996.
45.
On Class 25 goods, Exhibits AA-14 to AA-23 are copies of
advertisements and articles in local magazines and newspapers including Femina,
Cosmopolitan, Ming Pao Weekly, Oriental Sunday, South China Morning Post, City
magazine, Eve Essentials, Sun News, Sing Tao Daily and Takungpao in respect of the
opponent’s clothing items. The materials cover various dates from 1982 to 1985,
1989 to 1997, and 1999 to 2005.
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Opponent’s evidence of use
46.
The opponent has filed voluminous evidence seeking to demonstrate the
reputation achieved by the “VALENTINO” mark and other related marks as well as
the use which has been made of these marks in respect of its goods before the relevant
date.
47.
There are copies of materials among the exhibits e.g. copies of
advertisements placed in fashion magazines or publications published outside Hong
Kong (Exhibits AA-21 to AA-25 to Andrioli’s first statutory declaration) which are
either undated or do not relate to the Hong Kong market. Even if I were to take that
some of these international publications were also circulated in Hong Kong, the extent
of circulation is not known. As such, I am not prepared to accept these exhibits as
supportive of the efforts of promotion of the opponent’s marks or goods in Hong
Kong. In any event, I observe that there are evidence relevant to the Hong Kong
market and can substantiate the efforts made in promoting the opponent’s marks or
goods in Hong Kong.
48.
Andrioli’s supplementary statutory declaration exhibits copies of
advertisements in Oriental Sunday and Ming Pao Weekly from 1991 to 1993 showing
the use of the
mark and
mark in respect of leather goods such as
wallets and key holder cases which are available for sale at the opponent’s collections
boutiques and other retail outlets in Hong Kong (Exhibits AA-1 to AA-9).
The
mark and “VALENTINO” mark are also used in advertisements of handbags
placed in Cosmopolitan in 1996 which are available for sale at retail outlets in Hong
Kong (Exhibits AA-11 and AA-12).
49.
I have referred to Exhibit AA-33 above which includes copies of extracts
from magazines published in the 1970s and 1980s. The extracts show men’s and
women’s clothing items of the “VALENTINO” brand with references to “Valentino”
or “華倫天奴” (the transliteration of “Valentino” in Chinese), or are advertised with
the
sign.
On some copies, there are references to the availability of the
clothing items at 詩韻公司 (the transliteration of “Swank company” in Chinese),
Joyce Boutique or The Valentino Boutiques in Hong Kong. The earliest issue bears
a reference to autumn/winter 1977, and the other issues show publication dates in the
early 1980s.
50.
Apart from Exhibits AA-33, AA35 to AA-37, Ms. Andrioli also produces
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copies of advertisements of clothing items available at The Valentino Boutiques in
Hong Kong back in 1982 to 1984 (Exhibit AA-14, Andrioli’s supplementary statutory
declaration). The advertisements show use of signs including
and
marks.
There are coverages in Cosmopolitan in 1985, 1989, 1992 to 1996 showing pictures
of clothing items and references to “Valentino” being the designer or the brand name.
There is also a feature article in the April 1994 issue of Cosmopolitan giving an
account of the career of Mr. Valentino and the expansion of business in mainland
China since 1993 (Exhibit AA-15, Andrioli’s supplementary statutory declaration).
51.
Some exhibits to Andrioli’s supplementary statutory declaration show
articles and pictures in Ming Pao Weekly in 1993 and 1997 of fashion shows referring
to “Valentino” as the designer or the brand name (Exhibit AA-16). Copies of other
pictures and references to the “VALENTINO” brand published in the South China
Morning Post and its magazine, the City Magazine, Eve’s Essential in the 1990s are
also produced (Exhibits AA-18, AA-19 and AA-20). Exhibits AA-21 to AA-23 are
copies of news clippings from local newspapers showing references to “Valentino” as
the designer or the brand name.
52.
Although the pictures and advertisements mostly show women’s clothing
items, there are exhibits which show advertisements of men’s clothing items and jeans
in Oriental Daily and City magazine in 1991 and 1992 (Exhibits AA-17 and AA-19,
Andrioli’s supplementary statutory declaration).
53.
Exhibit AA-19 to Andrioli’s first statutory declaration comprises
random selection of copies of sales invoices from 1980 to 2005 showing the supply
of goods to Hong Kong. The sales invoices cover goods ranging from wearing
apparel, accessories, bags to shoes. The “VALENTINO” mark is printed on almost
logo along with the
all sales invoices. Some invoices also show the use of the
“VALENTINO” mark.
54.
Upon examining the opponent’s statutory declarations and the exhibits
which are relevant to the Hong Kong market prior to the relevant date, I observe that
the marks of “VALENTINO”/“Valentino” (whether appearing on its own or together
with the
logo or in the form of composite marks such as
) have been
used and promoted in relation to leather goods and accessories. I have referred to
the evidence dealing with advertisements and promotion on these goods which dated
back to the early 1990s. It can also be discerned from some copies of the sales
invoices produced that goods such as belts and bags are among the goods offered for
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sale in the Hong Kong market.
55.
I also observe that the marks of “VALENTINO”/ “Valentino” (whether
appearing on its own, together with the
logo or in the form of composite marks
such as
) have been used in relation to clothing items and other goods.
I have
covered above the evidence of advertisements on clothing items going back to 1977,
and there is use of the transliteration of “華倫天奴” for “Valentino”. There are
numerous exhibits showing coverages in local newspapers and magazines featuring or
referring to Valentino the designer, or goods designed by or bearing the brand of
“Valentino”.
mark have
56.
In my view, the “VALENTINO” mark or brand and the
acquired remarkable reputation and enhanced distinctiveness in Hong Kong in respect
of the goods of the opponent. They have become widely recognized by the public in
Hong Kong and would be relied upon by consumers for distinguishing the goods of
the opponent from those of other undertakings.
Opposition under section 12(3) of the Ordinance
57.
Section 12(3) of the Ordinance provides as follows:
“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.”
58.
According to 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.
59.
Section 12(3) of the Ordinance is similar in effect to section 5(2) of the
UK Trade Marks Act 1994 which implements Article 4(1)(b) of the First Council
Directive 89/104 of 21 December 1988 of the Council of the European Communities.
In determining the issue under section 12(3), I take into account the guidance and
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principles provided by the European Court of Justice (ECJ) 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. The principles are set out
in Julius Sämann Ltd v Tetrosyl Ltd [2006] F.S.R. 42 at para. 51, which have been
adopted in the Hong Kong case of Guccio Gucci SpA v Gucci [2009] 5 HKLRD 28.
They are as follows:
(a)
The likelihood of confusion must be appreciated globally, taking account
of all the relevant factors.
(b)
The matter must be judged through the eyes of the average consumer of
the goods in issue, who is deemed to be reasonably well informed and
reasonably observant and circumspect.
(c)
In order to assess the degree of similarity between the marks concerned
the court must determine the degree of visual, aural or conceptual
similarity between them and, where appropriate, evaluate the importance
to be attached to those different elements taking into account the nature
of the goods in question and the circumstances in which they are
marketed.
(d)
The visual, aural and conceptual similarities of the marks must therefore
be assessed by reference to the overall impressions created by the marks
bearing in mind their distinctive and dominant components. The
perception of the marks in the mind of the average consumer plays a
decisive role in the overall appreciation of the likelihood of confusion.
(e)
The average consumer normally perceives a mark as a whole and does
not proceed to analyze its various details.
(f)
There is a greater likelihood of confusion where the earlier trademark
has a highly distinctive character, either per se or because of the use that
has been made of it.
(g)
The average consumer rarely has the chance to make direct comparisons
between marks and must instead rely upon the imperfect picture of them
he has kept in his mind; further the average consumer’s level of attention
is likely to vary according to the category of goods in question.
(h)
Appreciation of the likelihood of confusion depends upon the degree of
similarity between the goods. A lesser degree of similarity between the
marks may be offset by a greater degree of similarity between the goods,
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and vice versa.
(i)
Mere association, in the sense that the later mark brings the earlier mark
to mind, is not sufficient for the purpose of the assessment.
(j)
But the risk that the public might believe that the goods come from the
same or economically linked undertakings does constitute a likelihood of
confusion within the meaning of the section.
60.
Section 12(3) essentially prohibits the registration of a trade mark which
would be likely to cause confusion on the part of the public as a result of its being
similar to an earlier trade mark and because it is to be registered in respect of goods
the same as or similar to those the subject of the earlier trade mark. I must therefore
consider whether there are similarities between the suit mark and the opponent’s
marks and the goods covered, and whether they would combine to create a likelihood
of confusion.
61.
Particulars of 11 marks which are registered in Hong Kong and are relied
upon by the opponent are reproduced in the Appendix. These marks have dates of
application for registration earlier than that of the suit mark. According to section
5(1)(a) of the Ordinance, these marks are earlier trade marks in relation to the suit
mark.
Comparison of marks
62.
A comparison of the marks concerned has to be based on an overall
appreciation of the visual, aural and conceptual similarities of the marks in question,
taking into account the overall impressions given by the marks, and bearing in mind,
in particular, their distinctive and dominant components.
63.
In comparing the marks, I have to consider the perception of the marks
in the mind of the average consumer of the goods and services in question.
Registration of the suit mark is sought for the goods set out in paragraph 2 above.
The applied for goods in Class 18 cover a wide variety of goods ranging from leather
and imitation leather, goods such as bags made of leather or other materials, to
umbrellas and parasols. As to the applied for goods in Class 25, they cover clothing
items, footwear and headgear.
64.
Although the majority of the applied for goods are consumer
merchandise and the relevant consumers would be members of the general public in
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Hong Kong, some of the goods such as “trimmings of leather for furniture” and
“umbrella or parasol ribs” appear to target manufacturers and traders who look for
such goods for business purposes. As such, the average consumer would comprise
members of the general public as well as some manufacturers and traders in Hong
Kong who are deemed to be reasonably well informed and reasonably observant and
circumspect. Members of the general public are expected to exercise an average
level of care and attention in the selection of goods. As to the manufacturers and
traders, they can generally be expected to exercise a higher level of care and attention.
However, as the applied for goods relevant to them are not highly specialized or
expensive items, the level of care and attention of this group of consumers will not
differ much from that of members of the general public. In my view, the average
consumer is expected to exercise an average to slightly above average level of care
and attention in the selection of goods.
65.
Mr. Chau on behalf of the opponent submitted the following on
comparison of marks:(a) the suit mark comprises an eye-catching
logo placed at the centre of
the mark, and reproduces the opponent’s housemark “VALENTINO” in
its entirety;
(b) emphasis is placed on the
logo and the word “Valentino” by
adopting the
logo in the suit mark; the
logo and the word
“Valentino” would be viewed by the average consumers as the dominant
elements of the suit mark;
(c) the line dividing the
logo and the words “Emilio Valentino” has no
trade mark significance and should be ignored;
(d) the word “Emilio” is of much reduced significance; the word also
happens to be a word of 4 syllables as in “Garavani”;
(e) viewing the suit mark as a whole, the suit mark is visually and
conceptually similar to the opponent’s registered marks in particular the
,
,
and
marks all of which bear a prominent “V”
logo and incorporates the mark “Valentino” in full; the
and
marks have exactly the same structure as the suit mark, with two words
placed directly below a “V” logo;
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(f)
phonetically, the suit mark may be pronounced “V Emilio Valentino”,
“Emilio Valentino” or “Valentino” (given the emphasis on the
the suit mark which comprises “Valentino”).
logo in
66.
The applicant contends that there is a lack of visual, aural and conceptual
similarities between the suit mark and the opponent’s marks, and the suit mark is an
inherently distinctive trade mark resulting from the combination of the word elements
and the device (paragraphs 7 and 8, counter-statement).
67.
I would first look at the suit mark.
The suit mark consists of three
elements, namely the
logo, the words “Emilio Valentino” and a horizontal line in
between these two elements. The
logo displays the letter “V” in a stylized
manner. It occupies about three-fifths of the height of the suit mark and is
positioned at the centre above the horizontal line. The words “Emilio Valentino” are
written in plain font without stylisation. The first letters “E” and “V” of the words
“Emilio Valentino” are in capital letters which signify that this expression is a
personal name. The horizontal line is in my view indistinctive and does not have
any effect in terms of distinctiveness.
68.
The
logo, given its size and prominent position, is capable of
attracting the attention of the average consumer. The styled letter “V” representing
as
corresponds to the first letter “V” of the word “Valentino”, and the logo has
the effect of reinforcing or accentuating the significance of the word “Valentino” in
the suit mark.
69.
For the purpose of determining the ground of opposition based on
section 12(3) of the Ordinance, I would compare the suit mark with the opponent’s
,
and
marks viz. trade mark numbers 199404866,
1996B11046 and 300032624 respectively which bear the closest resemblance to the
suit mark having regard to the goods covered by these registrations (“the 3 opponent’s
marks”). If the opponent succeeds in opposing the subject application based on the 3
opponent’s marks, the finding would be sufficient to dispose of the present case and
there is no need for the opponent to rely on the other marks at the Appendix.
70.
I would proceed to compare the suit mark with each of these marks
visually, aurally and conceptually.
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(A) Comparison with the opponent’s
mark
Visual comparison
71.
Mr. Chau submitted that the
mark has the same structure as the
suit mark. I agree. Both the suit mark and the
mark are formed by the
combination of the respective “V” logos at the top and two words below. Although
the suit mark also contains a horizontal line between the
not consider the line has much significance.
logo and the words, I do
mark are written in
72.
Unlike the suit mark, the two words in the
the lower case. The word “Valentino” is placed after the word “Emilio” in the suit
mark, whilst the word “valentino” is the first word in the
mark.
I am also
mindful that the
logo bears a different design when compared with the
device in the
mark. However, I consider it unlikely that these would make
much difference to the visual impact, bearing in mind imperfect recollection and that
marks are not compared side by side. The “V” logos in both marks can be readily
recognized as representing the letter “V” and corresponds to the word “valentino” in
the marks. The logos have the effect of accentuating the impression conveyed by the
distinctive and dominant word “valentino” in both marks.
73.
Following from the above, I find the suit mark similar to the
mark visually.
Aural comparison
74.
Aurally, the suit mark would be pronounced “E-mi-li-o Va-len-ti-no”.
mark would be pronounced “va-len-ti-no ga-ra-va-ni”. As the “V” logos
The
in the respective marks are likely to be recognized as representing the letter “V”, the
pronunciations can also be “V E-mi-li-o Va-len-ti-no” and “V va-len-ti-no
ga-ra-va-ni”.
I find the marks moderately similar aurally.
Conceptual comparison
75.
The respective “V” logos in the suit mark and the
mark
correspond to and accentuate the element of “Valentino” in the marks. For the suit
mark, “Emilio” is not an English word but the word is likely to be perceived by an
average consumer as the name of an individual. The words “valentino garavani” in
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the
mark would also be perceived by an average consumer as the name of an
individual. As such, the meanings conveyed by the marks are both marks
constituted by a “V” logo and personal names bearing the word “Valentino”. I find
the marks very similar conceptually.
76.
Having compared the suit mark and the
mark, I consider the
overall impression perceived by the average consumer would be that of marks formed
by a “V” logo above a personal name consisting of the word “Valentino”. I find the
two marks similar.
(B) Comparison with the opponent’s
mark
Visual comparison
77.
The
mark bears the
logo of the opponent and the words
“VALENTINO COUTURE” written in capital letters and in plain font. The logo
appears on the top of the mark. The words “VALENTINO” and “COUTURE” are
not placed on the same level. As such, the case used for the words “VALENTINO
COUTURE” and the manner in which they appear in the mark are different from the
word elements of the suit mark. That said, I consider it unlikely that these would
make a great difference to the visual impact, bearing in mind imperfect recollection
and that marks are not compared side by side. In my view, the
mark would still
convey the visual impact of a mark formed by a “V” logo above two words at the
bottom. The “V” logos in both marks accentuate the impression conveyed by the
distinctive and dominant word “valentino” in both marks.
78.
The word “COUTURE” means “high-fashion designing and
dressmaking” or the clothes themselves (Collins English Dictionary). The word is
thus indistinctive in relation to clothing items.
79.
the
Following from the above, I consider the suit mark moderately similar to
mark visually.
Aural comparison
80.
Aurally, the
mark would be pronounced “VA-LEN-TI-NO” or
“VA-LEN-TI-NO COU-TURE” (the word “COUTURE” being indistinctive may not
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be included in pronunciation). If the “V” logo would also be pronounced, the
respective pronunciations would be “V E-mi-li-o Va-len-ti-no”, and “V
VA-LEN-TI-NO” or “V VA-LEN-TI-NO COU-TURE”.
I find the marks
moderately similar aurally.
Conceptual comparison
81.
The suit mark conveys the idea of a mark constituted by a “V” logo and
the personal name of “Emilio Valentino”. The
mark conveys the idea of a
mark constituted by a “V” logo plus the name, brand or mark of “VALENTINO”.
Like the
mark, the presence of the “V” logo accentuates the significance of
“Valentino” in the suit mark.
conceptually.
I consider the suit mark and
mark similar
82.
Having compared the suit mark and the
mark, I consider the
overall impression perceived by the average consumer would be that of marks formed
by a “V” logo above two words one of which is “Valentino”. I find the two marks
moderately similar.
mark
(C) Comparison with the opponent’s
Visual comparison
mark is a word mark written in capital
83.
Visually, the
letters and in plain font. The words “VALENTINO GARAVANI” together take up
about two-thirds of the length of the whole mark. In my view, the words
“VALENTINO GARAVANI” are likely to dominate the visual impact and attract the
attention of the average consumer. The words “R.E.D.”, with the commas after each
of the words “R”, “E” and “D”, stand for some abbreviations. I do not consider the
average consumer would pay as much attention to the words “R.E.D.” as in the case
of “VALENTINO GARAVANI”.
84.
Having regard to the presence of the same word “Valentino” in the suit
mark and the
mark but the difference in presentation and the
presence of other elements in the two marks which are not visually similar, I consider
the suit mark similar to the
mark to a low degree visually.
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Aural comparison
85.
Aurally, the
mark would be pronounced “R-E-D
VA-LEN-TI-NO GA-RA-VA-NI” or “RED VA-LEN-TI-NO GA-RA-VA-NI”.
Having regard to the presence of the same word “Valentino” in the suit mark and the
mark but the presence of other elements in both marks which are
pronounced differently, I find the marks similar to a low degree aurally.
Conceptual comparison
86.
The words “Emilio Valentino” in the suit mark and “VALENTINO
GARAVANI” in the
both convey the idea of personal names
consisting of the word “Valentino”. In the case of the suit mark, there is the
inclusion of the
logo which accentuates the significance of the word “Valentino”.
I find the marks similar conceptually.
87.
I consider that the average consumer would perceive the suit mark as a
composite mark constituted by three elements, whilst the
mark is
a word mark. Both marks consists of personal names especially the same word
“Valentino”, but the presentation of the marks overall is not similar. The two marks
are in my view similar to a low degree.
Comparison of goods
88.
The goods for which the suit mark is sought to register are goods under
Classes 18 and 25.
I would compare the applied for goods with those registered
under the 3 opponent’s marks examined above.
89.
Goods can be considered as identical when the goods designated by the
trade mark application are included in a more general category designated by the
earlier mark, or vice versa. (Meric v Office for Harmonization in the Internal Market
(Trade Marks and Designs) (OHIM) (Case T-133/05); Bowerbank’s Application [2008]
ETMR 31)
90.
In assessing the similarity of the goods concerned, all the relevant factors
relating to those goods themselves should be taken into account. Those factors
include, inter alia, their nature, their end users, their method of use and whether they
are in competition with each other or are complementary. (British Sugar v James
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Robertson and Sons Ltd [1996] R.P.C. 281; Canon Kabushiki Kaisha v
Metro-Goldwyn-Mayer Inc. [1999] R.P.C. 117)
91.
I would compare the applied for goods and the goods in Class 18
covered by the opponent’s registrations of the
mark (registration number
199404866) and the
mark (registration number 300032624). I
find that the applicant’s applied for goods shown in the left column below are covered
by and fall within the broad terms of the opponent’s goods of the two registrations
shown in the right column.
Applicant’s applied for goods
in Class 18
Opponent’s goods
registered in Class 18
skins (cattle-); skin (goldbeaters'-); gold
beaters' skin; cattle skins; curried skins;
pelts; animal skins; leather, unworked
or semi-worked; butts [parts of kides2];
skins of chamois, other than for
cleaning purposes; chamois leather;
other than for cleaning purposes;
Goods covered by the
registrations
leather
&
Goods
the
covered
by
registration
animal skins, hides
leatherboard; imitation leather; leather Goods covered by the
registrations
(imitation-);
imitations of leather
&
trimmings of leather for furniture; Goods covered by the
&
registrations
straps (leather-); tool bags of leather
[empty]; boxes of leather or leather goods made of [leather and imitations of
board; bands of leather; valves of leather] and not included in other classes
leather; leather shoulder belts; boxer of
leather (hat-); leather thongs; leather
leads; leather thread; cases, of leather
or leatherboard; leather leashes; leather
straps; coverings (furniture-) of leather;
leather twist; chin straps, of leather;
laces (leather-); leatheroid box;
coverings of skins (furs); key cases
[leatherware]; belts (leather shoulder-);
pouches, of leather, for packaging; bags
[envelopes, pouches] of leather, for
packaging; envelops, of leather, for
packaging; springs (casings, of leather,
for plate-); casings, of leather, for
springs;
2
The meaning of the word “kides” cannot be found from dictionaries. I take that to be the mis-spelt
form of “hides”.
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bags (net-) for shopping; beach bags; Goods covered by the
&
card cases [notecases]; music cases;
registrations
bags (game-) [hunting accessory];
straps for skates; boxes of vulcanised goods made of [leather and imitations of
fibre; purses; pocket wallets; soldier's leather] and not included in other classes
equipment (straps for-); handbags;
frames (handbag-); handles (suitcase-);
school satchels; wallets (pocket-);
satchels (school-); school bags;
suitcases; suitcase handles; varsity
cases [not fitted]; sling bags for
carrying infants; backpacks; skates
(straps for-); wheeled shopping bags;
haversacks; canvas box; chain mesh
purses, not of precious metal; purses,
not of precious metal; briefcases;
attache cases; 3
travelling bags; valises; bags (garment-) Goods
covered
by
for travel; travelling trunks; travelling
registration
sets [leatherware]; garment bags for
travel; bags for climbers; bags for Trunks and travelling bags
campers; trunks [luggage];4
the
straps of leather [saddlery];
Goods
covered
by
registration
harness and saddlery
the
parasols; umbrellas;
Goods
the
covered
by
registration
umbrellas, parasols
92.
The remaining applied for goods of “umbrella sticks; umbrella handles;
umbrella rings; covers (umbrella-); umbrella or parasol ribs; frames for umbrellas or
parasols” in Class 18 are parts of umbrellas . These goods are intended for use as
components of umbrellas or parasols and they can be available at the same trade
channels of umbrellas or parasols. The users who look for umbrellas or parasols
may also look for these components as replacement parts of umbrellas. As such, I
find that “umbrella sticks; umbrella handles; umbrella rings; covers (umbrella-);
umbrella or parasol ribs; frames for umbrellas or parasols” are similar to “umbrellas,
3
The goods here are not specified to be but can be made of “leather” or “imitations of leather”. As
such, they are covered by “goods made of leather and imitations of leather” and hence identical goods.
Even if any of such goods are not made of these materials, they would still be similar goods, for reason
of the same methods of use, nature, users, trade channels, and that such goods are in competition with
the corresponding goods which are made of leather or imitations of leather.
4
For the goods here not specified to be but can be made of “leather” or “imitations of leather”, they
are either identical or similar to “goods made of leather and imitations of leather” of the
&
registrations, for the reason stated in footnote 3.
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parasols” under the
93.
registration referred to above.
As to the applied for goods in Class 25, I would compare them with
those goods in Class 25 covered by the opponent’s
mark (registration number
mark (registration number 300032624). I find
1996B11046) and
that the applicant’s applied for goods shown in the left column below are covered by
and fall within the broad terms of the opponent’s goods of the two registrations shown
in the right column.
Applicant’s applied for goods
in Class 25
Opponent’s goods
registered in Class 25
bath robes; bathing drawers; belts Goods covered by the
[clothing]; breeches [for wear];
registrations
clothing; coats; top coats; garters;
girdles; gloves [clothing]; dressing Clothing
gowns; gymnastics [clothing]; jackets
[clothing]; jerseys [clothing]; jumpers
[shirt fronts]; knitwear [clothing];
clothing of leather; clothing of
imitations of leather; liveries; mittens;
neckties; overalls; overcoats; pants;
pelisses; pullovers; pyjamas; shirts;
singlets;
skirts;
smocks;
sock
suspenders; sports jerseys; stuff jackets
[clothing];
suits;
bathing
suits;
suspenders;
sweat-absorbent
underclothing [underwear]; sweaters;
swimsuits; tee-shirts; togas; trouser
straps;
trousers;
underclothing;
anti-sweat underclothing; underpants;
underwear; anti-sweat underwear;
uniforms;
vests;
waistcoats;
waterproofing clothing.
&
bath sandals; bath slippers; footwear; Goods
galoshes; gymnastic shoes; hosiery;
sandals; shoes; slippers; socks; soles for footwear
footwear; boots for sports; sports shoes;
stockings; 5
covered
by
registration
the
bathing caps; top hats;
covered
by
registration
the
Goods
headgear
5
“Footwear” encompasses anything that covers the foot, including socks. As footwear such as socks
can also be considered as “clothing”, it would, to that extent, overlaps with clothing.
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Likelihood of confusion
94.
The likelihood of confusion must be appreciated globally, taking account
of all relevant factors all of which have a degree of interdependency. The matter
must be judged through the eyes of the average consumer of the goods and services
who is deemed to be reasonably well informed and reasonably observant and
circumspect. A lesser degree of similarity between the marks may be offset by a
greater degree of similarity between the goods and services and vice versa.
95.
As stated above, there is a greater likelihood of confusion where the
earlier trademark has a highly distinctive character, either per se or because of the use
that has been made of it.
96.
The 3 opponent’s marks are not descriptive of the opponent’s goods
concerned and the marks are distinctive per se.
97.
I have examined above the evidence filed by the opponent on the use and
promotion of the opponent’s marks and goods in Hong Kong. The opponent’s
evidence also substantiates the publicity attracted by the name and brand of
“Valentino” in Hong Kong. I have in paragraph 56 above concluded that the
“VALENTINO” mark or brand and the
mark have acquired remarkable
reputation and enhanced distinctiveness in Hong Kong in respect of the goods of the
opponent.
98.
Mr. Chau submitted that the remarkable reputation acquired by the
opponent’s marks would increase the likelihood of confusion. He also referred me to
the judgment of Deputy High Court Judge Horace Wong S.C. in the Guccio Gucci
case (supra) in relation to the allegation made by the plaintiff in that case that the use
of the defendant’s “COSIMO GUCCI” mark and the expression “designed by
COSIMO GUCCI” in the course of trade or business infringed the plaintiff’s
registered mark “GUCCI” under section 18(3) of the Ordinance.6
99.
The relevant passages read as follows:
6
An action for infringement under section 18(3) requires determination, inter alia, of whether the use
of the alleged infringing marks in relation to the goods concerned is likely to cause confusion on the
part of the public.
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“92. The fact that the “GUCCI” mark is not descriptive of the nature
or function of particular goods enables its distinctiveness to be applied
to a broad range of products of very different nature. The mark is
capable of being applied not only to goods which it is originally
associated with, but also to completely new products and products of
new design. So strong is the mark of “GUCCI” that when the same is
used in a new product, or a product with a wholly new design, customers
will naturally assume that the new product or new design to which the
mark is applied originates from Gucci. Such an “extension” of the
branding effect may take place both horizontally and
vertically—horizontally when the mark is applied to other products of a
different nature from those to which the mark originally applies, or
vertically when the mark is applied to another line of goods of the same
nature but intended to appeal to a different market, for example, a
younger line, or a second male or female line. On the evidence before
me, such vertical extension is quite common with famous brands—some
examples are “RL by RALPH LAUREN”, “POLO by RALPH LAUREN”,
“SEE by CHLOE” and “MARC by MARC JACOBS”.
93. That use of a well-known and highly distinctive mark may lead
customers to assume that a new product or a new design originates from
the same owner or proprietor of the mark, does not cease to apply
merely because another word or name also appears in the new product
or the new design. The significance of the other word or name depends
on the circumstances. Where the other word or name is otherwise
unknown as a mark of origin, customers will naturally associate the
same with the mark that is well known to them, and will be led to believe
that the other name or word is used merely to indicate that the product
belongs to a secondary or extension line of the same brand. On the
other hand, where the other name or word is itself famous or highly
distinctive, customers may assume that the product is related both to that
name and the mark—as in the cases of co-branding. …
94. This brings me to the marks “COSIMO GUCCI” and “designed by
COSIMO GUCCI”. I have held that when an average customer sees
these marks, the word “Cosimo” will not be unnoticed and to someone
who understands English, it will be seen as part of a name. However,
this does not mean that “Cosimo” has as much distinctive character as
the word “Gucci” in the marks concerned. Indeed, as I pointed out
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above, “Cosimo Gucci” as a name is unknown in Hong Kong. What is
well-known in Hong Kong is the name “Gucci”. When the word
“Cosimo” is used together with “Gucci” in a word sign on goods
(particularly on goods of the types which are also marketed by the
plaintiff), to an average customer who sees such a word sign, the
dominant element of the sign is clearly the word “Gucci”. In my view,
it is likely that the average customer seeing such a sign would come
away thinking that the goods are related to Gucci. When “Cosimo” is
unknown and “Gucci” is so widely known, the overall impression of the
average customer is likely to be dominated by the leading element of the
mark, namely, “Gucci”. Visually, aurally and conceptually, “Gucci” is
the dominant element of the sign.
95. When the words “COSIMO GUCCI” are used, either alone or
following the words “designed by”, it is likely that the public would take
the goods on which the words are used as goods originating from
Gucci. …”
100.
Mr. Chau submitted that, given the prominence and strong reputation of
the element of “Valentino” (viewed against the relatively unknown “Emilio” element
in the suit mark), the average customer upon seeing the suit mark would think that the
goods supplied under the mark are related to “Valentino”, which is the dominant
element of the suit mark visually, aurally and conceptually.
101.
Although the applicant claims that the suit mark has been used on the
applicant’s goods in Hong Kong, the applicant has not filed any evidence in support
of such position. There is no evidence from the applicant to demonstrate that the suit
mark has gathered any recognition by the consumers in Hong Kong as the trade mark
or brand of the applicant’s applied for goods.
102.
I have in the section “Comparison of marks” above considered the
similarities and differences between the suit mark and each of the 3 opponent’s marks
examined above. I have found similarities between the suit mark and each of these
marks which arise as a result of the presence of the element of “Valentino” in these
marks, and the presence of the respective “V” logos in the case of the
marks.
and
103.
The word “Emilio” in the suit mark, albeit conveying the idea that it is
part of a personal name, is unknown to the consumers in Hong Kong. There is also
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no evidence to show that the
logo is known to the consumers in Hong Kong.
marks have acquired remarkable
On the contrary, the “VALENTINO” and the
reputation in Hong Kong in respect of the goods of the opponent.
104.
I have found in paragraphs 91 to 93 above that the applied for goods are
either identical or similar to the goods respectively registered under the 3 opponent’s
marks and compared above.
105.
As “Emilio” or “Emilio Valentino” is unknown whilst “VALENTINO”
or “Valentino” is so widely known to the public, the overall impression of the average
customer is likely to be dominated by the element of “Valentino”. Applying the
reasoning in the Guccio Gucci case to the present case, the consumers in Hong Kong
are expected to associate “Emilio Valentino” with the “VALENTINO” mark that is
well known to them, and will be led to believe that the word “Emilio” is used merely
to indicate that the goods concerned belongs to a secondary or extension line of the
“VALENTINO” brand. The
logo, which corresponds to the first letter “V” of
“Valentino” in the suit mark, would not reduce the association with the opponent’s
“VALENTINO” mark or brand.
106.
I come to the view that when the suit mark is used in relation to the
goods applied for, there is the risk that the public might believe that the goods
provided under the suit mark and those provided under the 3 opponent’s marks come
from the same or economically-linked undertakings, and such risk constitutes a
likelihood of confusion within the meaning of section 12(3).
107.
The ground of opposition under section 12(3) of the Ordinance is
therefore made out.
Other grounds of opposition
108.
As I have found in favour of the opponent on the ground under section
12(3) of the Ordinance, it is not necessary for me to consider the other grounds based
on sections 11(5)(b), 12(4) and 12(5)(a) of the Ordinance.
Costs
109.
As the opposition has succeeded, I award the opponent costs. Subject
to any representations as to the amount of costs or calling for special treatment, which
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either party 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 Count (Cap. 4A) as applied to trade mark matters, unless
otherwise agreed between the parties.
(Miss Joyce Poon)
for Registrar of Trade Marks
7 June 2013
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Appendix
Trade Mark No.
1959B0853
1993B05009
1994B01363AA
Date of
Registration
6 May 1959
Class
Goods/Services
25
shirts
27 December
1989
25
clothing, footwear, headgear
13 January 1986
18 and 25
Class 18
purses, handbags, wallets
Class 25
outer clothing for men and women
199402105
23 February
1989
25
clothing for women
199404866
13 September
1991
18
leather and imitations of leather and goods
made of these materials and not included in
other classes
1996B11046
1 October 1992
25
clothing
2003B11999
26 June 2000
25
umbrellas
2003B12000
26 June 2000
25
articles of clothing, but not including gloves
and footwear; all included in Class 25
2003B12001
26 June 2000
35
advertising; business management; business
administration; retail services in the fields of
bleaching preparations and other substances
for laundry use, cleaning, polishing, scouring
and abrasive preparations; soaps; perfumery,
essential oils, cosmetics, hair lotions;
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29
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dentifrices;
electric,
photographic,
cinematographic, optical and 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, data
processing equipment and computers,
fire-extinguishing apparatus, 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;
umbrellas; articles of clothing, excluding
gloves and footwear; all included in Class 35
300029303
6 June 2003
3, 9, 14 and
25
Class 3
soaps, perfumery, essential oils, cosmetics,
hair lotions, dentifrices
Class 9
scientific, nautical, surveying, photographic,
cinematographic,
optical,
weighing,
measuring,
signalling,
checking
(supervision), life-saving and teaching
apparatus and instruments; apparatus and
instruments for recording, switching,
transforming, accumulating, regulating or
controlling
electricity;
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, data
processing equipment and computers;
fire-extinguishing
apparatus;
computer
operating recorded programs
Class 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
Class 25
clothing, excluding footwear, belts and
gloves
-
30
-
300032624
16 June 2003
18 and 25
Class 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
Class 25
clothing, footwear, headgear
-
31
-