TRADE MARKS ORDINANCE (CAP. 559)

OPPOSITION TO TRADE MARK APPLICATION NO. 304450572

MARK :

CLASS: 9 , 14 , 18 , 24 , 25 , 26 , 35

APPLICANT : SHANGHAI XINGDU GARMENTS CO., LTD. (上海型度服飾有限公司)

OPPONENT : CONDE NAST ASIA/PACIFIC INC. ______

STATEMENT OF REASONS FOR DECISION

Background

1. On 6 March 2018 (“Application Date”), SHANGHAI XINGDU GARMENTS CO., LTD. (上海型度服飾有限公司) (“Applicant”) filed an application (Application No. 304450572)(“subject application”) under the Trade Marks Ordinance (Cap. 559)(“Ordinance”) for registration of the following mark:

(“subject mark”)

2. Registration of the subject mark is sought in respect of the goods and services in classes 9, 14, 18, 24, 25, 26 and 35 as set out in Annex 1 (“subject goods and services”).

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3. Particulars of the subject application were published on 25 May 2018. CONDE NAST ASIA/PACIFIC INC. (“Opponent”) filed a notice of opposition on 24 August 2018 with a statement of grounds of opposition (“Statement of Grounds”). In response to the notice of opposition, the Applicant filed a counter-statement on 14 November 2018.

4. The Opponent’s evidence consists of a statutory declaration of David Geithner, the Vice President of the Opponent, made on 19 March 2019 (“DG’s Declaration”).

5. The Applicant’s evidence consists of a statutory declaration of He Fan, a legal counsel of the Applicant’s legal adviser in relation to intellectual property matters, made on 31 October 2019 (“He’s Declaration”).

6. The opposition hearing took place before me on 2 March 2021. Ms. Clare Leung, Counsel, instructed by Global IP Agent Company Limited appeared for the Opponent, and Mr. Norman Hui, Counsel, instructed by Fairbairn Catley Low & Kong appeared for the Applicant. I reserved my decision at the conclusion of the hearing.

Grounds of opposition

7. In the Statement of Grounds, the Opponent states that it is the proprietor of the trade mark “VOGUE” and other trade marks incorporating the word “VOGUE” (collectively, the “Opponent’s Marks”, and each, an “Opponent’s Mark”). Details of the Opponent’s Marks registered in Hong Kong are set out in Annex 2.

8. The Opponent claims that the subject mark should be refused registration under the following sections of the Ordinance:

(a) sections 3(1) and 11(1); (b) sections 11(4) and 11(5)(b); (c) section 12(4); and (d) sections 11(5)(a) and/or 12(5).

Relevant Date

9. The relevant date for considering the opposition is 6 March 2018, i.e. the Application Date.

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Evidence of the Opponent

10. According to DG’s Declaration, the Opponent is an American mass media company established in the USA, and published lots of famous magazines and periodicals including Vogue, Vanity Fair, Glamour, Brides, Self, GQ, GQ Style, , Allure, Q, , etc.. The Opponent’s publications have been issued in many countries/region including but not limited to the USA, , Australia, Japan, Mainland China, Hong Kong, etc.. The VOGUE publication was first founded in 1892 as a newspaper and was then purchased by the Opponent in 1905, it thereafter changed to a magazine that focus to women and covering topics including , beauty, culture, living and runway. As of today, the VOGUE magazine has 23 international editions including , TEEN VOGUE and .1 Exhibits “DG-1” and “DG-2” include copies of the Opponent’s Certificate of Incorporation and change of location of registered office certificate in USA. Exhibit “DG-3” includes a print-out from Wikipedia on the VOGUE magazine. Exhibit “DG-4” includes print-outs from (i) some websites in Chinese with information on the Opponent’s group; and (ii) Wikipedia on the Opponent.

11. Geithner avers that the Opponent is the proprietor of the trade mark “VOGUE” and other trade marks incorporating the word “VOGUE”, and has applied for and obtained registrations thereof in many countries. The Opponent first registered the mark “VOGUE” in USA in 1908 under class 16. The Opponent also registered trade marks with the word “VOGUE” in Mainland China and Hong Kong. Exhibit “DG-5” includes the print-out of the online search results from the Trade Marks Registry on Opponent’s Marks registered in Hong Kong.

12. Geithner avers that the Opponent has committed considerable resources in marketing and promoting the Opponent’s Marks worldwide and use them extensively within and outside Mainland China and Hong Kong. The Opponent released the Chinese edition of the VOGUE magazine “VOGUE CHINA” in Mainland China in 2005, and 300,000 initial copies were sold out when the magazine first debut. VOGUE CHINA magazine currently has 1.6 million printing copies circulated in Mainland China. Exhibit “DG-6” includes a copy of statement issued by the China National Publications Import and Export (Group) Corporation on its import and distribution of VOGUE magazines in Mainland China since 1988. Geithner further avers that the VOGUE magazine has also been the most popular magazine in many provinces in Mainland China in terms of retail

1 DG’s Declaration, paras 5 to 7. - 3 - sales figures and their promotion and marketing values.2 Exhibit “DG-7” includes (i) a copy of 營業執照 of 北京開元策略信息諮詢有限公司; (ii) a document titled “關於報刊 零售市場監測項目概述” by 北京開元策略信息諮詢有限公司 summarizing the results of “Market Intelligence Report on China’s Print Media Retail Distribution” from 2008 to 2014 on several magazines in Mainland China including VOGUE CHINA; and (iii) copies of extracts of the “Market Intelligence Report on China’s Print Media Retail Distribution” from 2011 to 2014. However, there is no breakdown of the sales figure of VOGUE CHINA by the year in the reports. There is also no evidence as to the extent to which VOGUE and/or VOGUE CHINA magazines being circulated or sold in Hong Kong prior to the Relevant Date.

13. Geithner avers that there are many articles on “Baidu” introducing the VOGUE magazine and a lot of super movie stars and top models appear on its cover. The magazine also organized a lot of large scale activities relating to fashion in Mainland China and invited celebrities to participate.3 Exhibit “DG-8” includes print-outs of articles and search results on Baidu in relation to the VOGUE magazine and the Opponent. Exhibit “DG-9” includes print-outs of some covers of VOGUE CHINA magazine featuring movie stars and top models from Mainland China, Hong Kong and overseas. Exhibit “DG-10” includes copies of articles from Baidu and other Chinese websites on interviews and appearance of artists and celebrities in VOGUE CHINA, and articles on activities organized by VOGUE CHINA. There is, however, no evidence as to the number of searches/viewers/visitors from Hong Kong in respect of those articles and search results. There is also no evidence exhibited that any of the activities organized by the Opponent took place in Hong Kong and there is no evidence to the extent to which these activities were broadcast in Hong Kong or otherwise reached the Hong Kong public through the Internet or other media. It is also noted from the exhibits that some of the activities were held after the Relevant Date.

14. Geithner avers that in view of the worldwide reputation of the VOGUE magazine, a lot of well-known and international brands placed advertisements in it. Exhibit “DG-11” includes print-outs of samples of a variety of brands’ advertisements placed in VOGUE CHINA and some overseas edition of the VOGUE magazine. There is however, no evidence as to what extent the various editions of the VOGUE magazine have been circulated or viewed in Hong Kong prior to the Relevant Date. Geithner further avers that the Opponent also lined up with the China Merchant Bank to issue a credit card named as “VOGUE me” in Mainland China. Exhibit “DG-12” includes a copy of an article relating

2 DG’s Declaration, paras 10 to 12. 3 DG’s Declaration, paras 13 to 15. - 4 - to the launch of the card.4 There is no evidence as to whether the credit card is promoted and/or available for application in Hong Kong.

15. Geithner avers that as a leading figure in the fashion industry, VOGUE CHINA’s editorial director was invited to be a member of the judging panel of a fashion design competition organized by a TV show in Mainland China.5 Exhibit “DG-13” includes copies of articles on VOGUE CHINA’s editorial director appearing on TV shows in Mainland China. There is, however, no evidence as to the extent to which the TV shows were broadcast or viewed in Hong Kong or otherwise reached the general public in Hong Kong.

16. Exhibit “DG-14” includes a print-out of the online search results from the Trade Marks Registry on the subject mark. Geithner avers that the subject application covers goods and services in Classes 9, 25 and 35, which are similar or identical to the specifications of some of the Opponent’s Marks (i.e. Registration Nos. 302468395, 302468412, 303092814AA, 303092823AA, 303375577 and 303375586). Geithner further claimed that one of the components of the subject mark “Original Vogue & Value” contains the word “Vogue”, which is the same as the Opponent’s Marks. As such, owing to the high distinctiveness and goodwill of the Opponent’s Marks, the use of the subject mark will likely cause confusion to the public. Geithner further avers that since the subject mark highlighted the concept of “Original Vogue”, coupled with the overlapping of some of the subject goods and services with those registered under the Opponent’s Marks, the subject mark is very likely to be perceived by the public as being derived from or connected with the Opponent’s Marks.6

17. Aurally, Geithner avers that one of the elements of the subject mark “OVV” shall be pronounced as “Oth”. As the Opponent’s Mark is pronounced as “Vog”, he is of the view that the pronunciation of the marks are very similar. Conceptually, Geithner avers that the words “Original Vogue” in the subject mark are very misleading and carries a message that it is a derivation of the Opponent’s business. Further, as the Opponent is engaged in the business of creating and promoting an elite and quality lifestyle and the subject mark carries the same concept, Geithner avers that the marks are conceptually identical and/or similar.7

18. Geithner avers that the Opponent also applied to oppose the Applicant’s trade

4 DG’s Declaration, paras 16 to 17. 5 DG’s Declaration, para 18. 6 DG’s Declaration, paras 21 to 24. 7 DG’s Declaration, paras 25 to 26. - 5 - mark applications in Mainland China in respect of the subject mark. Exhibit “DG-15” includes a copy of 商標異議申請補充理由書 in relation to the said application.8

19. Geithner further reiterates the various grounds of opposition as pleaded in the Statement of Grounds.

Evidence of the Applicant

Applicant’s Background

20. According to He’s Declaration, the Applicant is incorporated in Mainland China on 19 May 2017 as a subsidiary of HLA Brand Management Co. Ltd. (“HLA Company”), and both companies are affiliated companies of 海瀾之家股份有限公司, a company listed on the Shanghai Stock Exchange since 2002. All the aforesaid companies are part of the Heilan Group, which was founded in 1988. Heilan Group started out in fine spinning and eventually became a well-known clothing chain and domestic leader in apparel manufacturing. He avers that clothing is Heilan Group’s pillar business and is renowned for producing and selling high quality men’s fashion, business clothing and accessories in Mainland China. Heilan Group further extended its business to different industries such as clothing, finance, property and tourism and has total assets of RMB 100 billion and employs more than 60,000 staff.9 Exhibits “HF-1” to “HF-3” include print-outs from the National Enterprise Credit Information Public System in relation to the company information of the Applicant, HLA Company and 海瀾之家股份有限公司. Exhibits “HF-4” and “HF-5” include print-outs from Heilan Group’s official website on the Group’s company history and profile, and information on the Group’s businesses.

21. According to He’s Declaration, the first store of the clothing brand “海瀾之家” opened in Nanjing in 2002 and has nearly 4,700 stores in Mainland China at present. The mark “ ” is registered in Mainland China in 2004 and recognized as a well-known trade mark in 2009, exhibit “HF-6” includes a print-out of the mark’s registration information in Mainland China. Heilan Group also established other clothing brands including the subject mark. Exhibit “HF-7” includes print-outs of a list of clothing brands owned by the Heilan Group downloaded from its official website and information on “海瀾之家” from Baidu.

8 DG’s Declaration, para 27. 9 He’s Declaration, paras 5 to 8 and 11. - 6 -

Origin of the subject mark and relevant trade mark registrations and applications

22. He avers that the subject mark is a women’s clothing brand targeting high-end fashion for urban white-collar women. It is first used by the Applicant as a brand for women’s wear and related products in respect of most of the subject goods and services in November 2017 in the headquarter store of HLA Company in Shanghai.10

23. According to He, the subject mark originates from the mark “ ” registered in Mainland China in 2015. Heilan Group first used the mark “ ” and/or its similar mark on Class 25 goods with the authorization of its previous trade mark owner in 2016, and decided to incorporate the Applicant to develop products under the

“ ” mark thereafter. It obtained an assignment of the mark in July 2017, which was approved by the Chinese Trademark Office in March 2018. Exhibit “HF-8” includes copies of (i) print-out of registration information of the “ ” mark downloaded from the Trademark Office; (ii) certificate of registration of the “ ” mark in

Mainland China on 21 January 2015; and (iii) record of assignment of the “ ” mark to the Applicant.

24. According to He’s Declaration, the Applicant redesigned the “ ” mark and adopted the letters “OVV” as the predominant part of the subject mark. The letters “OVV” are abstracted from the words, “Original”, “Vogue” and “Value”, and the three letters are specially designed to reflect a sense of stylish and timeless elegance. He avers that the words “Original, Vogue & Value” express the Applicant’s vision in women’s wear, in which “Original” reflects the quality of brand products and the vision to be carefully selected from the world’s delicate fabrics, through perfect design and tailoring, to create elegant fashion and good as well as solid sense of high class; “Vogue” to mean classic fashion and making dress regression of art; and “Value” displays the ultimate goal of the brand and is to achieve high quality and classic product. He avers that the three words are added into the subject mark only for the relevant consumers to briefly understand the formation of “OVV” but without any intention to highlight those words.11

10 He’s Declaration, para 12. 11 He’s Declaration, para 13. - 7 -

25. He further avers that the formation of “ ”, which is not purely a coined word and a lexical invention but also along with stylish elements, is the predominant and most eye-catching element of the subject mark. The capital letter “O” is designed to appear as a combination of two bracket marks, i.e., “ ( ” and “ ) ”, whereas the upper right wing of the capital letter “V” is designed to appear nearly transparent as “ ”, which looks like an arrow. The words “Original”, “Vogue” and “Value” albeit are in descriptive nature of the subject goods and services with their own meaning, but the combination of the words together with “ ” form a stylish and unique subject mark.12

26. In Mainland China, the Applicant secured registrations of the subject mark and other trade marks comprising “OVV” in classes 9, 18, 25 and 26. The Applicant also applied for registrations of the subject mark, associated marks such as the subject mark in other font styles and marks comprising “OVV” in classes 9, 14, 18, 24, 25, 26 and 35.13 Exhibit “HF-9” includes print-outs of the Applicant’s trade mark registrations of the subject marks and marks comprising “OVV” downloaded from the Trademark Office. Exhibits “HF-10” and “HF-11” include a list of the Applicant’s said trade mark applications and print-outs of information on the trade mark applications downloaded from the Trademark Office.

27. The Applicant also registered or applied for registration of the subject mark and other trade marks comprising “OVV” in other countries such as Australia, Brunei, Japan, New Zealand, Singapore, Thailand, etc. in classes 9, 14, 18, 24, 25, 26 and 35.14 Exhibit “HF-12” includes print-outs of the online records of the registrations/applications obtained from the relevant trade mark offices and copies of trade mark certificates of some of the registrations.

Applicant’s use of the subject mark and marketing of the Applicant’s products under the subject mark

28. He avers that the Applicant is using the subject mark on a range of goods and services under classes 14, 18, 24, 25, 26 and 35, and is preparing to use the subject mark on subject goods in class 9. Exhibit “HF-13” includes (i) print-outs from the HLA Company and the Applicant’s official websites (www.hla.com.cn and www.ovv.cn) showing apparel products under the “OVV” brand; and (ii) photos of Applicant’s products

12 He’s Declaration, para 14. 13 He’s Declaration, paras 16 to 17. 14 He’s Declaration, para 18. - 8 - bearing the subject mark. Exhibit “HF-14” includes (i) print-outs from www.hla.com.cn website with information on the “OVV” brand; and (ii) information on the “OVV” brand downloaded from Baidu search engine.15

29. The Applicant opened the first standalone store under the subject mark on 20 January 2018 in China. There are currently 47 stores under the subject mark selling the subject goods in Mainland China.16 Exhibits “HF-15”, “HF-16” and “HF-17” include copies of articles reporting the opening of “OVV” brand stores in January 2018; a list of “OVV” brand stores in Mainland China and Thailand; and photos of several “OVV” brand stores in Mainland China respectively. The Applicant also sell the subject goods under the subject mark and its associated marks on its official website (www.ovv.cn), Tmall (天貓) and Jingdong（京東）online platforms. Exhibits “HF-18”, “HF-19” and “HF-20” include extracts of print-outs of the Applicant’s website, Tmall and Jingdong websites listing “OVV” brand apparel and accessory products for sale.

30. He avers that the Applicant expands its business under the “OVV” brand to the Southeast Asian market in mid-2018 and opened two stores in Thailand in late 2018. Exhibit “HF-21” includes (i) a copy of a brand authorization Letter dated 1 July 2018 issued by the Applicant on use of the subject mark in Thailand; and (ii) an authorization letter dated 1 July 2018 issued by the Applicant on export/import of goods bearing the subject mark. Exhibit “HF-22” includes photos of and news articles reporting on the opening of “OVV” brand stores in Thailand. Exhibit “HF-23” includes an extract from OVV Thailand’s Facebook page on store locations in Thailand. He avers that sales of goods under the subject mark is significant. Exhibit “HF-24” includes copies of sample invoices issued by the Applicant and associated parties on the sale of the Applicant’s goods.17 It is however noted that only one invoice refers to the subject mark and the invoices are dated after the Relevant Date.

31. He avers that the Applicant is preparing to export subject goods bearing the subject mark to and offer subject services in Hong Kong soon.18

Advertising and marketing of the subject mark and/or subject goods

32. He avers that the Applicant and the Heilan Group spent substantial amounts in advertising and promoting goods bearing the subject mark through various means including advertising in different media, publishing promotional leaflets and posters,

15 He’s Declaration, paras 20 to 21. 16 He’s Declaration, paras 24 to 25. 17 He’s Declaration, paras 27 to 29. 18 He’s Declaration, paras 30 to 31. - 9 - participating in fashion week, running official websites for the “OVV” brand, engaging top model/celebrity as spokesperson, and promoting the subject mark and subject goods and services on social media. The Applicant’s evidence includes:19

(a) Copies of articles on the internet reporting on the “OVV” brand and its goods (mainly apparel) from 2017 to 2019 in Mainland China and Thailand;

(b) Copies and photos of the catalogues, promotional leaflets, brand book and posters with the “OVV” brand and/or the subject mark;

(c) Article on OVV’s participation in Macau International Fashion week in June 2018;

(d) Printouts of the Applicant’s website, Tmall website and Jingdong website selling “OVV” brand apparel and accessory products;

(e) Article on model as “OVV” brand’s spokesperson in March 2018;

(f) Print-outs of OVV Thailand’s Facebook and OVV’s official Weibo page; and

(g) Samples of commercial contracts and invoices for the promotion and advertisement of the “OVV” brand which include fashion show and store opening promotion, advertisements, photoshoot, etc.

Reponses to DG’s Declaration

33. In response to DG’s Declaration, He avers that the single word “VOGUE” mark is only registered in Classes 9, 16, 35, 38, 41, 42, 44 and 45 by the Opponent, and the evidence filed by the Opponent showed actual use of the Opponent’s Marks in relation to goods in Class 16 only, but not other classes of goods and services registered. He also commented that the market intelligence report in Exhibit “DG-7” covers up to 2014 and is not further updated.

34. He further avers that the appearance of the subject mark and the Opponent’s Marks referred to in paragraph 16 above are entirely different in view of their respective composition, and there should not be any likelihood of confusion between the marks. He added that the word “vogue” means “fashion” and/or “trend” which is descriptive of the goods and services registered under the Opponent’s Marks, and the word “vogue” only

19 He’s Declaration, Exhibits “HF-18” to “HF-20” and “HF-25” to “HF-30”. - 10 - forms an inconspicuous part of the subject mark. Exhibit “HF-31” includes a print-out from online Cambridge English Dictionary on the meaning of the word “vogue”. He also avers that the Opponent’s Marks are descriptive and/or contain elements descriptive of its registered goods and services with an implication that the registered goods/services are trendy and/or fashionable and that the Opponent’s Marks, in particular the mark “VOGUE”, have very limited distinctive character.

35. He also avers that the subject mark and the Opponent’s Marks are visually, conceptually and aurally different; and that most of the subject goods and services are not similar to the registered goods/services under the Opponent’s Marks. The relevant consumers in Hong Kong using reasonable level of care and intelligence will be able to note the distinctions between the marks without any visual, aural and conceptual difficulty and hence the use of the subject mark on the subject goods and services should not give rise to any likelihood of confusion. He avers that the Applicant has been offering goods and services under the subject mark in its standalone stores, online stores in its website and online trade platforms, which is different from how the Opponent actually used the Opponent’s Marks on its goods; hence He is of the view that there is no reasonable likelihood that the relevant public would be led to believe that the Opponent’s goods and services and that of the Applicant come from the same undertaking or are economically linked.

Co-existence of the Opponent’s Marks and subject mark in other jurisdictions

36. He avers that whilst the Opponent filed an application to oppose the Applicant’s registration of the subject mark in Mainland China, the Applicant also filed a response contesting the said opposition. The decision is yet to be available. Exhibit “HF-32” includes a print-out of the trade mark application of the subject mark under class 35 services in Mainland China downloaded from the Trademark Office.

37. He further avers that the applications for registration of the subject mark in Mainland China under classes 9, 18 and 25 are all approved and co-existed with the Opponent’s Marks registered under the same classes, hence the Opponent’s Marks should not be considered as similar to the subject mark. Exhibit “HF-33” includes print-outs of the trade mark registration information of some of the Opponent’s single word “VOGUE” mark and marks including the word “Vogue” under classes 9, 18 and 25 in Mainland China, and print-outs of trade mark registration information of the subject mark under the same classes in Mainland China downloaded from the Trademark Office.

38. He avers that the application for registration of the subject mark in Saudi Arabia

- 11 - was also opposed by the Opponent but the opposition failed. Exhibit “HF-34” includes a copy of the relevant decision (with English Translation) issued by the General Trademark Department in Saudi Arabia. He further avers that the subject mark and the Opponent’s “VOGUE” mark also co-existed in other jurisdictions such as Indonesia, New Zealand, the Philippines and Singapore. Exhibit “HF-35” includes print-outs of the trade mark registration information from the trade mark offices of the said jurisdictions of some of the Opponent’s “VOGUE” marks and the subject mark registered under classes 9, 14, 18, 25 and 35.

39. He also avers that there are other marks bearing the word “Vogue” which are registered in Hong Kong and co-exist with the Opponent’s Marks. Exhibit “HF-36” includes print-outs from the online search record from the Trade Mark Registry with samples of registered marks containing the word “vogue” which are not owned by the Opponent.

40. There is no evidence that the Applicant has used the subject mark in Hong Kong prior to the Relevant Date.

Opposition under section 11(1) of the Ordinance

41. In paragraph 14 of the Statement of Grounds, the Opponent claims that:

“registration of the [subject mark] is contrary to Section 11(1) of the Ordinance because it is a sign that is not capable of distinguishing the Applicant’s goods and services from the goods and services of others, namely it is not capable of distinguishing the Applicant’s goods and services from the goods and services of the Opponent’s, and therefore it is a sign which does not satisfy the requirements of Section 3(1) of the Trade Marks Ordinance.”

42. Section 11(1) of the Ordinance provides, as follows:

“Subject to subsection (2), the following shall not be registered— (a) signs which do not satisfy the requirements of section 3(1) (meaning of trade mark); (b) trade marks which are devoid of any distinctive character; (c) trade marks which consist exclusively of signs which may serve, in trade or business, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or rendering of services, or other characteristics of goods or services; and

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(d) trade marks which consist exclusively of signs which have become customary in the current language or in the honest and established practices of the trade.”

43. Section 3(1) of the Ordinance provides as follows:

“In this Ordinance, a trade mark ( 商標) means any sign which is capable of distinguishing the goods or services of one undertaking from those of other undertakings and which is capable of being represented graphically.”

44. It is clear from paragraph 14 of the Statement of Grounds and from Ms. Leung’s submissions that the Opponent’s ground of opposition under section 11(1) of the Ordinance is based on section 11(1)(a).

45. Section 11 of the Ordinance deals with the absolute grounds for refusal of registration and is to be contrasted with section 12 of the Ordinance which deals with the relative rights of an applicant and other parties.

46. It is apparent from the Opponent’s pleadings and evidence that the basis of the opposition under section 11(1)(a) of the Ordinance is not that the subject mark is by its nature incapable of distinguishing the goods and services of one undertaking from those of other undertakings, nor that it cannot be represented graphically. Rather, the Opponent’s contention is that the subject mark is incapable of distinguishing the subject goods and services from the Opponent’s goods and services because the overall impression of the subject mark is very similar to the Opponent’s Marks. Section 11(1)(a) is not a proper avenue for such a contention. The ground of opposition under section 11(1)(a) of the Ordinance therefore necessarily fails.

Opposition under sections 11(4) and 11(5)(b) of the Ordinance

47. Section 11(4) and (5)(b) of the Ordinance provides, inter alia, that :

“(4) A trade mark shall not be registered if it is – (a) contrary to accepted principles of morality; or (b) likely to deceive the public.

(5) A trade mark shall not be registered if, or to the extent that – (b) the application for registration of the trade mark is made in bad faith.”.

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48. In paragraph 13 of the Statement of Grounds, the Opponent claims that:

“The [subject mark], which consisting the main element of the Opponent’s famous ‘VOGUE Marks’, and this could not possibly be a coincidence. When the Applicant filed the application of the [subject mark], it must be fully aware of the Opponent’s VOGUE CHINA magazines and ‘VOGUE Marks’ as well as the Opponent’s proprietorship of the VOGUE Marks. The Applicant’s application herein is trying to ride on the goodwill and reputation established by the Opponent’s ‘VOGUE Marks’. It is calculated to deceive and cause confusion leading the public into the mistaken belief that Applicant’s goods and services are associated with the goods and/or services provided by the Opponent. The Applicant’s conduct of applying for registration of the [subject mark] in respect of the [subject goods and services] falls short of the standard of acceptable commercial behaviour observed by reasonable and experienced men in the relevant area of trade, and amount to bad faith. In the premises, the [subject mark] shall not be granted registration as it is in contravention of Sections 11(4) and 11(5)(b) of the Trade Marks Ordinance.”

49. It is clear from paragraph 13 of the Statement of Grounds and Ms. Leung’s submissions that the Opponent’s ground of opposition under section 11(4) of the Ordinance is based on section 11(4)(b).

50. Section 11(4)(b) of the Ordinance is concerned with deceptiveness which is inherent in the mark itself, as opposed to deception caused by the similarity of the mark to another. This is consistent with the heading of section 11 of the Ordinance which is entitled “Absolute grounds for refusal of registration” and is to be contrasted with section 12 of the Ordinance which deals with the relative rights of an applicant and other parties. 20 Consequently, the Opponent cannot succeed under section 11(4)(b) of the Ordinance based upon its allegedly similar mark(s). The ground of opposition under section 11(4)(b) of the Ordinance is not made out.

51. I turn to consider the ground under section 11(5)(b) of the Ordinance.

52. The term “bad faith” is not defined in the Ordinance. In Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd [1999] R.P.C. 367 at 379, Lindsay J. said in relation to section 3(6) of the UK Trade Marks Act 1994 (equivalent to section 11(5)(b) of the Ordinance):

20 QS by S. Oliver Trade Mark [1999] R.P.C. 520 at 524; Kerly’s Law of Trade Marks and Trade Names (16th Edn.) para. 10-216. - 14 -

“I shall not attempt to define bad faith in this context. Plainly it includes dishonesty and, as I would hold, includes also some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined. Parliament has wisely not attempted to explain in detail what is or is not bad faith in this context: how far a dealing must so fall-short in order to amount to bad faith is a matter best left to be adjudged not by some paraphrase by the courts (which leads to the danger of the courts then construing not the Act but the paraphrase) but by reference to the words of the Act and upon a regard to all material surrounding circumstances.”

53. In Harrison v Teton Valley Trading Co (CHINAWHITE) [2005] F.S.R. 10, the English Court of Appeal held that (at para. 26):

“The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.”

54. Further, in Ajit Weekly Trade Mark [2006] R.P.C. 25, the Appointed Person stated as follows:

“The subjective element of the test means that the tribunal must ascertain what the defendant knew about the transaction or other matters in question. It must then be decided whether in the light of that knowledge, the defendant’s conduct is dishonest judged by ordinary standards of honest people, the defendant’s own standards of honesty being irrelevant to the determination of the objective element.”

55. The above principles have been applied in 深圳市德力康電子科技有限公司 v Joo-Sik-Hoi-Sa LG (LG Corporation) HCMP 881/2013 (paras 25-27).

56. An allegation that a trade mark has been applied for in bad faith is a serious allegation. It should not be made unless it can be fully and properly pleaded and should not be upheld unless it is distinctly proved and this will rarely be possible by a process of inference (ROYAL ENFIELD Trade Marks [2002] R.P.C. 24 at para. 31). The standard of proof is on the balance of probabilities but cogent evidence is required due to the seriousness of the allegation. It is not enough to prove facts which are also consistent with good faith (Brutt Trade Marks [2007] R.P.C. 19 at para. 29).

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57. According to paragraph 13 of the Statement of Grounds, the Opponent’s case is that it could not possibly be a coincidence for the subject mark to be consisting of the main element of the Opponent’s Marks, i.e. the word “vogue”. The Opponent claims that the Applicant must have known about the Opponent’s Marks and its VOGUE CHINA magazines at the Relevant Date, and the subject application is trying to ride on the goodwill and reputation established by the Opponent’s Marks. In the hearing, Ms. Leung further submitted that whilst the subject mark might be originated from the “ ” mark to represent the Opponent’s business vision, the Applicant’s redesign of the

“ ” mark to the subject mark is an indication of bad faith, because the design and the overall impression of the subject mark are very similar to the Opponent’s Marks visually, aurally and conceptually. It appears that the allegation of bad faith is stemmed simply from the allegation that the subject mark is similar to the Opponent’s Marks and will likely deceive and cause confusion to the public into the mistaken belief that the subject goods and services are associated with the Opponent’s, and therefore the subject application was made in bad faith.

58. In response to the Opponent’s bad faith claim, the Applicant submitted that the subject mark and the Opponent’s Marks are not similar, and that the subject mark was independently designed by the Applicant in good faith. An explanation on how the Opponent came up with the subject mark was provided in He’s Declaration as summarized in paragraphs 23 to 25 above. The Applicant further pleaded that the Applicant has been offering some of its goods and services for sale directly to consumers through its own physical and online stores, and hence the use and registration of the subject mark is made in good faith. In the hearing, Mr. Hui submitted that the Opponent’s allegation of bad faith was not substantiated by evidence, but merely alleged similarity between the subject mark and the Opponent’s Marks, which in his view cannot be established as a result of the dissimilarity of the respective marks. Mr. Hui further submitted that, the fact that the Applicant knows or must know that a third party has long been using an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought is not sufficient, in itself, to permit the conclusion that the Applicant was acting in bad faith. In order to determine whether there was bad faith, consideration must be given to the Applicant’s intention at the time when he filed the application for registration.21 Mr. Hui also submitted that the word “vogue” is not invented by Applicant but is a word which could be found in dictionaries. In view of the Applicant’s explanation on the design of the subject mark, he submitted

21 He cited Chocoladefabriken Lindt v Franz Hauswirth GmbH (Case C529/07) [2009] E.T.M.R. 56 in support of his submission. - 16 - that there is no basis to infer that the incorporation of the word “vogue” in the subject mark is a result from copying any of the Opponent’s Marks.

59. I would first assess the similarity between the subject mark and the Opponent’s Marks.

60. The Opponent’s Marks are all word marks, each has the word “Vogue” as its sole or prominent element. Some of the marks are simply made up of the single word “Vogue”, whilst some of the marks have suffix which include “Girl”, “Living”, “café”, “PEDIA”, “FNO”, “Fashion’s Night Out” and “Lounge”; and another one the prefix “Teen”. As claimed by the Opponent, the word “VOGUE” is the dominant and distinctive element in the Opponent’s Marks. The subject mark is also a word mark, which consists of three block letters “O”, “V”, and “V” and the words “Original”, “Vogue” and “Value”. The block letters “ ” are in much larger font than the three words and placed in a more prominent position in the subject mark. The Applicant claimed that the dominant and distinctive element of the subject mark is the three block letters “ ”.

61. Visually, the subject mark consists of (i) three block letters “ ” in slightly stylized form to appear semi-transparent; and (ii) three English words “Original”, “Vogue” and “Value” in plain form. The three block letters occupies a prominent position in the subject mark and has a significant impact in the overall visual impression of the mark. As the words “Original Vogue & Value” are in smaller font size and is placed underneath

“ ”, the three words would be perceived as being subordinate to the element

“ ” in the subject mark. The Opponent’s “VOGUE” mark, on the other hand, consists of the single word “VOGUE” in block letters of the same font size. Although Ms. Leung submitted that the word “VOGUE” is stylized in serif font and the subject mark has the same font type hence the marks are visually similar, this font type is in fact very common and widely used in general, the use of serif font type could not be regarded as an exclusive feature to the Opponent’s “VOGUE” mark, or that it is particularly stylized. Ms. Leung also submitted that a mark consists exclusively of an earlier mark, to which another word has been added, is an indication that the two trade marks are similar, and cited two cases in her submissions.22 With respect, I do not agree. A comparison of the marks

22 She cited PP Gappol Marzena Proczynska v EUIPO/Gap (ITM), Inc [2018] ETMR 3 and Sadas SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [2006] ETMR 27. - 17 - 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. In the present case, despite the word “vogue” being included in the subject mark, it is only placed in the lower and subordinate part of the subject mark and also appears in much smaller font than the prominent element “ ” of the subject mark. The overall impression created by the Opponent’s “VOGUE” mark and that created by the subject mark are only similar to a low degree.

62. As for the other Opponent’s Marks with prefix or suffix, those prefix or suffix are words totally different from the words included the subject mark, I find that those Opponent’s Marks are of even lower degree of visual similarity with the subject mark.

63. Aurally, the Opponent’s “VOGUE” mark would simply be pronounced as “VOGUE”. The subject mark consists of three letters “O”, “V” and “V” together with the words “Original Vogue & Value”. The Opponent suggested that the three letters “OVV” could be pronounced as “Oth” which is similar to “Vogue” and hence the two marks sound similar. The letters “OVV” is not a word which could be found in dictionary or of any meaning in the English language in itself. I am of the view that rather than pronouncing “OVV” together as one word, it is more likely that the alphabets would be pronounced separately as “O”, “V” and “V”. As such, the subject mark as a whole would be pronounced as “O-V-V-or-ri-gi-nal-vogue-and-va-lue”. Although both marks contain the word “vogue”, it is only one of the eleven syllables when reading the subject mark as a whole and only appears in the latter part of the pronunciation. The aural similarity between the two marks is very low.

64. As for other Opponent’s Marks, the prefix or suffix contain words which are totally different from the words included the subject mark. The pronunciation of the prefix/suffix in those Opponent’s Marks such as “teen”, “girl”, “living”, “Fashion’s Night Out”, etc., are all different from the pronunciation of the words in the subject mark. I find that they have even lower aural similarity than the single word “VOGUE” mark have with the subject mark.

65. Conceptually, all Opponent’s Marks contains the word “VOGUE”, which means “popular; fashionable” according to Oxford Dictionaries (available on https://www.lexico.com/). The word “vogue” in the Opponent’s Marks, together with the prefix/suffix in those marks such as “teen”, “girl”, “living”, “café”, “Fashion’s Night Out”, etc. is descriptive in respect of the goods (in Classes 9, 16 and 25) and services (in Classes

- 18 -

35, 38, 41, 42, 43, and 45) registered under the Opponent’s Marks, which can describe the Opponent’s registered goods and services as popular and fashionable. As for the subject mark, the dominant and distinctive element “OVV” has no meaning and is highly distinctive. Meanwhile, the three words “Original, Vogue & Value” placed under “OVV” are descriptive of the subject goods and services, such that it could be understood as referring to the nature and quality of the subject goods and services to be original, fashionable and of good value. Whilst the subject mark and the Opponent’s Marks may share the idea of “vogue”, as the word “vogue” itself has a descriptive nature in respect of the Opponent’s goods and services as well as those of the Applicant’s, and that the concept of the subject mark is more complicated with the inclusion of the dominant and distinctive element “OVV” and additional words “original” and “value”, it renders the concept of the subject mark to be different from the Opponent’s Marks. I am of the view that taken as a whole, the degree of conceptual similarity of the marks is low.

66. Having regard to the visual, aural and conceptual similarities and differences between the subject mark and the Opponent’s Marks and the overall impression created by each of them, I find that the degree of similarity between the marks is only to a very low degree.

67. In He’s Declaration, an explanation of how the Applicant has come up with the subject mark and how the subject mark was put into use since around January 2018 was given. Reviewing the Applicant’s explanation of how it has come up with the subject mark, the Opponent has not sought to cross-examine the maker of He’s Declaration. I consider that the explanation offered by the Applicant is not implausible.

68. I have also compared the subject mark with the Opponent’s Marks in paragraphs 61 to 66 above and concluded that that the subject mark as a whole is of low similarity to the Opponent’s Marks. I do not find the use of the word “vogue”, being a non-dominant element of the subject mark, by the Applicant alongside the distinctive element “OVV”, sufficient for me to infer or conclude that the subject mark was devised by copying any of the Opponent’s Marks. In any event, I find that the degree of similarity between the subject mark and any of Opponent’s Marks is so low that when the subject mark is used in relation to the subject goods and services, the public would unlikely be misled into believing that the subject goods and services and that of the Opponent come from the same or economically-linked undertakings.

69. As I note, it is no accident that the grounds of opposition pleaded by the Opponent do not include a section 12(3) objection despite the fact that the Opponent has a number of registration in many classes in Hong Kong that contain the word “VOGUE”,

- 19 - namely the Opponent’s Marks. The Opponent must have assessed and come to the view that the chance of success in relying merely on the alleged similarity between the subject mark and the Opponent’s Marks is so low that they would rather focus on making out a bad faith claim. The question is what other accusations or circumstances that the Opponent’s bad faith claim brings or points to could turn the tide in their favour. From my analysis above, and taking into account all the relevant circumstances of this case, I do not find there is any. The contention that the Applicant’s decision to apply for registration of the subject mark in respect of the subject goods and services would be regarded as in bad faith by persons adopting proper standards has not been made out. The ground of opposition under section 11(5)(b) of the Ordinance necessarily fails.

Opposition under section 12(4) of the Ordinance

70. Section 12(4) of the Ordinance provides, inter alia, as follows:

“(4)… a trade mark which is– (a) identical or similar to an earlier trade mark; and (b) proposed to be registered for goods or services which are not identical or similar to those for which the earlier trade mark is protected, shall not be registered if, or to the extent that, the earlier trade mark is entitled to protection under the Paris Convention as a well-known trade mark and the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.”

71. Although the wording of section 12(4) of the Ordinance suggests that its application is confined to the use of the identical or similar mark on goods or services “not identical or similar” to those for which the earlier trade mark is protected, it has been authoritatively decided that it ought to be read to apply to the use by the applicant on goods and services “whether or not similar or identical” (Christie Manson & Woods Ltd v Chritrs (Group) Ltd [2012] 5 HKLRD 829 at 846; Adidas-Salomon AG v Fitnessworld Trading Ltd [2004] F.S.R. 21).

72. In paragraph 15 of the Statement of Grounds, the Opponent claims that:

“By virtue of the extensive use, the Opponent’s ‘VOGUE Marks’ has acquired reputations and should be entitled to be protected under the Paris Convention as a well-known trade mark. The use and registration of the [subject mark] by the Applicant in respect of the [subject goods] would take unfair advantage to the [Opponent’s Marks]. Registration of the [subject mark] should be refused based on Section 12(4) of - 20 -

the Trade Marks Ordinance.”

73. I refer to the Opponent’s Marks in Annex 2. The Opponent’s evidence shows that apart from some photos with the words “VOGUE FASHION’S NIGHT OUT” in the backdrop of activities organized by the Opponent in Mainland China, the single word “VOGUE” mark is the particular mark which has been used by the Opponent as shown in the evidence. Accordingly, among the Opponent’s Marks, I consider that for the purpose of the ground of opposition under section 12(4) of the Ordinance, if the Opponent cannot succeed on the basis of the single word “VOGUE” mark, it would not stand a better chance of success on the basis of any other of the Opponent’s Marks.

74. To succeed under section 12(4) of the Ordinance, the Opponent has to establish that:

(a) at the Relevant Date, the Opponent’s “VOGUE” mark is an earlier trade mark which is entitled to protection under the Paris Convention as a well-known trade mark;

(b) the subject mark is identical or similar to the Opponent’s “VOGUE” mark, and that on a global appreciation of all the factors relevant to the circumstances, the use of the subject mark would give rise to a link with the Opponent’s “VOGUE” mark in the minds of the relevant public; and

(c) in consequence of that link, the use of the subject mark without due cause either takes unfair advantage of the distinctive character or repute of the Opponent’s “VOGUE” mark or is detrimental to that distinctive character or repute.

75. The requirements listed in sub-paragraphs (a) to (c) of paragraph 74 above are cumulative. Each of those requirements must be established before a claim under section 12(4) of the Ordinance could succeed.

Well-known trade mark

76. I refer to the requirement set out in paragraph 74(a) above.

77. Section 4 of the Ordinance provides, inter alia, as follows:

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“(1) References in this Ordinance to a trade mark which is entitled to protection under the Paris Convention as a well-known trade mark shall be construed as references to a trade mark which is well known in Hong Kong and which is the trade mark of a person who- (a) is a national of, or is domiciled or ordinarily resident in, a Paris Convention country or WTO member; (b) has a right of abode in Hong Kong; or (c) has a real and effective industrial or commercial establishment in a Paris Convention country, a WTO member or Hong Kong, whether or not that person carries on business in Hong Kong or owns any goodwill in a business in Hong Kong. (2) In determining for the purposes of subsection (1) whether a trade mark is well known in Hong Kong, the Registrar or the court shall have regard to Schedule 2.”

78. It is not in dispute that the Opponent’s “VOGUE” mark is the mark of a qualified person for the purpose of section 4(1) of the Ordinance.

79. Section 5(1) of the Ordinance provides, inter alia, as follows:

“In this Ordinance, earlier trade mark (在先商標), in relation to another trade mark, means- … (b) 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.”

80. Pursuant to sections 4(1) and 5(1)(b) of the Ordinance, the relevant question is whether the Opponent’s “VOGUE” mark is well known in Hong Kong at the Relevant Date.

81. In determining whether the Opponent’s “VOGUE” mark is well known in Hong Kong, I have to take into account any factors from which it may be inferred that the mark is well known in Hong Kong (section 1(1) of Schedule 2 to the Ordinance). I have to consider any information submitted in this regard, including, but not limited to, any information concerning:23

23 Section 1(2), Schedule 2 to the Ordinance. - 22 -

(a) the degree of knowledge or recognition of the Opponent’s “VOGUE” mark in the relevant sectors of the public;

(b) the duration, extent and geographical area of any use of the Opponent’s “VOGUE” mark;

(c) the duration, extent and geographical area of any promotion of the Opponent’s “VOGUE” mark (including advertising or publicity and the presentation, at fairs or exhibitions, of the goods or services to which the Opponent’s “VOGUE” mark applies);

(d) the duration and geographical area of any registrations, or applications for registration, of the Opponent’s “VOGUE” mark, to the extent that they reflect use or recognition of the Opponent’s “VOGUE” mark;

(e) any record of successful enforcement of rights in the Opponent’s “VOGUE” mark, in particular, the extent to which it has been recognized as a well-known trade mark by competent authorities in foreign jurisdictions; and

(f) the value associated with the Opponent’s “VOGUE” mark.

82. There is no direct evidence of the degree of knowledge or recognition of the Opponent’s “VOGUE” mark in the relevant sectors of the public in Hong Kong.

83. Although the Opponent claimed that the “VOGUE” publication was first founded in 1892 as a newspaper in the United States and then developed into a magazine with 23 international editions, and the “VOGUE” mark was first registered in Hong Kong under Class 9 in 1989,24 the evidence filed in relation to the use of the “VOGUE” mark, or in fact all of the Opponent’s Marks, do not contain anything showing or suggesting that the use was in or in connection with Hong Kong. There is no evidence on the sales/circulation of the various editions of the VOGUE magazine in Hong Kong prior to the Relevant Date. Although Ms. Leung submitted in the hearing that the Opponent had organized the “VOGUE Fashion’s Night Out” event in Hong Kong in 2012 and had therefore used the Opponent’s “VOGUE” mark as well as marks containing the words “VOGUE Fashion’s Night Out” in Hong Kong, as such event/use is not evidence given by the Opponent on oath it is therefore inadmissible.

24 Paras 10 and 11 above. - 23 -

84. Although the Opponent claimed that it has committed considerable resources in marketing and promoting the Opponent’s “VOGUE” mark and use them extensively worldwide (including Hong Kong), there is no evidence provided on the amount spent on marketing and promotional activities by the Opponent in respect of the “VOGUE” mark in Hong Kong or elsewhere. Although the Opponent claimed that the VOGUE CHINA magazine has 1.6 million printing copies circulated in Mainland China,25 and Ms. Leung submitted in the hearing that VOGUE CHINA magazines were sold in Hong Kong since 2005, the evidence provided only shows the magazine’s circulation in Mainland China, which does not provide a yearly breakdown of these figures, and there is no evidence as to the sales and/or circulation figures of the magazines in Hong Kong, not to say a yearly breakdown of such figures in Hong Kong prior to the Relevant Date. In addition, the market intelligence report included in the exhibits did not show any statistics or information relating to market information of the VOGUE/VOGUE CHINA magazines in Hong Kong.

85. Although the Opponent claimed that the VOGUE CHINA magazine, the activities organized by the VOGUE CHINA magazine, its collaboration with banks and TV shows were widely reported in Mainland China, and a lot of movie stars, celebrities, top models (including those from Hong Kong) were featured on the VOGUE CHINA magazine and/or attended the activities,26 such evidence of promoting the Opponent’s “VOGUE” mark is rather vague in terms of how it relates back to Hong Kong customers. Most of the evidence exhibited were in relation to the VOGUE CHINA magazine in which as mentioned above, there is no evidence as to its circulation in Hong Kong. The activities and events organized by the VOGUE CHINA magazine, and its collaboration with banks and TV shows were all held/conducted/broadcast in Mainland China, and there is no evidence to show that these activities/events/collaboration/TV shows were reported, applied to, broadcast or viewed in Hong Kong. Although some of the articles are online articles, there is no evidence as to the extent to which these articles were visited by members of the public in Hong Kong before the Relevant Date. Although as mentioned above, Ms. Leung claimed that the Opponent’s “VOGUE Fashion’s Night Out” fashion event organized in Hong Kong 2012 is a way of using and promoting the Opponent’s Marks in Hong Kong, such claim is not supported by any evidence filed.

86. Although it is stated that the Opponent has applied for and obtained registrations of trade marks incorporating the word “VOGUE” in many countries, and the Opponent’s

25 Para 12 above. 26 Paras 13 to 15 above. - 24 -

“VOGUE” mark was first registered in the US in 1908 under class 16,27 no exhibit has been filed in support of this claim. The extent as to how such registration in the US in 1908 as well as other foreign registrations of the “VOGUE” mark as claimed by the Opponent reflect use or recognition of the Opponent’s “VOGUE” mark are not known.

87. Although Exhibit “DG-15” includes an example of the Opponent’s application to oppose the Applicant’s trade mark applications in Mainland China in respect of the subject mark, the said opposition is still in process and the results unknown. There is no evidence that any of the Opponent’s Marks has been recognized as a well-known trade mark by any competent authority in any jurisdiction.

88. There is no evidence of the value associated with the Opponent’s “VOGUE” mark.

89. Having regard to the totality of the Opponent’s evidence filed in these proceedings and all relevant factors for consideration in accordance with section 1, Schedule 2 to the Ordinance, I find that the Opponent has failed to establish that the Opponent’s “VOGUE” mark is well known in Hong Kong as at the Relevant Date.

90. The requirements listed in paragraph 74(a) to (c) above are cumulative. Each of those requirements must be established before a claim under section 12(4) of the Ordinance is made out. Since the Opponent has failed to establish the requirement referred to in paragraph 74(a) above, the claim under section 12(4) of the Ordinance necessarily fails.

Opposition under section 11(5)(a) and/or 12(5) of the Ordinance

91. Section 11(5)(a) of the Ordinance provides that:

“(5) A trade mark shall not be registered if, or to the extent that – (a) its use is prohibited in Hong Kong under or by virtue of any law;”

92. Section 12(5) of the Ordinance provides, inter alia, as follows:

“(5) … a trade mark shall not be registered if, or to the extent that, its use in Hong Kong is liable to be prevented –

27 Para 11 above. - 25 -

(a) by virtue of any rule of law protecting an unregistered trade mark or other sign used in the course of trade or business (in particular, by virtue of the law of passing off); or (b) by virtue of an earlier right other than those referred to in paragraph (a) or in subsections (1) to (4) (in particular, by virtue of the law of copyright or registered designs), and a person thus entitled to prevent the use of a trade mark is referred to in this Ordinance as the owner of an earlier right in relation to the trade mark.”

93. In the Statement of Grounds, the Opponent claims that:

“11. One of the components of the [subject mark] is ‘VOGUE’ which is the main element of the Opponent’s ‘VOGUE Marks’. Due to the high distinctiveness and goodwill of the Opponent’s ‘VOGUE Marks’, the use of the [subject mark] on the [subject goods and services] will likely cause confusion to the public. The [subject goods and services] provided by the Applicant under or by reference to the [subject mark] are very likely to be perceived by the public as being provided by or connected with the Opponent or the [subject mark] is a derivation of the Opponent’s VOGUE marks.”

“16. … registration of the subject mark is contrary to Section 11(5)(a) and/or Section 12(5) of the Ordinance because use of the [subject mark] in Hong Kong is liable to be prevented by virtue of the law of passing off and the Opponent is the owner of an earlier rights entitling it to prevent such uses, namely right through the prior use of its trademarks in relation to goods and/or services that are identical or similar to those for which the Applicant seeks registration.”

94. The basis of this ground pleaded is essentially that use of the subject mark would constitute passing off.

95. The ground under section 11(5)(a) of the Ordinance, however, is an absolute ground for refusal, and is concerned with the trade mark itself. An objection that use of a mark would cause passing off arises under section 12(5)(a) of the Ordinance and not under section 11(5)(a).28 Further, for an objection to arise under section 11(5)(a), it is necessary to identify a specific legal provision by virtue of which use of the mark is prohibited in Hong Kong. Apart from its passing off claim, the Opponent has not identified any legal provision by virtue of which use of the mark is prohibited in Hong Kong. The ground of opposition under section 11(5)(a) of the Ordinance therefore

28 Kerly’s Law of Trade Marks and Trade Names (16th Edn.) para. 10-223. - 26 - necessarily fails.

96. I turn to consider the ground under section 12(5)(a) of the Ordinance.

97. The issue for determination is whether at the Relevant Date, use of the subject mark by the Applicant was liable to be prevented by virtue of the law of passing off.

98. The elements of the tort of passing off as formulated by Lord Oliver in Reckitt & Colman Products Limited v. Borden [1990] R.P.C. 341 (the JIF case) have been repeatedly relied upon (e.g. Ping An Securities Ltd v 中國平安保險 (集團) 股份有限公司 (2009) 12 HKCFAR 808). Adapted to the facts of the present case, the Opponent has to establish that:

(a) the Opponent has sufficient goodwill attached to the Opponent’s goods and services in the mind of the purchasing public by association with the Opponent’s Marks or any of them;

(b) the Applicant has made a misrepresentation leading or likely to lead the public to believe that the subject goods and services offered by the Applicant are the goods and services of the Opponent; and

(c) the Opponent suffers, or is likely to suffer, damage by reason of the erroneous belief engendered by the Applicant’s misrepresentation that the source of the Applicant’s subject goods and services are the same as the source of the goods and services offered by the Opponent.

99. To establish a likelihood of deception or confusion in an action for passing off where there has been no direct misrepresentation29 generally requires the presence of two factual elements:

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

(b) 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 defendant's goods or business are from the same source or are connected.

29 For example, an express statement that the defendant's goods or services are goods or services of the plaintiff. - 27 -

100. 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;

(c) the similarity of the mark, name etc. used by the defendant to that of the plaintiff;

(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.30

101. The relevant date for determining the criteria under section 12(5)(a) of the Ordinance is the date of the application for registration of the mark in suit or the date of commencement of the conduct complained of, whichever is earlier.31 Since there is no evidence of use by the Applicant of the subject mark in Hong Kong before the Application Date, the relevant date is the Application Date, i.e. 6 March 2018.

Goodwill

102. Ms. Leung submitted that due to high volume of circulation of the VOGUE magazines, the VOGUE magazines and the Opponent’s Marks become well-known and popular worldwide including Hong Kong. She submits that substantial goodwill has been attached to the goods and services provided by the Opponent in the mind of the purchasing public by association with the Opponent’s Marks.

103. I have considered the Opponent’s evidence, as summarized in paragraphs 10 to 18 and analyzed in paragraphs 82 to 88 above. Almost all evidence are in relation to the Opponent’s use of its marks in Mainland China without any evidence pointing to use in Hong Kong. There is no evidence of the VOGUE/VOGUE CHINA magazines being sold

30 Halsbury's Laws of Hong Kong (2nd Edition) Vol. 33, para. [225.021]. 31 Cadbury-Schweppes Pty Ltd v The Pub Squash Co Ltd [1981] RPC 429; Inter Lotto (UK) Ltd v Camelot Group Plc [2004] RPC 9. - 28 - and distributed in Hong Kong prior to the Relevant Date, and as Mr. Hui has also pointed out in his submissions, as shown in Exhibit DG-3 to DG’s Declaration, the Hong Kong edition of the VOGUE magazine would not be launched until 2019 (i.e. after the Relevant Date). There is also no evidence on advertising and promotional expenditures of the Opponent’s Marks and its goods and services in Hong Kong nor the Opponent adduced evidence such as marketing invoices, brochures or other promotional materials to demonstrate the Opponent’s promotion efforts in relation to the Opponent’s Marks in Hong Kong. Whilst the Opponent adduced some evidence on promotional activities organized by or collaborated with the VOGUE CHINA magazine, those were all held in Mainland China. There is no evidence of use relating to Hong Kong to support the Opponent’s claim that substantial goodwill has been established in relation to the Opponent’s Marks in Hong Kong. In the circumstances, whilst I accept that the Opponent has built up some goodwill and reputation in relation to the Opponent’s “VOGUE” mark in Mainland China in relation to “magazines”, however, there is nothing in the evidence to support that such goodwill and reputation has been extended or spilled over to Hong Kong. The Opponent’s evidence is simply insufficient to support any goodwill having been established in relation to the Opponent’s Marks and the Opponent’s goods and services before the Relevant Date in Hong Kong.

104. As the element of goodwill for establishing a case under section 12(5)(a) is not proved, it is not necessary for me to make a finding on the other requirements. The opposition under section 12(5)(a) must fail.

105. I turn to consider the ground under section 12(5)(b) of the Ordinance.

106. In the Statement of Grounds, the Opponent only asserted that it is the owner of an earlier right, namely the right through the prior use of its trade marks. There is a lack of particulars to support the assertion that the use of the subject mark is prohibited by any other earlier right, such as by virtue of the law of copyright. The Opponent has not pleaded in the Statement of Grounds that it owns any copyright in the Opponent’s Marks. There is also no information, let alone evidence, on any copyright work(s) relied upon.

107. In the circumstances, the ground of opposition under section 12(5)(b) of the Ordinance is neither properly pleaded nor made out.

Conclusion and Costs

108. I have considered each of the grounds of opposition relied on by the Opponent and found that none of them has been made out. The opposition against the subject

- 29 - application to register the subject mark in respect of the subject goods and services therefore fails.

109. As the opposition has failed, I award the Applicant costs. Subject to any representations, as to the amount of costs or calling for special treatment, which either party may make 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 between the parties.

(Emily WONG) for Registrar of Trade Marks 5 July 2021

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Annex 1

Subject goods and services

Class Specification Number 9 Computers; apparatus and instruments of facial recognition system; Photocopiers [photographic, electrostatic, thermic]; Weighing machines; Measures; Mobile telephones; Camcorders; Cameras [photography]; Stereoscopes; Wires, electric; Switches, electric; Remote control apparatus; Alarms; Eyeglasses; Batteries, electric . 14 Jewellery rolls; Bracelets [jewellery, jewelry (Am.)]; jewellery charms; Brooches [jewellery, jewelry (Am.)]; Chains [jewellery, jewelry (Am.)]; Tie clips; Earrings; Rings [jewellery, jewelry (Am.)]; Cuff links; Jewellery findings; Clocks; Wristwatches . 18 Fur-skins; Pocket wallets; Shopping bags; Bags; Key cases; Furniture coverings of leather; Reins for guiding children; Umbrellas; canes; Harness fittings. 24 Textile material; Non-woven textile fabrics; Wall hangings of textile; Felt; Handkerchiefs of textile; Household linen; Covers [loose] for furniture; curtains of textile or plastic; Fitted toilet lid covers of fabric; flags of textile or plastic. 25 Sweaters; Shirts; Ready-made clothing; Trousers; Outerclothing; Knitwear [clothing]; Skirts; Top coats; Clothing of leather; Tee-shirts; Underwear; Underpants; Shoes; Hats; Hosiery; Gloves [clothing]; Scarfs; Neckties; Girdles . 26 Embroidery; Trimmings for clothing; Hair grips; Brooches [clothing accessories]; Ornamental novelty badges [buttons]; Fastenings for clothing; Belt clasps; Slide fasteners [zippers]; False hair; Needles; Artificial flowers; Collar supports; Heat adhesive patches for decoration of textile articles ([haberdashery]. 35 Advertising; Presentation of goods on communication media, for retail purposes; Commercial administration of the licensing of the goods and services of others; Marketing; Sales promotion for others; Personnel recruitment; Relocation services for businesses; Photocopying services; Accounting; Rental of vending machines; Sponsorship search; wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; retail services for pharmaceutical, veterinary and sanitary preparations and medical supplies.

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Annex 2

Opponent’s Marks registered in Hong Kong

Registration Registration Trade mark Class Number and Specification number date 199303467 4.3.1989 Class 16 magazines. 200212175 2.2.2002 Class 16 magazines, books and printed materials; all included in Class 16. 2003B08801 14.6.2001 Class 38 electronic mail services; rental of electronic mail boxes; providing telecommunication access to a global computer network or electronic messaging systems; all included in Class 38. 200311538 20.9.2002 Class 16 magazines, books and printed materials; all included in Class 16. 2003B16492 9.12.1997 Class 43 restaurant and catering services; all included in Class 43. 300258796 29.7.2004 Class 35 Information services relating to advertising and promotion; business information services, none relating to laundering and dry-cleaning; all provided on-line from a computer database or the internet; compilation of advertisements for use as web pages on the internet; compilation of directories for publishing on the internet; provision of space on websites for advertising goods and services; auctioneering provided on the internet; business administration services for the processing of sales made on the internet and for the administration of shopping malls; the taking of sales orders for others; providing and updating of advertising information on a computer database; online subscription for magazine

Class 41 Provision of information and advisory services relating to culture provided

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on-line from a computer database or via the internet; information relating to entertainment or education, provided on-line from a computer database or the internet or provided by other means; electronic games services provided by means of the internet; provision of information relating to all of the aforesaid services

Class 42 Preparation and provision of information in relation to computers and computer network facilities; on-line computer services; provision of access to an electronic on-line network for information retrieval; providing access to and leasing access time to computer databases; information and advisory services relating to all of the aforesaid services.

Class 44 Information and consultancy services relating to health care and fitness provided on-line from a computer database or the internet

Class 45 Information and consultancy services relating to horoscopes provided on-line from a computer database or the internet 301042622 29.1.2008 Class 43 restaurant and café services; services for providing food and drink; temporary accommodation. 301983439 22.7.2011 Class 38 Search engine services by providing websites for searching and obtaining data on global computer networks

Class 41 Provision of information and advisory services relating to culture provided on-line from a computer database or via the internet; provision of an online interactive encyclopedia in the field of fashion, style, people and entertainment, provided on-line from a computer database or the internet or provided by other means; electronic games services - 33 -

provided by means of the internet; provision of information relating to all of the aforesaid services 302468395 14.12.2012 Class 9 Downloadable computer software for use in connection with smartphones, personal digital assistant (PDA) devices, tablet computers and other portable and handheld digital electronic devices, namely, downloadable software; video game software; computer game software

Class 42 Computer design services; application service provider (ASP) services, namely, hosting computer software applications, namely, downloadable computer software, video game software and computer game software, for use in connection with smartphones, personal digital assistant (PDA) devices, tablet computers and other portable and handheld digital electronic devices; technical support services relating to computer software; troubleshooting relating to computer software; providing a website featuring information relating to computer software 302468412 14.12.2012 Class 9 Downloadable computer software for use in connection with smartphones, personal digital assistant (PDA) devices, tablet computers and other portable and handheld digital electronic devices, namely, downloadable software; video game software; computer game software

Class 42 Computer design services; application service provider (ASP) services, namely, hosting computer software applications, namely, downloadable computer software, video game software and computer game software, for use in connection with smartphones, personal digital assistant (PDA) devices, tablet computers and other portable and handheld digital electronic - 34 -

devices; technical support services relating to computer software; troubleshooting relating to computer software; providing a website featuring information relating to computer software 303092814A 6.8.2014 Class 25 A Clothing, apparel, footwear, hats, scarves, socks, gloves, women's clothing, fashion accessories namely, headgear, belts, scarves. 303092823A 6.8.2014 Class 25 A Clothing, apparel, footwear, hats, scarves, socks, gloves, women's clothing, fashion accessories namely, headgear, belts, scarves. 303375577 16.4.2015 Class 35 Retail store services featuring clothing, fashion accessories, footwear, headgear, intimate apparel, handbags, purses, leather goods, leather accessories, luggage, umbrellas, parasols. 303375586 16.4.2015 Class 35 Retail store services featuring clothing, fashion accessories, footwear, headgear, intimate apparel, handbags, purses, leather goods, leather accessories, luggage, umbrellas, parasols. 303764773 4.5.2016 Class 43 Restaurant and café services; services

for providing food and drink; temporary accommodation.

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