TRADE MARKS ORDINANCE (CAP. 559) OPPOSITION TO TRADE MARK APPLICATION NO. 301601720 MARK : CLASSES : 41, 45 APPLICANT : LARK FILMS DISTRIBUTION LIMITED OPPONENT : UNITED ARTISTS CORPORATION ______________________________________________________________________ STATEMENT OF REASONS FOR DECISION Background 1. On 30 April 2010 (“Application Date”), Lark Films Distribution Limited (“Applicant”) filed an application (“subject application”) under the Trade Marks Ordinance (Cap. 559) (“Ordinance”) for registration of the following mark (“subject mark”): Registration is sought in respect of the following services (“subject services”): Class 41: Entertainment services in the nature of production, distribution, leasing and rental of motion picture films, pre-recorded video cassettes, digital versatile discs (DVD), pre-recorded video cassettes, digital versatile discs (DVD) and other discs and non-disc digital storage media; entertainment services in the nature of audio visual works, motion pictures, trailers, television programming, music and games distributed by means of global computer and communication networks; providing information in the field of entertainment, 1 movies and music over global computer and communication networks; providing online games; motion picture and television studio services; provision of cinema and theater facilities; rental of apparatus for the recording, transmitting, receiving, modifying, editing or reproduction of motion picture films, sound and video; recording, modifying, and editing services for film, sound and video; all included in Class 41. Class 45: Consultancy, research and advisory services in relation to the licensing, exploitation, management, sale and protection of copyright, trade marks and other intellectual property and legal rights relating to motion picture films, pro-recorded video cassettes, digital versatile discs (DVD) and other disc and non-disc digital storage media, audio visual works, trailers, television programmes, music and games; all included in Class 45. 2. Particulars of the subject application were published on 17 September 2010. United Artists Corporation (“Opponent”) filed a notice of opposition on 1 December 2010 (“Notice of Opposition”) in respect of the subject application together with a statement of the grounds of opposition (“Grounds of Opposition”). 3. On 25 March 2011, the Applicant filed a counter-statement (“Counter-statement”) in response to the Notice of Opposition. 4. The Opponent’s evidence consists of : (i) a statutory declaration of Michael B. Moore made on 17 September 2012 (“Moore’s 1st Declaration”); (ii) a statutory declaration of Michael B. Moore made on 13 December 2013 (“Moore’s 2nd Declaration”); and (iii) a statutory declaration of Lee Davina Kwok Yu made on 13 December 2013 (“Lee’s Declaration”). 5. The Applicant’s evidence consists of a statutory declaration of Wong Kim Yeung Bryan made on 21 June 2013 (“Wong’s Declaration”). 6. The opposition hearing took place before me on 21 May 2015. Mr. Anthony Evans, authorized representative of Marks & Clerk, appeared for the Opponent. Mr. Philips B.F. Wong, Counsel, instructed by Chui & Lau appeared for the Applicant. 2 Grounds 7. The Opponent relies on the grounds under the following sections of the Ordinance: (i) section 12(3); (ii) section 12(4); (iii) section 12(5)(a); and (iv) section 11(5)(b). Relevant date 8. The relevant date for considering this opposition is the Application Date, i.e. 30 April 2010. The Opponent 9. According to the Opponent, the film industry involves three distinct parts which are involved in (i) the production, (ii) the distribution and (iii) the exhibition of films respectively. The following entries in the publication Film Finance & Distribution – a dictionary of terms 1 explain the roles of the exhibitor and the distributor respectively: “EXHIBITOR. The owners or operators of movie theatres or the actual theatres which exhibit feature films; also any person engaged in the business of operating a theatre….” “DISTRIBUTOR. Any person engaged in the business of renting, selling or licensing motion pictures to exhibitors; the person(s) or entities operating between the producer and exhibitor of motion pictures who obtain rights to the film, arrange for its exhibition, send such film to exhibitors (sometimes through sub-distributors), and collect film revenues and distribute such revenues to any profit participants based on their individual agreements. A distributor will typically deduct a distribution fee and distribution expenses at some pre-determined point from the revenue stream. The distributor is also generally responsible for the promotion of a film….” 10. The Opponent is a producer and distributor of films. According to Moore’s 1st Declaration, the Opponent’s business was founded in 1919 under the “UNITED 1 Exhibit “12” to Moore’s 2nd Declaration. 3 ARTISTS” name. It has been developed first in the United States of America and then also in other countries.2 The Opponent was sold to Metro-Goldwyn-Mayer in 1981.3 Annex “1” to Moore’s 1st Declaration is a list of more than 1,200 films of the Opponent released between 1931 and 2010. Annex “2” to Moore’s 1st Declaration is a list of fifty selected films (the “50 selected films”)4 distributed in Hong Kong between 1961 and 2009 and their release dates in Hong Kong. 11. The Opponent claims that all of the Opponent’s films have been marketed under and by reference to the name and mark “UNITED ARTISTS” and also “UA”.5 I will return to take a closer look at the evidence on which mark(s) have actually been used in Hong Kong. 12. The Opponent relies on the following marks in the subject opposition proceedings (collectively, the “Opponent’s UA marks”): UA 13. The Opponent owns the Hong Kong registered trade marks listed in Schedule 1 hereto (collectively, the “Opponent’s HK Registered Marks”).6 Copies of registration certificates in respect of four of the Opponent’s HK Registered Marks are included in Annex “6” to Moore’s 1st Declaration, and details of those four marks are listed in Schedule 2 hereto. The Opponent is not, however, relying on any of the Opponent’s HK Registered Marks in the subject opposition proceedings. 14. The Opponent claims that it first used the name and mark “UA” in the United States of America in or shortly after 1919, and in Hong Kong since the 1940’s.7 Set out in Annex “4(A)” to Moore’s 1st Declaration are the Opponent’s cumulative income (including theatrical revenue8 and other revenue9) and advertising expenditure in Hong 2 Moore’s 1st Declaration, para. 5. 3 Annex “3” to Moore’s 1st Declaration. 4 According para. 9 of Moore’s 2nd Declaration, the 50 selected films were not the only films which the Opponent had ever distributed in Hong Kong, but were, according to the Opponent, “50 of the most notable and well-known films, about which [the Opponent] wanted to provide further information”. 5 Moore’s 1st Declaration, para. 4. 6 Annex “5” to Moore’s 1st Declaration. 7 Moore’s 1st Declaration, paras 6-7. 8 According to para. 7 of Moore’s 1st Declaration, the theatrical revenues are “the portion of box office take that has been paid to the Opponent as film rental receipts.” 9 According to para. 7 of Moore’s 1st Declaration, the “other” revenue “represents licensing fees paid to the Opponent by third party licensees broadcasting or distributing the films on television, DVD, airlines, and other outlets.” 4 Kong in respect of each of the 50 selected films for the period from each film’s inception to the first quarter of 2010. For example, for a film released in Hong Kong in 1961, the relevant figures at Annex “4(A)” are the Opponent’s cumulative income in Hong Kong for that film from 1961 to the first quarter of 2010, and the cumulative advertising expenditure in Hong Kong for that film over the same period. The currency for the figures, however, is not provided. Moreover, the figures are cumulative figures, and there is no breakdown for each year. They do not show the Opponent’s income or advertising expenditure in Hong Kong in any given year. 15. Included in Annex “4(B)” to Moore’s 1st Declaration are some distribution agreements dated between 1949 and 1951 as well as some correspondence dated between 1946 and 1951 relating to the release and distribution of the Opponent’s films in Hong Kong. Although these show that some of the Opponent’s films were distributed in Hong Kong in the 1940’s to 1950’s and although a few individuals who wrote the relevant documents used “UA”, perhaps as an abbreviation, to refer to the Opponent, they do not show what mark(s) were used on the relevant films or in any advertisements or promotional materials in relation to those films. 16. Annex “5” to Moore’s 1st Declaration is a schedule of the Opponent’s registrations in various countries or areas in the world for marks that comprise or contain “UA”, “UNITED ARTISTS” or both of those components. Annex “6” to Moore’s 1st Declaration includes copies of registration certificates for some of those marks. These two annexes indicate that marks of the Opponent include, inter alia, marks not relied on in the subject opposition proceedings, such as marks described as “METRO-GOLDWYN-MAYER/UNITED ARTISTS and Lion Logo I”, “MGM/UA ENTERTAINMENT CO. and Lion Logo II”, “UNITED ARTISTS”, “UNITED ARTISTS and Hexagonal Device”, “UNITED ARTISTS and Spotlight Device”, “UNITED ARTISTS and Sunburst Logo”, “UNITED ARTIST Chinese Characters” and “UNITED ARTISTS with Star Device”. 17. Set out in Annex “7” and Annex “8” to Moore’s 1st Declaration respectively are the Opponent’s total worldwide sales revenue (including theatrical revenue10 and other revenue,11 and expressed in US dollars) and worldwide advertising expenditure (also expressed in US dollars) in respect of each of the 50 selected films for the period from each film’s inception to the first quarter of 2010.