TRADE MARKS ORDINANCE (Cap. 559) OPPOSITION TO TRADE MARK APPLICATION NO.: 303148236 MARK: CLASS: 32 APPLICANT: CHU-SHIK-HOE-SA AMOREPACIFIC (AMOREPACIFIC CORPORATION) OPPONENT: CHINA RESOURCES SNOW BREWERY (LIAO NING) COMPANY LIMITED _____________________________________________________________________ STATEMENT OF REASONS FOR DECISION Background 1. On 25 September 2014, Chu-shik-hoe-sa Amorepacific (Amorepacific Corporation) (“the Applicant”) filed an application (“the subject application”) under the Trade Marks Ordinance (Cap. 559) (“the Ordinance”) for the registration of the mark “ ” (“the subject mark”). 2. Registration is sought in respect of “Fruit juices; Powders for effervescing beverages; Soda water; Orange juice beverages; Juice powders for beverages; Smoothies; Preparations for making beverages (Fruit extracts); Preparations for making beverages (Ginseng extracts); Ginseng juices (beverages); Red ginseng juices (beverages); Aerated water; Mineral water; Vegetable juices (beverages); Non-alcoholic beverages for health and beauty” in class 32 (“the subject goods”). 3. Particulars of the subject application were published on 31 October 2014. China Resources Snow Brewery (Liao Ning) Company Limited (“the Opponent”) filed on 30 January 2015 a notice of opposition to the subject application 1 together with a statement of grounds of opposition (“Notice of Opposition”). A counter-statement (“Counter-statement”) was filed by the Applicant on 30 April 2015 in response to the Notice of Opposition filed. 4. As evidence in support of the opposition, on 23 October 2015 the Opponent filed under rule 18 of the Trade Marks Rules (Cap.559, sub. leg.)(“the Rules”) a statutory declaration made by Li Yuqiong of Unitalen Attorneys at Law, the trade mark agent of the Opponent in Liaoning China, together with exhibits (“Li’s 1st SD”). The Applicant filed on 15 July 2016 under rule 19 of the Rules a statutory declaration made by Gab-Young Lim, manager of the Applicant’s IP Department, together with exhibits (“Lim’s SD”) in support of its application. On 16 January 2017, the Opponent filed under rule 20 another statutory declaration made by Li Yuqiong, together with exhibits (“Li’s 2nd SD”) as evidence in reply. 5. The opposition hearing was originally fixed to be heard on 21 May 2019. Both parties filed a notice of intention to appear at the hearing. The hearing was subsequently rescheduled to 24 June 2019 on the Opponent’s request. Despite the written confirmations to attend the rescheduled hearing, both parties eventually indicated in writing that they would not attend the hearing. I now proceed to decide the matter without a hearing under rule 75 of the Rules. Notice of Opposition 6. It is pleaded in the Notice of Opposition that the Opponent’s predecessor Shenyang Brewery started the production and sales of beer in the 1930s and first introduced Snow Beer (雪花啤酒) in or about 1964. In 1993, the Opponent was incorporated (under its former name of Shenyang China Resources Snow Brewery Limited) in Shenyang to carry on the business of Shenyang Brewery in the production and sales of beer and beverages, in particular Snow Beer. 7. The Opponent’s holding company China Resources Breweries Ltd. was established in 1994 and changed its name to China Resources Snow Breweries Ltd (“CR Snow”) in 2004. CR Snow and the Opponent are collectively referred 2 to as the “Opponent’s Group”. The Opponent’s Group manufactures and sells over 30 brands of beer and beverages, with Snow Beer being its principal brand. 8. The Opponent is the owner of the marks “雪花” (Trade Mark no. 200311159), “ ” (Trade Mark no. 301809892), and other marks containing the words “雪花” or “SNOW” for beer in class 32 in Hong Kong. A total of nine registered marks in Hong Kong are set out in the Notice of Opposition which are hereinafter collectively referred to as the “Opponent’s Marks” (see Annex). 9. It is pleaded that some of the Opponent’s Marks have been used in relation to the Opponent’s beer and beverages as early as since 1964 in the Mainland China; the Opponent’s beer and beverages have been exported to and sold in Hong Kong since 2000; by virtue of the substantial use and promotion of the Opponent’s Marks, the Opponent has built up reputation and goodwill in the Opponent’s Marks and the Opponent’s Marks have become well-known in the Mainland China and Hong Kong. 10. It is also pleaded that the subject mark is similar to the Opponent’s Marks and the subject goods are similar to the Opponent’s beer and beverages, and the use of the subject mark will mislead consumers to associate the subject mark with the Opponent and/or the Opponent’s beer and beverages under the Opponent’s Marks; the use of the subject mark is calculated to deceive and confuse the Opponent’s customers; the use of the subject mark will take unfair advantage of, or be detrimental to, the distinctive character or repute of the Opponent’s Marks in Hong Kong; and the use of the subject mark will constitute passing off against the Opponent’s Marks and the Opponent’s goods. 11. The Opponent seeks to rely on sections 11(4)(b), 11(5)(a), 11(5)(b), 12(1), 12(2), 12(3), 12(4) and 12(5) of the Ordinance in support of the opposition. The Opponent requests that the subject application be refused and costs be made in favour of the Opponent. 3 Counter-Statement 12. Save that it is admitted in the Counter-statement that the Opponent is the owner or applicant of the Opponent’s Marks in Hong Kong, the Applicant denies or does not admit the grounds pleaded in the Notice of Opposition. Amongst others, the Applicant pleads that it has a bona fide intention to use the subject mark or other marks incorporating the subject mark or any derivative versions in respect of the subject goods in Hong Kong. The Applicant also disputes that the Opponent’s goods include “beer and beverages” as the Opponent’s Marks are applied for or registered in respect of “beer” only. 13. The Applicant urges the Registrar to accept the subject application and award costs in favour of the Applicant. Relevant date 14. The relevant date for considering the opposition is 25 September 2014, that is the filing date of the subject application for registration. The Opponent’s evidence of use 15. Li’s 1st SD sets out the history and business of the Opponent’s Group. In addition to those set out in the Notice of Opposition (see paragraphs 6 and 7 above), it is averred that the Chinese words “雪” and “花” of the Opponent’s Marks represent respectively the rich and white foam, and the flowery taste of the beer. As at the end of June 2015, the Opponent’s Group operated 98 breweries in 25 provinces in China with an aggregate annual production capacity of over 20,000,000 kilolitres, accounting for over 23% of the whole beer market in China. Exhibits LY-1A to LY-3 to Li’s 1st SD include printouts of the Wikipedia page and copy reports of the Opponent’s Group. 16. In addition to the Opponent’s Marks pleaded in the Notice of Opposition, two other registered marks in Hong Kong and fifty registered marks in the Mainland China are set out in the annex to Li’s 1st SD. Printouts of the registration 4 particulars of the said marks are displayed at exhibit LY-4. 17. It is deposed that the Opponent’s Marks were first used in relation to the Opponent’s Snow Beer (“Opponent’s Goods”) in the Mainland China in 1997 and the Opponent’s Goods have been exported to and sold in Hong Kong since 2000. All of the Opponent’s Goods invariably bear the Opponent’s Marks, in particular the “雪花” mark, prominently on the bottles and the packaging. Exhibit LY-5 includes copy photos and promotional materials of the Opponent’s Goods. The Opponent’s Marks have also been used extensively in the corporate documents and invoices of the Opponent’s Group. Included at exhibit LY-6 are copies of invoices and licensing agreements which relate to the Mainland China market. 18. The average worldwide sales turnover of the Opponent’s Goods was about 8.37 million kilolitres and estimated to be HKD 21,204 million per annum from 2007 to 2014. Exhibit LY-7 includes copy extracts of the annual reports of the Opponent’s Group showing the said turnovers and the Opponent’s Marks. The Opponent does not have record of the turnover in beer division in Hong Kong. The overall turnover of the Opponent’s Group in Hong Kong (inclusive of beer) was about HKD 8,758 million per annum from 2011 to 2014. Exhibit LY-8 displays a copy of two invoices issued by the Opponent’s subsidiary showing sales of the Opponent’s Goods to Hong Kong, which however post-dated the relevant date. 19. The Opponent’s Goods were the best-selling single beer brand by volume in China for the 9th consecutive year in 2014. The market position of the Opponent’s Group in southern China has been reinforced by its acquisition and seamless integration of Kingway Brewery, which led to an increase in market share especially in Guangdong Province neighbouring Hong Kong. 20. The Opponent’s Group has spent substantial amount of money in promoting and advertising the Opponent’s Marks and the Opponent’s Goods through newspaper, outdoor and TV advertising, etc. The worldwide advertising expenses (primarily in the Mainland China, but inclusive of Hong Kong) were about RMB 37 million per annum from 2007 to 2011.