TRADE MARKS ORDINANCE (Cap. 559) OPPOSITION TO TRADE MARK APPLICATION NO. 300051001 MARK : CLASS : 32 APPLICANT : TING YI (CAYMAN ISLANDS) HOLDING CORP. OPPONENT : ESPN, INC. STATEMENT OF REASONS FOR DECISION Background 1. On 22 July 2003, Ting Yi (Cayman Islands) Holding Corp. (the “applicant”) filed an application under the Trade Marks Ordinance, Cap 559 (the “Ordinance”) for registration of the mark, which is represented above (the “suit mark”), in Class 32 in respect of “beers; essences for making beverages, fruit juices, fruit nectars, grape must, isotonic beverages, lithia water, milk of almond beverages, mineral water, non-alcoholic beverages, non-alcoholic fruit extracts, non-alcoholic fruit juice beverages, peanut milk beverages, powders for effervescing beverages, soda water, syrups for lemonade, tomato juice for beverages, waters, whey beverages; aerated waters; syrups and other preparations for making beverages”. 2. Particulars of the subject application were published on 17 October 2003. The Opponent filed a notice of opposition which includes the grounds of opposition on 16 January 2004. 3. The opposition hearing took place before me on 17 October 2007. At the hearing, Mr. C.W. Ling, counsel, instructed by China.hk Intellectual Property Services Co., Ltd., appeared for the applicant, and Mr. Philips B.F. Wong, counsel, instructed by Sit, Fung, Kwong & Shum, Solicitors, appeared for the opponent. 1 Grounds of opposition 4. The opponent opposes registration of the suit mark under sections 3(1), 11(1)(a), 11(1)(b), 11(1)(c), 11(1)(d), 11(4)(a), 11(5)(a), 11(5)(b), 12(1) to 12(4), 12(5) and 63 of the Ordinance. The opponent’s marks 5. The opponent states at paragraph 3 of the grounds of opposition (which has been amended to include the graphical representations of the marks mentioned therein) that it is the owner of the following trade marks, which have been registered with the Hong Kong Trade Marks Registry in a number of classes in respect of different goods and services, details of the registration are set out in Appendix I hereto: (a) (referred to as the “SPORTSCENTER” mark) (b) (referred to as the “X Games & globe device (black)” mark) (c) (referred to as the “X Games & globe device (grey)” mark) (d) (referred to as the “XG X GAMES” mark) (e) (referred to as the “X Games & globe device (white)” mark) 2 Counter-statement 6. The applicant filed a counter-statement on 26 April 2004. In the counter-statement, the applicant avers that to the general public at large in Hong Kong, the suit mark is visually, phonetically and conceptually very different from the marks of the opponent as depicted in paragraph 5 above, and the goods it sought to be registered upon, namely, beers and other non-alcoholic drinks in Class 32, are totally unrelated to the goods or services upon which the opponent has secured or intended to secure registration for its marks. The applicant further avers that “although ESPN is known to a section of the Hong Kong public for sports events and sports programmes, the said marks of the opponent are not well known in Hong Kong”, and they are not entitled to protection under the Paris Convention as well-known trade marks under section 63 of the Ordinance. The opponent and its evidence 7. The opponent’s evidence comprises two statutory declarations of David Pahl. The first one was made on 14 April 2005 and the second on 6 July 2006. Mr. Pahl is the Vice President of the opponent. 8. According to Mr. Pahl, the opponent is one of the world’s leading multinational, multimedia sports entertainment companies. Established in 1979, the opponent has for many years been designing, packaging, exporting, distributing and selling a variety of goods, including videos, CDs, DVDs, computer games, bicycles, books, magazines, bags, luggage, clothing, hats and footwear, toys and sports equipment and beverages, and has been organizing, conducting and promoting sports competitions and providing sports entertainment services via different media, under and by reference to various marks, including what are called the “X GAMES, GAMES & Device trade marks”. The trade mark “X GAMES” was coined by the opponent in 1996 in connection with the X GAMES sporting event, which features a variety of action sports. 9. A comprehensive summary of what the X GAMES sporting event is about can be found in an article published in Sport Scene which was issued by the Hong Kong Sports Development Board at the end of 2003 (exhibited in Exhibit B, see paragraph 12 below):- “In recent years, a sporting culture called X-Games has taken a firm grip on sports lovers and has spread across the world at the speed of light. Its unconventional and thrill-seeking components have won the hearts of like-minded 3 enthusiasts all over the world and has especially gained popularity among young people. The history of X-Games roughly dates back to 1995 when the US sports channel ESPN first held a competition for minority sports. These were sports that, at the time, did not fit into the description of mainstream sports. Many of these sports originated from street games and all of them featured elements of highly skilful stunts. And it is this aspect, the art of taking athletic skills to the extreme, that helped give these sports the name “Extreme Games”. This was changed to “X-Games” in the following year.” 10. Mr. Pahl claims that since 1996, the X GAMES sporting event has been held at least once every year in different parts of the world, and the trade mark “X GAMES” has become one of the world’s best known action sports trade marks. 11. Mr. Pahl further claims that the opponent first used its marks in Hong Kong in 1996. The opponent’s “Asian X GAMES” event was held in Phuket, Thailand, in 1998, 1999 and 2000 and in Kuala Lumpur, Malaysia, in 2002, 2003 and 2004. X GAMES sporting events have been broadcast via ESPN Asia in Hong Kong since 1996. The opponent has also organized the “Junior X GAMES Asia” event since 1999, for athletes aged ten to fourteen. 12. Mr. Pahl exhibits copies of the following to his first statutory declaration: Exhibit information arranged in chronological order under the heading “The Life of X – A Brief History of the X Games”, downloaded from the website www.asianxgames.com. Exhibit B – an article entitled “Meeting the Extreme Challenges of X-GAMES”, published in Sport Scene, Vol. 18, issued by the Hong Kong Sports Development Board (now dissolved and replaced by the Hong Kong Sports Institute Limited) at the end of 2003. Exhibit C – certificates of registration of some of the marks registered by the opponent with the Hong Kong Trade Marks Registry. Exhibit D – certificates of registration of marks registered by the opponent with trade marks registries in various countries around the world. 4 Exhibit E – extracts of event management reports for events held in 1998, 1999, 2000, 2002 and 2004. Exhibit F – bundles of event management reviews or reports, press clippings and post event reports covering the events held in the years 1998 to 2004. Exhibit G – “Asian X Tour and Asian X Games Qualifier 2000 Telecast Schedule”, downloaded from www.expn.go.com. Exhibit H – a television schedule entitled “X Games X Broadcast Schedule”, downloaded from www.asianxgames.com. Exhibit I – a network distribution record, with a chart entitled “Channel distribution for July 2004”, issued by Corporate Communications Department of Singapore. Exhibit J – network distribution records, with charts showing channel distribution for June or July in the years 2000 to 2004, issued by Corporate Communications Department of Singapore. Exhibit K – extracts of management reviews or reports, press clippings and post event reports covering the “Asian X GAMES”. Exhibit L – extracts of management reviews or reports showing figures of promotion for the “Asian X GAMES”. Exhibit M – a table showing total broadcast hours via ESPN Asia and Hong Kong TVB for the Asian X GAMES events 2002, 2003 and 2004. Exhibit N – information captioned “Junior X Games Event Fact Sheet” for the event held during the period 3rd to 10th December 2000, downloaded from www.expn.go.com. Exhibit O – a press release entitled “Microsoft Announces Details of Japanese Xbox Launch on Feb. 22 – Japanese Pricing, Launch Games, Presales and Special Edition Xbox Announced”, downloaded from www.microsoft.com. 5 Exhibit P – extracts from the Oxford Advanced Learner’s English-Chinese Dictionary showing the meanings of “sport” and “game”. Exhibit Q – photographs, advertisements, and extracts from management reviews or reports, press clippings, post event reports and webpages, allegedly showing use of the “X GAMES” mark on products such as beverages, foodstuff, clothing, etc. 13. In his second statutory declaration, which was filed as evidence in reply to the applicant’s evidence and consists mainly of submissions and opinions which I do not propose to summarize here, Mr. Pahl exhibits copies of the following: Exhibit R – search results for the words “sport” and “game” via online dictionaries such as Compact Oxford English Dictionary, Cambridge Advanced Learner’s Dictionary, etc. Exhibit S – search results for “x sport” via the Google search engine. Exhibit T – registration certificates or official trade marks records showing applications by or registrations owned by ESPN for the “X GAMES” mark in respect of food and beverage products. Exhibit U – an article with a caption “XXX ACTION!”, downloaded from www.gadflyonline.com. Exhibit V – an article with a caption “Just in Time for X Games, 7-Eleven Introduces Intense-Flavored Mountain Dew Slurpee”, downloaded from www.7-eleven.com. Exhibit W – printout of advertisement of the 7-Eleven Mountain Dew Slurpee.