Trade Marks Ordinance (Cap

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Trade Marks Ordinance (Cap TRADE MARKS ORDINANCE (CAP. 559) OPPOSITION TO TRADE MARK APPLICATION NO. 302275975 Marks : Classes : 16, 25 Applicant : Kabushiki Kaisha Nissen Holdings (Nissen Holdings Co., Ltd.) Opponent : Industria de Diseño Textil, S.A. (Inditex, S.A.) ______________________________________________________________________ STATEMENT OF REASONS FOR DECISION Background 1. On 7 June 2012 (“Application Date”), Kabushiki Kaisha Nissen Holdings (Nissen Holdings Co., Ltd.)(“Applicant”) filed an application (Application No. 302275975)(“subject application”) under the Trade Marks Ordinance (Cap. 559)(“Ordinance”) for registration of the following series of two marks (collectively, the “subject marks”) : (“subject mark A”) (“subject mark B”). The Applicant claims the colours blue, black and white as elements of subject mark A. Registration of the subject marks is sought in respect of the following goods (“subject goods”): 1 Class 16 Paper; cards; catalogues; printed matter; magazines [periodicals]; wrapping paper; bags [envelopes, pouches] of paper or plastics, for packaging; paper box; office requisites, except furniture (“subject Class 16 goods”). Class 25 Tee-shirts; camisoles; drawers [clothing]; pants; bodices [lingerie]; underwear; tights; sweat-absorbent underclothing; jerseys [clothing]; underpants; brassieres; petticoats; slips [undergarments]; children clothes; brassieres (chest liners, chest pads); clothing for gymnastics; stockings; sweat-absorbent stockings; hosiery; leggings (“subject Class 25 goods”). 2. Particulars of the subject application were published on 26 October 2012. Industria de Diseño Textil, S.A. (Inditex, S.A.)(“Opponent”) filed a notice of opposition on 25 January 2013 (“Notice of Opposition”) with a statement of grounds of opposition (“Statement of Grounds”). In response to the Notice of Opposition, the Applicant filed a counter-statement on 19 April 2013 with grounds in support of its application. 3. The Opponent’s evidence consists of: (a) a declaration of Mr. Antonio Abril Abadin made on 16 January 2014 (“Abadin’s 1st Declaration”); and (b) a second declaration of Mr. Antonio Abril Abadin made on 30 June 2015 (“Abadin’s 2nd Declaration”). 4. The Applicant’s evidence consists of a declaration of Hiroshi Ii made on 8 October 2014 (Ii’s Declaration”). 5. The opposition hearing took place before me on 10 November 2016. Ms Miranda Chan of Messrs. Hastings & Co. appeared for the Applicant, and Ms Florence Lam of Messrs. Wilkinson & Grist appeared for the Opponent at the hearing. I reserved my decision at the conclusion of the hearing. Grounds 6. The Opponent relies on the grounds under the following sections of the Ordinance: 2 (a) section 12(3); (b) section 12(5)(a); (c) section 12(4); and (d) section 11(5)(b). Relevant date 7. The relevant date for considering this opposition is the Application Date, i.e. 7 June 2012. Evidence of the Opponent 8. According to Abadin’s 1st Declaration, the Opponent is a fashion distributor with over 6,000 stores in 86 countries in Europe, Asia, Oceania, United States of America and Africa. The Opponent’s retail stores are operated in the names and formats of Zara, Zara Home, Pull & Bear, Bershka, Massimo Dutti, Oysho, Stradivarius and Uterqüe. ZARA is the Opponent’s flagship chain.1 9. According to Abadin’s 1st Declaration, the mark ZARA was devised by the President and founder of the Opponent Mr. Amancio Ortega Gaona as a fanciful mark in 1975 when the first ZARA store was opened in A Coruña, North Western Spain in 1975.2 10. ZARA is used as the name of a chain of stores as well as the brand of products sold in ZARA stores including goods in Classes 3 (e.g. perfume, cosmetics), 9 (e.g. sunglasses), 14 (e.g. watches jewellery), 16 (e.g. notebooks, pocket diaries), 18 (e.g. bags, purses, belts, backpacks, umbrellas), 24 (e.g. towels), 25 (e.g. clothing, footwear, headgear) and 26 (e.g. headbands, hair pins, hair ties)(collectively the “Opponent’s Goods”). From 2009 onwards, catalogues of the Opponent’s Goods are no longer printed. The annual promotion campaign and the collections for each year are only shown in-store and on the Opponent’s websites. For Hong Kong, Exhibit “AAA-1(b)” to Abadin’s 1st Declaration shows pictures downloaded from the Hong Kong website www.zara.com/hk for the 2009, 2010, 2011, 2012, 2013 and 2014 collections. Products shown include clothing and shoes.3 1 Abadin’s 1st Declaration, para. 4. 2 Abadin’s 1st Declaration, para. 5. 3 Abadin’s 1st Declaration, para. 6. 3 11. ZARA HOME, a brand introduced by the Opponent in 2003, sells home furnishing focusing on textiles (such as bed, table and bathroom linen), tableware, cutlery, glassware and decorative items. The Opponent’s first ZARA HOME store opened in Hong Kong in October 2013 (i.e. after the Application Date).4 12. The Opponent is the owner of the trade marks “ZARA”, “TEXTURES ZARA”, “ZARA BASIC”, “ZARA HOME” and marks similar thereto (collectively, the “Opponent’s Marks”). The Opponent’s Marks have been registered in various jurisdictions around the world. In Hong Kong, the Opponent is the owner of, inter alia, the registered marks set out in Annex 1 (“Opponent’s HK Registered Marks”). 13. According to the Interbrand “Best Global Brands” report which ranks the world’s most valuable brands, ZARA was ranked 48th out of 100 in 2010, 44th in 2011 and 37th in 2012.5 In the Interbrand “Best Global Brands” report 2012, the brand “ZARA” was valued at US$ 9,488 million. 14. The Opponent does not explicitly advertise but relies on the visibility of its prominently situated stores to make itself seen and known. As observed in the Interbrand “Best Global Brands” report 2009, Zara is not a big advertising spender and instead builds awareness through word-of-month and retail presence.6 At the time of Abadin’s 1st Declaration, ZARA has presence in 86 countries with a network of more than 1,800 ZARA stores, including 11 stores in Hong Kong. The first ZARA store in Hong Kong opened in 2004 at the International Finance Centre in Central.7 15. Set out in paragraphs 20 and 21 of Abadin’s 1st Declaration are the worldwide and Hong Kong net sales of the Opponent’s Goods under the Opponent’s Marks during the years 2006 to 2012. The average annual worldwide net sales and the average annual Hong Kong net sales during that period were more than €7.5 billion and HK$1 billion per annum respectively. Sales of ZARA clothing represent approximately 66.11% contribution to the Opponent’s worldwide sales. 16. Exhibit “AAA-10” to Abadin’s 1st Declaration includes copies of invoices issued by the Opponent to Zara Asia Limited in Hong Kong from 2006 to 2012 in respect of various goods in Class 25 including clothing, underwear, caps, hats, socks, 4 Abadin’s 1st Declaration, para. 10. 5 Abadin’s 1st Declaration, paras 11-14 and Exhibit “AAA-5”; Abadin’s 2nd Declaration, para. 5 and Exhibit “AAA-18”. 6 Abadin’s 1st Declaration, para. 15. 7 Abadin’s 1st Declaration, paras 7-9. 4 stockings, ties, gloves and scarves, as well as goods in other Classes such as handbags, purse wallets, belts, imitation jewellery and sunglasses (collectively, the “Opponent’s Verified Goods”). 17. Exhibit “AAA-9(b)” to Abadin’s 1st Declaration includes invoices issued under the Opponent’s “ZARA HOME” mark in respect of sales of the Opponent’s Class 16 goods from 2013, i.e. after the Application Date. There is no evidence that the Opponent has used any of the Opponent’s Marks in Hong Kong in respect of goods in Class 16 before the Application Date. 18. It has not been the policy of the Opponent to make big investments in advertising and since 2007, the Opponent has not published any catalogues. In Hong Kong there have been limited promotion activities that correspond to the seasonal sales advertisements twice a year and some in-store events.8 Set out in Exhibit “AAA-11(a)” to Abadin’s 1st Declaration are advertisement costs of Zara Hong Kong during the years 2007 to 2010. The average annual advertisement costs of Zara Hong Kong during that period was around HK$352,000 per annum. Included at Exhibit “AAA-12” to Abadin’s 1st Declaration are copies of articles written on Zara from Mainland China, India, Israel, Japan, UK, USA etc. Only one article in 2006 is from Hong Kong. 19. The Opponent has obtained registrations of the Opponent’s Marks in Hong Kong and in various countries in the world. Included at Exhibit “AAA-13” to Abadin’s 1st Declaration is a list of trade mark registrations of the Opponent’s Marks and some copies of the relevant registration certificates. Evidence of the Applicant 20. According to Ii’s Declaration, the Applicant was founded on 10 April 1970. It is a company organized and existing under the laws of Japan. It has three separate core business operating through its subsidiaries, one of which is the commerce business which covers mail-order business and sales representation business for apparel, lifestyle-related goods, etc., along with sales and wholesale of gift items through a “bricks-and-clicks” business model (i.e. combining stores and various media such as catalogues, the internet and mobile phones). 21. The Applicant stated that it had been an online and catalog retailer in Japan with over 40 years of experience selling goods including clothing, underwear, stockings, 8 Abadin’s 1st Declaration, para. 24. 5 shoes, beauty, hair care and household products, and that at the time of Ii’s Declaration in 2014, the Applicant had over 30 million registered customers in Japan. The Applicant stated that it created its global website http://www.nissen.com in 2010 which had been available in Japanese, English, traditional and simplified Chinese.9 22.
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