TRADE MARKS ORDINANCE (Cap. 559) OPPOSITION to TRADE MARK APPLICATION NO. 300130139AB MARK: CLASSES: 41 APPLICANT: CHINA PGA

TRADE MARKS ORDINANCE (Cap. 559) OPPOSITION TO TRADE MARK APPLICATION NO. 300130139AB

MARK:

CLASSES: 41

APPLICANT: CHINA PGA TOUR LIMITED

OPPONENT: PGA TOUR, INC. and THE PROFESSIONAL GOLFERS’ ASSOCIATION OF AMERICA

STATEMENT OF REASONS FOR DECISION

Background

1. On 19 December 2003, China PGA Tour Limited (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”).

Registration is sought in respect of the following services in Class 41:-

Class 41 provisions of golfing facilities; organising and conducting golf tournaments and competitions; golf instruction and training; publication of magazines and printed matter; golf handicapping services; provision of information relating to golf; operating golf clubs; distribution of televised golf events; entertainment and education services relating to the playing of golf; golf tuition; exhibitions, conferences, seminars and workshops, all relating to golf; production of television and video programs; rental and hire of sports equipment; the production and distribution of radio and

1 television broadcasts of golf games, golf events and programs in the field of golf; conducting and arranging golf clinics and coaches clinics and golf events; special events and parties; fan club services; provision of miniature putting golf course; information and consultancy services relating to golf; professional advisory and consultancy services relating to golf; all included in Class 41.

2. Particulars of the subject application were published on 7 October 2005. On 3 January 2006, PGA TOUR, Inc. and The Professional Golfers’ Association of America, which hereinafter shall be referred to together as the opponents and individually as the first opponent and second opponent respectively, filed a notice of opposition with the grounds of opposition (“Grounds of Opposition”) attached.

3. The opposition hearing took place before me on October 12 and 13, 2011. Ms. Winnie Tam S.C. and Mr. Gary Lam of Counsel, instructed by Tanner De Witt, Solicitors, represented the applicant. Mr. Colin Shipp of Counsel, instructed by Wilkinson & Grist, Solicitors, represented the opponents.

Grounds of Opposition

4. In the Grounds of Opposition, the opponents oppose registration of the subject mark under sections 3, 11(1)(a), 11(1)(b), 11(4)(b), 11(5)(a), 11(5)(b), 12(3), 12(4) and 12(5)(a) of the Ordinance. Annex A to Annex D of the Grounds of Opposition list out the trade marks relied upon by the opponents in launching the oppositions against the subject application.

Counter Statement

5. The applicant filed a Counter Statement on 6 March 2006, denying all the grounds of opposition.

2 The opponent’s evidence

6. The opponent’s evidence comprises a statutory declaration of Karen M. Stein dated 12 September 2006 (“Stein’s statutory declaration”) and a statutory declaration of Christopher M. Hanes dated 25 June 2008 (“Hanes’ statutory declaration”).

7. Ms. Stein is the Vice President and Assistant General Counsel of PGA Tour, Inc. (i.e., the first opponent) which she had been associated with since 1997. She made Stein’s statutory declaration from her own personal knowledge and from the first opponent’s documents and records to which she had access. She has been duly authorized by the first opponent as well as the second opponent to make the statutory declaration in these proceedings.

8. According to Ms. Stein, The Professional Golfers’ Association of America (i.e., the second opponent), a corporation organized and existing under the laws of Florida having its registered address at 100 Avenue of the Champions, Palm Beach Gardens, Florida 33410, United States of America, was founded in 1916 and is the largest working sports organization in the world with more than 28,000 members. PGA Tour, Inc. was initially affiliated with the second opponent until 1968 when the tournament players, a small subset of the total The Professional Golfers’ Association of America membership, broke away to form the Tournament Players Division, which was later renamed the PGA Tour, Inc. in 1975; since then the two organizations, which have become separate entities and constitute the first opponent and the second opponent in the present proceedings, have worked closely together, and most professional golfers maintain dual membership in the two organizations. The second opponent is now primarily a representative body for club and teaching professionals, as the elite tournaments are now run by the first opponent. Exhibit “KMS-1” to Stein’s statutory declaration contains printouts from the first opponent’s official website and the second opponent’s official website which detail and explain the relationship between the first opponent and the second opponent.

9. Whilst legally speaking, the first opponent and the second opponent are separate legal entities and holding different rights and interests – as pointed out by their own assertion, the elite tournaments are now run by the first opponent – the

3 opponents have not, in their pleadings and evidence, made much distinction between themselves as regards the respective trade mark applications and registrations they hold across the world, and the marks they actually use to identify themselves. Given their very close relationship, their confirmation that they are jointly opposing the subject application, and the fact that the grounds of opposition are common to them1, I would in the following discussions, for convenience, similarly adopt the same approach as the opponents did and not to make much a difference between the first opponent and the second opponent, but would refer to them collectively, unless the context requires otherwise. My understanding is that that would not involve any matters of significance that should affect the outcomes of these proceedings.

10. It is claimed that the opponents “have been using trade marks incorporating "PGA" and/or "PGA" with "TOUR" and/or with "CHAMPIONSHIP" and/or "TOURNAMENT PLAYERS CLUB" and/or "TPC" and/or featuring the words "Tour Championship" and/or the words "Players Championship" and/or incorporating a device of a golfer and/or featuring a device of a trophy and/or featuring the words "The President’s Cup" for, inter alia, entertainment services in the nature of conducting golf tournaments and the production of televised golf events around the world and have obtained registrations for their marks worldwide including Hong Kong”. Exhibit “KMS-2” to Stein’s statutory declaration contains copies of registration certificates (including a publication notice) of some of the trade marks referred to in Annex A of the Grounds of Opposition and copies of printout from the online databases of various worldwide websites detailing some trade mark registrations or applications for registration held by the opponents in Hong Kong, the U.S., the U.K., the European Community, Australia, New Zealand, Singapore and Canada; Exhibit “KMS-3” contains copies of printout from the search system of the Hong Kong Trade Marks Registry showing records of 15 active trade mark registrations in classes 8, 25, 28 and 41 in the name of the opponents as identified in the table set out at paragraph 8 of the Grounds of Opposition.

11. Ms. Stein alleges that given the enormous popularity of the opponents’ services, the use of the opponents’ marks have extended to goods falling in classes 6, 9, 14, 16, 18, 21, 24, 25, 27 and 28. In the United States, the opponents first began

1 The confirmation as contained in paragraph 4 of Stein’s statutory declaration. 4 to use their marks on goods falling in class 9 in 1988, in class 14 in 1996, in class 16 in 1989, in class 18 in 1982, in class 24 in 1996, in class 25 in 1980 and in class 28 in 1982. It is claimed that the opponents have throughout the years extensively and continuously advertised and promoted its products and services under their trade marks through advertisements on their websites, televisions, billboards, magazines and other publications which have substantial circulation worldwide including Hong Kong. It is alleged that the total value of television promotional spots – aired on the following US networks: ABC, CBS, ESPN, NBC, The Golf Channel, TNT and USA – run annually throughout the years for the first opponent and various business lines equals approximately US Dollars 60 million, and the value of the television promotional spots promoting the World Golf Championship events total more than US Dollars 11 million.

12. Figures of the total worldwide advertising and promotional expenditure of the first opponent are given in Ms. Stein’s statutory declaration, approximated to US Dollars 34 million for the years 1998 to 2003 and 29 million for the years 2001 to 2005. Annual total revenue from the provision of the opponents’ services and sales of products bearing the opponents’ trade marks, starting from US Dollars 303 million in 1999, followed a generally upward trend to reach US Dollars 522 million in 2005.

13. Ms. Stein alleges that through the substantial sales, extensive and continuous advertising and promotion of services and products bearing the opponents’ trade marks, the high standard of quality and special care with regards to the goods and services marketed under the opponents’ marks, and the numerous registrations referred to in Annex A of the Grounds of Opposition, the opponents’ trade marks have acquired substantial reputation both on a worldwide basis and in Hong Kong and they have become distinctive of and identified with the opponents and no others.

14. The rest of Stein’s statutory declaration contains comments and response to the Counter Statement filed by the applicant. I do not propose to summarize them but would refer to the relevant parts as and when appropriate.

15. The other exhibits attached to Stein’s statutory declaration are listed and described below:-

5 Exhibit Description

KMS-4 Copies of Hong Kong broadcast information and schedules for 2000 through to 2005

KMS-5 Copies of printouts from the first opponent’s website http://www.pgatour.com/ and the second opponent’s website http://www.pga.com/home/ as well as http://www.tpc.com/ all accessible worldwide

KMS-6 Copies of the opponents’ International License Report as of 17th March 2006 as well as copies of printouts from the first opponent’s website http://www.pgatour.com/info/company/licensees listing the first opponent’s official retail and consumer marketing licensees and international licensees

KMS-7(a) Copies of promotional materials for 2002, 2003, 2004, 2005 and 2006 Official PGA TOUR Media Guide

KMS-7(b) Copies of promotional materials for the Official Annual 2003 and 2005 PGA TOUR

KMS-7(c) Copies of promotional materials for the Official Annual 2005 Champions Tour

KMS-7(d) Copies of promotional materials for TOUR 2004 UP CLOSE

KMS-7(e) Copies of promotional materials for TOUR 2005 UP CLOSE

KMS-7(f) Copies of promotional materials for PARTNERS Official Magazine Nov/Dec 2004

6 KMS-7(g) Copies of promotional materials for PARTNERS official Magazine Jan/Feb 2005

KMS-7(h) Copies of promotional materials for PARTNERS Official Magazine Sept/Oct 2005

KMS-7(i) Copies of promotional materials for Sample Tournament Program (Sony Open 2005 and Shell Houston Open 2006)

KMS-7(j) Copies of promotional materials for Forbes 2005 Golf Programs

KMS-7(k) Copies of promotional materials for Forbes 2006 Golf Programs

KMS-8 Copies of relevant pages of the annual reports of PGA Tour, Inc. covering the years 2000 to 2005

KMS-9 Printouts from http://www.pga.info/ the home page of the U.K. Professional Golfers’ Association

KMS-10 Printouts from Wikipedia, the free encyclopedia, showing that the second opponent runs the PGA Championship and the Senior PGA Championship and co-organizes the Ryder Cup with the PGA European Tour

KMS-11 Printouts from other encyclopedias that reference the opponents and the operation of their tournaments

KMS-12 Printouts of the particulars of Hong Kong registration nos. 2000B16383 and 2003B08094 for “ASIAN PGA TOUR” in class 25 and 41

KMS-13 Printout from http://www.worldgolfchampionships.com/news/asian_pga.html

7 and http://www.asianpga.com/service.php?id=1, the latter being the home page of the Asian Professional Golfers’ Association

KMS-14 Copies from the opponents’ 2005 Official Media Guide and the online printout from http://www.worldgolfchampionships.com/info/overview and http://www.worldgolfchampionships.com/info/international which list the members of the International Federation of PGA Tours and provide details of the organizations

KMS-15 Printout of the tournaments/tour schedules from the websites of various members of the International Federation of PGA Tours showing use of “PGA” with “TOUR” or “Championship”

16. Hanes’ statutory declaration was filed as evidence in reply to the applicant’s evidence which, as to be discussed below, consists of statutory declarations made by Lau Siu Sang. As Hanes’ statutory declaration contains largely comments on the applicant’s evidence and Mr. Hanes’ own observation and submissions, I do not propose to summarize them here but would refer to the relevant parts as and when appropriate.

The applicant’s evidence

17. The applicant’s evidence originally comprises a statutory declaration of Lau Siu Sang dated 22 September 2007 (“Lau’s first statutory declaration”). It’s not stated in Lau’s first statutory declaration whether Mr. Lau holds any position in or has any connection with the applicant, it merely states that Mr. Lau manages “Golf Express”, a weekly magazine published by and distributed weekly alongside Sing Pao Daily. Mr. Lau states that the matters referred to in his first statutory declaration are within his personal knowledge based on his experience and participation in the local

8 golfing circles as an active golfer, publisher of a golfing magazine, golf columnist and contributing writer for major local and international golf magazines.

18. About one and a half month before the hearing, the applicant through its agent sought leave to file a second statutory declaration of Lau Siu Sang dated 23 August 2011 (“Lau’s second statutory declaration”). The opponent initially objected to the granting of the leave, but after further negotiation between the parties, it was agreed that if a condition is made that the applicant would only rely on paragraphs 1 to 4 of Lau’s second statutory declaration, the opponent would not object to the granting of such a leave. The Registrar have accordingly by his letter dated 15 September 2011 made a provisional order granting such a leave, and the opponent has not requested a hearing on the matter. Paragraphs 1 to 4 of Lau’s second statutory declaration deal with the matter I refer to in the preceding paragraph, namely, whether Lau Siu Sang had been authorized by the applicant to make the first statutory declaration. By paragraph 4 of the second statutory declaration, Mr. Lau makes it clear that the first statutory declaration was duly authorized by the applicant and was made on behalf of the applicant in connection with the present proceedings.

19. In gist, Lau’s first statutory declaration gives nothing more than an overview account of the development and establishment of the sport of golf in Hong Kong, portraying it as a sport that is meant for the financially well off, educated professionals, business executives, entrepreneurs, etc., and beyond the financial means of average consumers. I do not propose to summarize them here but would refer to the relevant parts as and when appropriate.

20. The exhibits attached to Lau’s first statutory declaration are listed and described as follows:-

Exhibit Description

LSS-1 Copies of printout from The Jockey Club Kau Sai Chau Public Golf Course website showing fee schedule for the North and South Course and booking and handicap requirements

9 LSS-2 Copies of printout from The Hong Kong Golf Club website about private courses that are open to the Hong Kong public

LSS-3 Copy printout from the official UBS Hong Kong Open website being the event fact sheet for the year’s upcoming tournament (2007)

LSS-4 Copies of printout from the Ladies Asian Golf Tour website giving the tournament information

LSS-5 The schedules of The Golf Channel, Golf Tour Channel, Star Sports and PGA Tour channels

LSS-6 Copies of printout from several Hong Kong golf club websites

Decision

21. Although the opponents had pleaded in the Grounds of Opposition a number of grounds which it would rely on to launch the present proceedings, namely, those under sections 3, 11(1)(a), 11(1)(b), 11(4)(b), 11(5)(a), 11(5)(b), 12(3), 12(4) and 12(5)(a) of the Ordinance, at the hearing, Mr. Colin Shipp, counsel for the opponents, made it clear that the opponents would only pursue grounds of opposition based on sections 11(5)(b), 12(3) and 12(5)(a) of the Ordinance. I would therefore treat the opposition based on the other pleaded grounds as no longer being pursued by the opponents.

22. Mr. Shipp said in his skeleton submission that the ground of opposition based on section 11(5)(b) is the primary ground relied on by the opponent, and this is the ground he first addressed me on, I would therefore deal with this ground first.

23. 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., 19 December 2003 (“the relevant date”).

10 Section 11(5)(b) of the Ordinance

24. Section 11(5)(b) of the Ordinance provides that a trade mark shall not be registered if the application for registration of the trade mark is made in bad faith. The term “bad faith” is not defined in the Ordinance.

25. Although in the Grounds of Opposition, section 11(5)(b) is pleaded as one of the legal bases for launching the present opposition, no specific reasons or single fact had been distinguished or separated from the general accusation of confusing similarity between the subject mark and the opponents’ marks to justify why the application for registration of the subject mark should be construed to have been made in bad faith. In other words, there is no particularization of the bad faith claim in the pleadings, and it’s not disputed that there is no specific evidence of bad faith contained in Stein’s statutory declaration which was filed by the opponent as evidence in support of the opposition. The only place where purportedly evidence of bad faith may be found is in Hanes’ statutory declaration. But Hanes’ statutory declaration, as pointed out by Ms. Winnie Tam, counsel for the applicant, was filed within the ambit of Rule 20 and should only be taken strictly as evidence in reply to the applicant’s evidence. Given that the opponent has not in the proper place, namely, under its Rule 18 evidence, produced anything to support a claim of bad faith, there is legally speaking no need to deal with a bad faith claim in the applicant’s evidence. Ms. Tam is therefore right in submitting that those parts in Hanes’ statutory declaration which purport to deal with bad faith are outside the scope of being evidence in reply, and as such should not have been filed in the first place, and even though they have already been filed, they should not be given any evidential weight; this is more so as the applicant would be deprived of any opportunity to make a reply to what is said in Hanes’ statutory declaration.

26. Mr. Shipp tried to persuade me to look at this issue in a different way. What I perceive to be Mr. Shipp’s argument is this: the applicant has put in a bare denial of bad faith in the Counter-Statement, but at paragraph 14(f) of the Counter-Statement, it was alleged that the subject mark was devised to exclusively identify the geographically separate nature of professional golf and golf tournaments conducted in China and the culturally distinct nature of professional golfing services provided by a Chinese golfing association; the fact that the applicant had not filed any

11 evidence to verify or substantiate the aforesaid denial and assertive statement, coupled with the information in Hanes’ statutory declaration which is alleged to be capable of showing that the business of the applicant company was conducted in a shadowy manner without legitimate reason, means that a positive case of bad faith (in the words of Mr. Shipp) could be inferred. The following cases are relied upon by Mr. Shipp to support his argument: Kundry SA’s Application [1998] ETMR 178; TRAVELPRO Trade Mark [1997] RPC 864.

27. It has long been established that an allegation of bad faith should not be lightly made unless it can be fully and properly pleaded, and should not be upheld unless it is distinctively proved and this will rarely be possible by a process of inference (ROYAL ENFIELD Trade Marks [2002] R.P.C. 24 at para. 31; also see Cipriani SRL v Cipriani (Grosvenor Street) Ltd [2009] R.P.C. 9 at para. 177). What Mr. Shipp urged me to do in the present case, as discussed above, is quite the opposite. In essence, Mr. Shipp invited me to draw inference of bad faith from the applicant’s alleged lack of pleadings and evidence to deny bad faith. With respect, this seems to me to be putting the cart before the horse, considering the fact that the opponent has done nothing in its own pleadings and evidence to even identify a valid issue of bad faith. I am unaware that there is such a practice and if there were to be, it would be wrong. In my view, the two cited cases, if anything, just confirm that bad faith is a serious allegation that must be proved – the bad faith claims there were particularized to an extent not in the least matched in the present case, and unlike what the present applicant has done, the parties found to have fallen foul of bad faith in the two cited cases had not spent any effort in taking part in the proceedings, had not even cared to file a counter statement to deny the claims.

28. As regards Hanes’ statutory declaration, if Mr. Shipp’s position that the applicant has not provided any evidence to substantiate its denial and the assertive statement at paragraph 14(f) of the Counter-Statement is right, the logical conclusion should be that there would not warrant any evidence in reply. Insofar as any parts of Hanes’ statutory declaration were purported to be used as evidence in support of bad faith, I agree with Ms. Tam that they are not evidence in reply and should not be given any evidential weight.

12 29. Summing up from the above, I do not see that a case of bad faith has been made out. The ground of opposition under section 11(5)(b) must necessarily fail.

Section 12(5)(a) of the Ordinance

30. Section 12(5)(a) concerns the protection of “an unregistered trade mark or other sign used in the course of trade or business” by virtue of the law of passing off vis-à-vis the mark in question.

31. A helpful summary of the elements of an action for passing off can be found in Halsbury’s Laws of Hong Kong Vol. 15(2) at paragraph 225.001. The guidance takes account of speeches in the House of Lords in Reckitt & Colman Products Ltd v Borden Inc [1990] R.P.C. 3412 and Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] A.C. 731, and is as follows :

“The House of Lords has restated the necessary elements which a plaintiff has to establish in an action for passing off:

(1) the plaintiff’s goods or services have acquired a goodwill or reputation in the market and are known by some distinguishing feature;

(2) there is a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the plaintiff; and

(3) the plaintiff has suffered or is likely to suffer damage by reason of the erroneous belief engendered by the defendant’s misrepresentation.

The restatement of the elements of passing off in the form of this classical trinity has been preferred as providing greater assistance in analysis and decision than the formulation of the elements of the action previously expressed by the House of Lords. However, like the previous statement of the House of Lords, this latest statement should not be treated as akin to a statutory definition or as if the words used by the House of Lords constitute an exhaustive, literal definition of ‘passing off’, and in particular should not be used to exclude from the ambit of the tort

2 This has also applied in local cases, e.g. Ping An Securities Ltd v 中國平安保險 (集團) 股份有限公司, FACV 26/2008 (12 May 2009). 13 recognized forms of the action for passing off which were not under consideration on the facts before the House of Lords.”

32. The question I have to ask is whether normal and fair use of the designation “China PGA Tour” (i.e., the subject mark) in Hong Kong for the purpose of distinguishing the goods and services of interest to the applicant from those of other undertakings was liable to be prevented at the date of application for registration by an action for passing off protecting the registered or unregistered marks of the opponents’ (see the decision of Geoffrey Hobbs QC, sitting as the Appointed Person, in the case of WILD CHILD Trade Mark [1998] R.P.C. 455). To answer that question, I must first ascertain what mark or marks the opponents rely upon, or certain distinguishing feature of those marks, have acquired a goodwill or reputation in the market.

33. I have summed up the opponent’s evidence at paragraphs 6 to 15 above. It is claimed that the opponents have been using trade marks incorporating wide combinations of any of the following elements: "PGA", "TOUR", "CHAMPIONSHIP", "TOURNAMENT PLAYERS CLUB", "TPC", "Tour Championship", "Players Championship", a device of a golfer, a device of a trophy, and "The President’s Cup" for, inter alia, entertainment services in the nature of conducting golf tournaments and the production of televised golf events around the world; and those trade marks have obtained registrations in various classes throughout the world including Hong Kong. Examination of the materials in the various exhibits attached to Stein’s statutory declaration, in particular the various promotional materials at exhibit KMS-7, reveals that whilst the opponents have in many places across the world registered a great variety of trade marks that are made up of one or more of the aforesaid elements, the opponents had mainly used the mere words “PGA TOUR” and a composite mark (the “PGA TOUR Logo”) which comprises the words PGA and TOUR and a device of a golfer figure to identify themselves as the golfers’ leading organization and organizer of the main men's professional golf tours in the United States as well as the rightful holders of all things in connection therewith, including all sorts of title sponsorship, official marketing partnership, licensing, retail licensing and production of entertainment contents. The extract below from a promotional material exhibited at KMS-7 shows that the PGA TOUR Logo was placed alongside the mere word mark PGA TOUR:-

34. The mere word mark PGA TOUR and the PGA TOUR Logo are collectively hereinafter referred to as the “PGA TOUR marks”. As regards the popularity of these marks, judging from the evidence filed, I have no doubt that at least in the United States, they enjoy substantial goodwill and reputation in relation to their use in conducting golf tournaments in the US and in the production, sale and distribution of televised golf events for broadcasting in various regions across the world. Stein’s statutory declaration alleges that the “PGA TOUR” mark was first used in commerce as early as January 1980, and the first telecast of a “PGA TOUR” event was aired in Hong Kong in November 1998. Exhibit KMS-4 contains Hong Kong broadcast information and schedules, the earliest one of which is from the year 2000.

35. Stein’s statutory declaration further alleges that “[g]iven the enormous popularity of the opponents’ services, the use of the opponents’ marks have extended to goods falling in International Class 6, 9, 14, 16, 18, 21, 24, 25, 27 and 28.”3 Copies of the opponents’ International License Report, exhibited at KMS-6, which lists out the first opponent’s official retail and consumer marketing licensees and international licensees, suggest that the opponents’ marks had been used, through licensing to third parties, in the marketing of or on golf products such as golf clothing, golf clubs, and other outdoor apparel. However, it appears that none of those listed licensees were based in Hong Kong.

36. As mentioned in paragraphs 10 to 13 above, the total worldwide advertising and promotional expenditure, as well as the revenue generated, of the opponents’ products and services under the opponents’ marks, are very substantial. However, all these have not been broken down specifically into different territories, nor into the different kinds of products and services of the opponents’. On the evidence, I could only assume that the majority of them were spent in the United States. For places outside the US, as it cannot be ascertained what goods and services of the opponents

3 Paragraph 10 of Stein’s statutory declaration. 15 actually featured in those places other than the showing of televised golf events, it could only be anyone's guess how popular or known the opponents’ signs/marks are.

37. Insofar as Hong Kong is concerned, the picture is not a bit clearer. First, there is no assertion suggesting that there were any merchandised goods of the opponents being offered or sold to the people in Hong Kong from whatever sources. Secondly, as pointed out above, none of the first opponent’s official retail and consumer marketing licensees and international licensees (as exhibited at KMS-6) were based or located in Hong Kong. Thirdly, although some advertisements in the promotional materials for the Official Annual (in exhibit KMS-7) have the PGA TOUR Logo appeared to signify that the goods or services concerned were officially licensed or approved by or in connection with the opponents’ PGA TOUR events, apparently the average consumers would have no difficulty saying that the trade marks that appear alongside the PGA TOUR Logo, but not the PGA TOUR Logo itself, are the trade marks for the goods and services concerned. The PGA TOUR Logo is expressly used for the aforesaid signification effect and just so far. In any event, it has not been suggested that these advertisements had been circulated to or targeted at Hong Kong people.

38. Given the evidence as discussed, the only sure point of contact between the opponents’ signs/marks and the local people was in the televised golf events which were shown on television networks that were commercially available to local people through subscriptions. There is no evidence showing concretely how and what signs/marks of the opponents’ were actually used in the televised programs, however, given that the copies of Hong Kong broadcast information and schedules for 2000 through to 2005 exhibited in KMS-4 all feature “PGA TOUR”, coupled with my above observation that the opponents had mainly used the PGA TOUR marks to identify themselves, I can reasonably infer that the PGA TOUR marks are the marks that featured in those televised programs.

39. Summing up from the above, there is no evidence to establish a goodwill or reputation attached to any merchandised goods in the mind of the purchasing public in Hong Kong by association with the PGA TOUR marks under which the opponents may supply or offer to the public, such that the PGA TOUR marks are recognized by the public as distinctive specifically of the opponents’ goods.

16 40. As regards the use of the PGA TOUR marks in the televised golf events, I accept that that could generate reputation among viewers of the televised events. As shown by the materials exhibited in KMS-4, television networks such as CNBC Asia, ESPN Star Sports SE Asia, NOW BBTV, had, before the relevant date, programs featuring PGA Tour events shown to viewers across the world which included Hong Kong as one of the so called “exclusive territories”, with a viewing population in Hong Kong, measured in terms of “station reach”, amounting to something in the region of 420,000 to 450,000 for the years 2000 to 2002 in the case of ESPN Star Sports SE Asia. But the aforesaid, as pointed out by Ms. Tam, is not and cannot be an indication of the number of people (or households) who had actually viewed the programs. Even assuming that, in some way, local reputation had been generated in relation to the PGA TOUR marks because of their presence in the televised golf events, it is difficult to see how that reputation could be extended further beyond the limited circle of local subscribers of television networks such as CNBC Asia, ESPN Star Sports over the years.

41. On the evidence before me, I am only prepared to accept that at the date of the application for registration of the subject mark, the opponents might have acquired a certain reputation and goodwill in connection with the showing of televised golf events to viewers in Hong Kong.

42. Given such limited reputation and goodwill, I should, nonetheless, go on to consider whether use of the subject mark would amount to a misrepresentation, so as to give rise to the likelihood of confusion among members of the public.

43. Guidance on this is given in Halsbury’s Laws of Hong Kong Vol 15(2) at paragraph 225.020:

“To establish a likelihood of deception or confusion in an action for passing off where there has been no direct misrepresentation generally requires the presence of two factual elements:

(1) that a name, mark or other distinctive feature used by the plaintiff has acquired a reputation among a relevant class of persons; and

(2) that members of that class will mistakenly infer from the defendant’s use of a name, mark or other feature which is the same or sufficiently similar that the

17 defendant’s goods or business are from the same source or are connected.

While it is helpful to think of these two factual elements as two successive hurdles which the plaintiff must surmount, consideration of these two aspects cannot be completely separated from each other, as whether deception or confusion is likely is ultimately a single question of fact.

In arriving at the conclusion of fact as to whether deception or confusion is likely, the court will have regard to:

(a) the nature and extent of the reputation relied upon;

(b) the closeness or otherwise of the respective fields of activity in which the plaintiff and the defendant carry on business;

(d) the manner in which the defendant makes use of the name, mark etc complained of and collateral factors; and

(e) the manner in which the particular trade is carried on, the class of persons who it is alleged is likely to be deceived and all other surrounding circumstances.

In assessing whether confusion or deception is likely, the court attaches importance to the question whether the defendant can be shown to have acted with a fraudulent intent, although a fraudulent intent is not a necessary part of the cause of action.”

44. Question may be asked here who the relevant consumer is for the purpose of passing off. As the expert or professional golfer, such as representative of association of professional golfers, is going to know his or her own trade, I consider that the consumer concerned, in relation to whether there would be passing off, should be taken to be the average, recreational golfer who would like to play golf or take part in a golf competition, and who likes to watch golf related shows available on television in Hong Kong. If the passing off claim cannot succeed in relation to this consumer, I cannot see how it can succeed in relation to the expert or professional consumer. After all, confusion must be ascertained from the viewpoint of the average consumer:

“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, para.23, Lloyd Schuhfabrik Meyer, para.25, and the order

18 in Case C-3/03 P Matratzen Concord v OHIM, para.29).” (L'Oreal SA v OHIM, Case C-235-05 at [41])

45. The subject mark here is a mere word mark consisting of the following words in this order: China PGA Tour. “PGA Tour” is the only common element shared between the subject mark and the PGA TOUR marks, the latter I have found to have a certain reputation or goodwill established by televised golf events shown to viewers in Hong Kong. As the above quoted guidance shows, passing off is not just about similarities between signs and goods, it is about whether the public would be deceived, so what has to be taken into account, inter alia, is the knowledge of the public and the perception of the public as regards “PGA Tour”, which is the distinctive and dominant element of the PGA TOUR marks.

46. In this respect, the applicant has filed its evidence, which comprises in the main Lau’s first statutory declaration. Lau’s first statutory declaration, as I have mentioned under paragraphs 17 to 20 above, tends to show that golf has always been a sport that is meant for the financially well off, educated professionals, business executives, entrepreneurs, etc., and beyond the financial means of average consumers. Mr. Lau points out that there are numerous golf related shows being shown on television in Hong Kong, with 3 “golf” channels being made available to Hong Kong viewers, namely, (1) Golf Tour Channel which shows LPGA Tour and European Tour tournaments and other golfing events, (2) Golf Channel showing the Omega China Tour tournaments and other golf instructional programs, and (3) PGA Tours which shows USPGA related tournaments and PGA Tour produced programs. It is also said that the Star Sports Channel showed televised professional tournaments from the Asian Tour, European Tour, the China Tour, LPGA Tour, Ladies Asian Golf Tour and PGA Tour, as did the Golf Tour Channel.4

47. Mr. Lau goes on to give his view that due to the many golf related programs available on the dedicated golf and other sports channels, Hong Kong golfers are exposed to golf tournaments from various professional golf tours featuring professional players from various regional PGAs5, and believes that these programs

4 Paragraphs 17, 18, 19 and 20 of Lau’s first statutory declaration, and exhibit LSS-5 which contains the schedules of The Golf Channel, Golf Tour Channel, Star Sports and PGA Tour channels. 5 Mr. Lau in his statutory declarations did not specify what “PGA” and “PGAs” stand for, or what he understands they stand for. In the context it’s reasonable to assume that he’s using them to refer to professional golfers’ association(s). 19 allow Hong Kong golfers to know that there are many PGAs and professional tours in different regions of the golfing world and that different PGAs sanction different tournaments. He lists out some teaching professionals in Hong Kong who are members of various regional PGAs, including Hong Kong PGA, British PGA, Australia PGA, etc., and exhibits as “LSS-6” relevant pages from several Hong Kong golf club websites showing teaching professionals who are members of various regional PGAs and players or former players of various regional professional tours, and the membership list of the Hong Kong PGA from its official website. Mr. Lau concludes that based on his personal knowledge and experience, he seriously doubts that a typical Hong Kong golfer will assume “PGA” or “TOUR” to be connected with any specific professional golfing association or professional tour.

48. Hanes’ statutory declaration was filed as evidence in reply to Lau’s first statutory declaration. Hanes’ response to the above comments or assertions of Mr. Lau was only that Mr. Lau has not provided any evidence to show that Hong Kong golfers (whether professional or amateur or viewers/attendees of golf tours and tournaments or viewers of televised golf events) would know all these, hence the comments or assertions of Mr. Lau are purely speculative and without merit.6

49. I do not think Mr. Lau’s comments or assertions are purely speculative and without merit. Basing on the alleged background information in relation to the sport of golf, which I see no reason to doubt and would accept, Mr. Lau is entitled to give his views as discussed. It is true that there was no direct evidence of public perception, for example by way of survey evidence, but that is not uncommon in passing off cases, and in any event a number of authorities make it clear that great care needs to be taken with survey evidence obtained from members of the public in passing off actions: see e.g. Scott Ltd v NicePak Products Ltd [1989] F.S.R. 100; and per Geoffrey Hobbs Q.C. (sitting as a deputy judge of the Chancery Division) in Whirlpool Corp v Kenwood Ltd [2009] R.P.C. 2 at [35]. In a case like the present one, where the sport involved is of a kind which is not normally meant for the general public but for the financially well off, educated professionals, business executives, entrepreneurs, evidence of persons accustomed to and knowledgeable in that sport and all the establishments and institutions in connection therewith is essential for

6 Paragraph 14(c) and (d) of Hanes’ statutory declaration. 20 assessment as to the likelihood of deception or confusion. A presiding hearing officer like me who is totally unfamiliar with that sport must nonetheless use common sense in assessing the credibility and probative value of that evidence.

50. There is no doubt, in my mind, that PGA is used as an acronym for any professional golfers’ associations across the world, and does not necessarily refer only to that association of the opponents in the United States of America. The opponents use it both as a generic term and as an identifier of themselves (whether alone or in conjunction with other words and device), as do the various regional PGAs mentioned by Mr. Lau in his statutory declaration, though the latter tend to further identify themselves, in addition, by reference to their own nationalities: hence there are Hong Kong PGA, British PGA, Australia PGA, etc.

51. The opponents do admit that they are not the first professional golfers’ association in the world, and point out that the Professional Golfers’ Association Limited of the U.K., founded in 1901, is probably the oldest organization for professional golfers. They also accept, in Hanes’ statutory declaration, that they do not have a monopoly over golf tours and tournaments or televised golf services in Hong Kong.7 But they allege that they are probably the largest professional golfers’ association in the world, and their objection to the subject application is use by the applicant of marks which have the combination “PGA” and “TOUR”. Be that as it may, the more important point here is that, as Mr. Lau points out in his statutory declaration, the relevant public in Hong Kong have long been educated in distinguishing between various PGAs, often by the national reference in the name or mark that incorporated “PGA” and/or “TOUR”.

52. Looking at all the evidence in the round, I think it cannot be seriously contested that the sport of golf in Hong Kong is an expensive sport meant for the financially well off, educated professionals, business executives, entrepreneurs, etc., that there are golf related programs available on television channels featuring various golf tours and tournaments (not only the opponents’), and Hong Kong golfers are exposed to golf tournaments from various professional golf tours featuring

7 Hanes’ statutory declaration, paragraph 14(b), as responses to allegations contained in paragraphs 12, 13 and 15 of Lau’s first statutory declaration which discuss the professionally sanctioned golf tournaments held in and televised from Hong Kong. 21 professional players from various regional PGAs, and there are many teaching professionals for golf in Hong Kong who are members of various regional PGAs.

53. I should say here that as far as the PGA TOUR marks are concerned, I need only to concern myself with the word mark “PGA TOUR” here and consider it in relation to “China PGA Tour” which is the subject mark, for if “PGA TOUR” cannot succeed against the subject mark, I cannot see how the PGA TOUR Logo can.

54. Mr. Shipp at one point has used the following paragraph from Kerly (Kerly on Trademarks and Tradenames from Sweet and Maxwell, 4th edition) to argue that it is not a bar to a passing off action that reputation or goodwill in connection with a sign, say PGA TOUR in the present case, may be shared by more than one entity:

“The claimant in a passing off action need not show that the badge the defendant has taken denotes his goods or business exclusively if the defendant has no right to use it at all: it is enough for him to show that he is one of a definite and ascertainable class of those who are entitled to use it and who consequently suffers damage from its misuse. But if the badge is independently properly used by others than himself, the difficulty of showing that its use by the defendant is calculated to injure his goodwill may be greatly increased. It is accordingly desirable, where the right to use a badge is shared, that as many as practicable of those entitled to use it should join in an action to protect it.” (para 15-78)[footnotes omitted]

55. Ms. Tam’s reply to that is that the above paragraph from Kerly concerns the question of reputation or goodwill where partnership or joint ventures are involved, but what is of relevance or significance here is the question of misrepresentation, which is summarised by the following passages of The Law of Passing-Off: Unfair Competition by Misrepresentation by Wadlow, 4th edition:

“Para 8-024

It often happens that one and the same sign, or two closely similar, may be in use by more than one business. On the traditional understanding of the tort, it was necessary for the claimant to prove that the sign relied on was distinctive of him alone in whatever might be defined as his field of business. The modern definition of the law is based on misrepresentation. If the sign is used by the claimant alone, then the likelihood is that it is distinctive of him and adoption of it by a competitor raises a prima facie case of passing-off. If this is not the case,

22 then one must look beyond the sign itself at all the relevant circumstances to see if the defendant is making a misrepresentation that his goods or business are those of the claimant. If so, it need not matter that the claimant’s case may rely to some extent on a sign which is not unique to him….

Para 8-025

If two unconnected businesses in competition with one another already use the same sign on a substantial scale then that sign, on its own, can hardly be distinctive of either of them. This may be illustrated by the judgment of Parker J. in Hopton Wood v Gething {(1910) 27 R.P.C. 605 (Parker J.)} where the fact that three unconnected businesses had once used Hopton indicated that it could not have had trade mark significance. The situation was not affected by the fact that one of the three had gone out of business and the other two had merged. In such circumstances, a newcomer may adopt the same sign without being guilty of passing-off. There must be more than coincidental and uncoordinated use of the same sign to give rise to a case of joint ownership. If the sign is in use by more than two competitors then the case can be no stronger, but the crucial difference is between a sign which is unique in its field and one which is not.” [footnotes omitted]

56. I think Ms. Tam must be right that the real context of the question here is misrepresentation, and the real point is that whether the sign in question is unique in its field to be distinctive of a particular undertaking. Given the discussions so far, I am of the view that at the relevant date, the average consumer would be able to distinguish a host of PGAs, and would not be misled into thinking that the subject mark containing clearly the national identity of the applicant should have come from or represents the opponents. I therefore do not find that there is any misrepresentation involved. Nevertheless, for completeness, I just go on to consider the issue of deception or confusion.

57. It does not make any difference whether it’s in the subject mark or in the opponents’ word mark “PGA TOUR”, the word TOUR would be perceived to simply refer to a series of professional tournaments or competitions8, hence the focus is all on PGA which, as discussed above, would be known to those average consumers

8 For example, the online Cambridge Advanced Learner's Dictionary has “tour” defined as “a planned visit to several places in a country or area made for a special purpose, such as by a politician, sports team or group of performers”; the online Collins English Dictionary has it defined as “an overseas trip made by a cricket or rugby team, etc, to play in several places”. 23 interested in golf to refer to professional golfers’ association. It follows that, even though PGA and TOUR, if used together, might have generated, as I have found above, certain reputation and goodwill for the opponents in connection with the showing of televised golf events to viewers in Hong Kong, given that the public in Hong Kong have long been educated in distinguishing between various PGAs, often by the national reference in the name or mark, even putting aside the detailed comparison of the marks at issue as I would carry out below at paragraphs 74 to 85, I think it is fanciful to postulate that the public, if encounters the subject mark, namely, China PGA Tour in relation to golf products as well as golfing events, they would associate it with the opponents, or believe that the goods are in some way connected with the opponents. Consequently, there would not be deception or confusion and so the claim in relation to passing-off must fail.

58. I hold that the ground of opposition under section 12(5)(a) fails.

Section 12(3) of the Ordinance

59. 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.”

60. 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.

61. 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

24 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.

62. 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.

63. The relevant date is the date the subject application was filed, viz., 19 December 2003.

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, Annex A to Annex D of the Grounds of Opposition list out the trade marks relied upon by the opponents in launching the oppositions against the subject application. There are numerous of them and it is just impracticable to set them all out here, suffice to say that Mr. Shipp has helpfully worked that out and confirmed that insofar as marks registered in Hong Kong are

25 concerned, only the followings are relied upon by the opponents in relation to the present case:-

Registration Trade Mark Class Specification & Disclaimer No.

2001B02062 41 entertainment services relating to golf, conducting professional golf tournaments, operating golf clubs, distribution (other than transportation) of television programmes relating to golf; all included in Class 41.

(Registration of this Trade Mark shall give no right to the exclusive use of a device of a golfer.)

300222029 41 entertainment services, namely conducting professional golf tournaments and the production of televised golf events; all included in Class 41.

2004B06737 41 entertainment services in the nature of conducting golf tournaments; all included in Class 41.

26 (Registration of this Trade Mark shall give no right to the exclusive use of the word “CHAMPIONSHIP" and a device of a golfer.)

66. I just note that the trade mark under registration number 2001B02062 is, in essence, the PGA TOUR Logo as I have discussed and reproduced under paragraph 33 above. For the discussions below, I will just refer to these marks as the PGA TOUR Logo. I also note that this PGA TOUR Logo also appears as the distinctive and dominant element of the trade marks under registration numbers 300222029 and 2004B06737. For the discussions that follow below in relation to the comparison of the marks at issue, I would therefore mention only the PGA TOUR Logo, as obviously PGA TOUR Logo is more close to the subject mark than the marks under registration numbers 300222029 and 2004B06737 are, so if PGA TOUR Logo cannot succeed against the subject mark, there is no chance that the other marks can.

67. I should also record that other than the abovementioned registered marks in Hong Kong, the opponents also wish to rely upon certain unregistered marks, which include the mere word mark “PGA TOUR”, to launch opposition against the subject mark under section 12(3) of the Ordinance. The opponents are entitled to do so because the term “earlier trade mark” as defined in section 5 includes, inter alia, a trade mark which, at the date of the application for registration of the other trade mark or, where appropriate, at the date of the priority claimed in respect of that application for registration, was entitled to protection under the Paris Convention as a well-known trade mark. Section 4 of the Ordinance defines what a well-known trade mark would be. I do not propose to go into the details of well-known trade marks, suffice to say that on evidence, as I have discussed above, I could only find that at the date of the application for registration of the subject mark, the opponents might have acquired a certain reputation and goodwill in connection with the showing of televised golf events to viewers in Hong Kong which featured the PGA TOUR Logo and the word mark “PGA TOUR”. Without further evidence of “PGA TOUR” being well known in Hong Kong, I do not find that “PGA TOUR” qualified as a well-known trade mark, and hence an earlier trade mark, for the purposes of launching an opposition under

27 section 12(3). The same can be said of the other unregistered marks the opponents wish to rely upon. I mention in passing that “PGA TOUR” as an unregistered mark has just been considered above as the subject matter of opposition under section 12(5)(a), but that opposition, as I have so hold, has failed.

The average consumer

68. 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.

69. In that regard, it should be noted that the services at issue vary widely in nature and price, and which may be available for a large public of both professionals and non-professionals. Consequently, while it is possible that a consumer may pay more attention to the choice of mark when he requires a specific service at a significant price, such an approach on the part of the consumer cannot be presumed in relation to all of the services in the sector at issue, with the result that it falls to the proponent of any claim that consumer may pay more attention to the choice of mark to support such a claim with facts or evidence (see, to that effect, judgment in New Look Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) [2005] E.T.M.R. 35 at [43]; cited with approval in Nike International Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), Deichmann SE [2012] E.T.M.R. 8).

70. Nonetheless, it is obvious that the services in the specification of the subject application (hereinafter referred to as the “objectionable services”) can all be said to relate to the sport of golf or golfing events, as do all those services covered by the

28 opponents’ marks. As such I just repeat my discussion at paragraph 44 above and come to the view that the relevant public should be considered to be the average, recreational golfer who would like to play golf or take part in a golf competition, and likes to watch golf related shows available on television in Hong Kong. This consumer should be considered as paying an increased level of attention due to the technically specific nature of the services at issue and the fact that they have to pay for the televised golf events (as they are available only on subscription).

Comparison of services

71. 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.”

72. The comparison of the services must concern the description of the services covered by the marks at issue and not the services for which the trade marks are actually used. In this connection, as the objectionable services and the services covered by the registration of the opponents can all be described as related to the sport of golf or golfing events, I am of the view that the goods and services covered by the marks at issue were identical or similar.

Comparison of marks

73. 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

29 of goods or services in question and the circumstances in which they are marketed (see Lloyd Schuhfabrik Meyer v Klijsen Handel, paragraph 27).

74. 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).

75. 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 opponents’ marks

76. The earlier trade marks that are relied upon by the opponents in the present proceedings, as discussed at paragraphs 65 and 66 above, are the PGA TOUR Logo and composite marks having the PGA TOUR Logo as the distinctive and dominant element. I have already indicated that I will put aside those composite marks and focus on the PGA TOUR Logo for the purpose of comparison of marks here.

77. At paragraphs 45 to 57 above, I have already discussed the respective distinctive character of the word TOUR and the three-letter term PGA in relation to

30 goods and services related to the sport of golf or golfing events. In gist, both of them do not have strong distinctive character.

78. As to the device of a golfer, I think it is beyond dispute that it is descriptive of golf or golfing events. Such a view is borne out by the fact that registrations of the PGA TOUR Logo are subject to a disclaimer of the golfer device.

79. Hence each of the elements in the PGA TOUR Logo does not have strong distinctive character to stand on its own to identify the opponents’ goods and services. For the discussions immediately following, it should be borne in mind, however, that in any event, the possibly weak distinctive character of an element of a complex mark does not necessarily imply that that element cannot constitute a dominant element since—because, in particular, of its position in the sign or its size—it may make an impression on consumers and be remembered by them (Inex SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Wiseman—Representation of a cowhide) (T-153/03) [2006] E.C.R. II-1677 at [32]; see also, to that effect, Avex Inc v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Ahlers (a)) (T-115/02) [2004] E.C.R. II-2907 at [20]).

80. Summing up from the above, both the word TOUR and the three-letter term PGA are not strong distinctive elements, but it can be argued that they are the more distinctive and dominant components than the golfer device. Having said that, the golfer device, given its relative position and size, is not to be overlooked in assessing the overall distinctiveness of the PGA TOUR Logo.

Distinctive and dominant components of the subject mark

81. The subject mark here is a mere word mark consisting of the following words in this order: China PGA Tour. It follows from the discussion above that neither of TOUR and PGA has strong distinctive character in relation to the objectionable services. On the other hand, the word China has the effect of giving geographical indication, and is not very distinctive either. I consider that none of the words in the subject mark is able to dominate the subject mark, and none of them can be overlooked.

31 Visual similarity

82. Visually speaking, taking each of the marks as a whole, the similarity resulting from their common elements, namely, PGA and TOUR, is strongly mitigated by the presence of the different elements in the respective marks that as discussed above cannot be overlooked, and the way these elements are arranged within each mark. PGA and TOUR, even coming together in the subject mark, are merely part and parcel of the whole expression China PGA Tour. The PGA Tour Logo, on the other hand, is a composite mark having a golfer device not to be overlooked, and PGA and Tour appear separately and independently of each other. Thus the overall effect is that there is a very low degree of visual similarity between the PGA TOUR Logo and the subject mark.

Aural similarity

83. Aurally, the subject mark would be called China PGA Tour. As to the PGA TOUR Logo, although the word TOUR is in a more prominent position than PGA and being much larger in size, nonetheless I think people would call it PGA TOUR by reading first from the top. China PGA Tour is a three-word mark beginning with China, whereas PGA TOUR Logo has only two words. The degree of aural similarity between them is low.

Conceptual similarity

84. Conceptually speaking, although given the descriptive nature of each component involved, both marks can be said to allude to a sport event, the perceptions of the two marks are quite different. The only common elements, namely, PGA and TOUR, do not have an independent existence in the subject mark apart from the whole expression China PGA Tour. The subject mark is a mere word mark to be remembered by all its constituent elements, beginning with the geographical indication China. So one would perceive the subject mark to be concerned with a sport event that takes place in or otherwise connected with China, whether or not he or she recognize PGA as denoting a professional golfers’ association. The PGA TOUR Logo, on the other hand, with the golfer device, clearly alludes to the playing

32 of golf, but without any geographic indication of the golf event. The overall effect is that there is a low degree of conceptual similarity between the marks.

Distinctiveness of the PGA TOUR Logo

85. 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).

86. 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).

87. As I have analysed above, I do not find there is any components in the PGA TOUR Logo that can be considered possessing strong distinctive character. As far as the inherent distinctive character of the PGA TOUR Logo as a whole is concerned, I do not find it to be a strong distinctive mark.

88. As to the question whether the distinctiveness of the mark is enhanced because of the opponents’ use of it, I have discussed above and found that the opponents might have acquired a certain reputation and goodwill in connection with the showing of televised golf events to viewers in Hong Kong in which the PGA

33 TOUR Logo featured. I am prepared to accept that the distinctive character of the mark has been enhanced no more than that extent.

Likelihood of confusion

89. The global assessment that I am required to undertake implies some interdependence between the relevant factors. Thus, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa.

90. In the present case, having found that the parties’ goods and services are identical or similar insofar as the objectionable services in the specification of the subject application are concerned, I find that visually, aurally and conceptually the marks are not similar. Against these is my finding that the PGA TOUR Logo is of weak inherent distinctive character but has acquired a limited enhanced degree of distinctive character through use in televised golf programmes.

91. 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). I do not find the present one to be such a case. As obvious from the discussions so far, none of the components in any of the marks has strong distinctive character, some could be said to be even of weak distinctive character.

92. How a tribunal like ours should approach the global assessment under such circumstances had been explored in the case Digipos Store Solutions Group Ltd v. Digi International Inc [2008] R.P.C. 24. The English Chancery Court in that decision has the following observation:-

“….A weak mark is, in practice, likely to have a reduced scope because there is a lesser likelihood that other marks will be confused with it, if all that the respective marks have in common is the descriptive element. That, in turn, is because, as a matter of fact, the common element would not be thought by the average consumer to signal that the goods in relation to which the respective marks are used come from the same trade source, not

34 because of any special approach under section 5(2)(b) to marks composed of descriptive elements: Reed Executive [2004] RPC 767 and L'Oréal SA v OHIM (Case C-235/05P) 27 April 2006.” (paragraph [42])

93. Going back to the present case, I have already come to the conclusion that the marks at issue can be readily distinguished at the visual, aural and conceptual levels. As said in Reed Executive [2004] RPC 767, “Where you have something largely descriptive the average consumer will recognise that to be so, expect others to use similar descriptive marks and thus be alert for detail which would differentiate one provider from another.”

94. In the context of assessing passing off, I have already examined the possibility of deception and confusion between the mere words PGA TOUR and the subject mark. As discussed, I believe the average consumer would be able to distinguish a host of PGAs, and would not confuse the subject mark which contains clearly the nationality identity of the applicant with the word mark PGA TOUR of the opponents. This could only be more so with respect to the PGA TOUR Logo. I do not think I need to repeat my analysis of evidence and the arguments here.

95. In conclusion, with regard to the global assessment of the likelihood of confusion between the marks in question, first, the marks at issue are visually, aurally and conceptually not similar; secondly, any similarity arising from the fact that they share the common elements PGA and TOUR is unlikely to lead to any real risk of confusion, the view must be taken that the visual, aural and conceptual difference is sufficient to counteract any similarity, with the result that the marks at issue are different overall; and thirdly, the identical or similar services concerned are such that they are usually selected by those who are interested in the sport of golf and are willing to pay for the more expensive golf-related products and services and watch televised golf programs which are available only on subscription, with the result that the level of attention paid to the selection of goods and services is higher than average, ordinary consumers. It follows that, notwithstanding the identity or similarity of the notional goods and services insofar as the objectionable services are concerned, the differences existing in this case between the conflicting marks are such that there is not a likelihood of consumers being confused into believing that the goods and

35 services provided by the applicant are those of the opponents or provided by some undertaking linked to them.

96. It follows that the ground of opposition under section 12(3) fails.

Conclusion

97. As the opponents have not succeeded in any of the grounds of opposition they eventually pursue, I award the applicant 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 10 April 2012