TRADE MARKS ORDINANCE (Cap. 559) OPPOSITION TO TRADE MARK APPLICATION NO. 302404016 MARK: CLASS: 12 APPLICANT: Alan LUBINSKY OPPONENT: Ford Motor Company STATEMENT OF REASONS FOR DECISION Background 1. On 12 October 2012, Alan LUBINSKY (“Applicant”) filed an application (“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 following goods (“subject goods”): Class 12 Cars, sports cars, sports cars for road use . 3. Particulars of the subject application were published on 7 August 2015. 4. Ford Motor Company (“Opponent”) filed a notice of opposition on 5 November 2015 (“Notice of Opposition”) with grounds of 1 opposition. In response to the Notice of Opposition, the Applicant filed a counter-statement on 5 February 2016. With leave from the Registrar, the Opponent filed amended grounds of opposition on 19 February 2016 (“Amended Grounds of Opposition”) and the Applicant filed an amended counter-statement on 3 March 2016 (“Amended Counter-statement”). 5. The Opponent’s evidence consists of: (a) a statutory declaration of Peter N. Tassie, Chief Trademark Counsel of the Opponent, made on 30 June 2016 (“ Tassie’s Declaration”); and (b) a statutory declaration of Julia Voutyras, Trademark Counsel of the Opponent, made on 19 October 2017 (“Voutyras’ Declaration”). 6. The Applicant’s evidence consists of a statutory declaration of the Applicant, made on 10 April 2017 (“Applicant’s Declaration”). 7. The hearing took place before me on 15 October 2018. Mr. Philips B.F. Wong, Counsel, instructed by Emily Yip & Co., appeared f or the Applicant, and the Opponent did not appear at the hearing. I reserved my decision at the conclusion of the hearing. Grounds 8. The Opponent relies on the grounds under the following sections of the Ordinance: (a) section 11(5)(b); and (b) section 12(5)(a). 1 Relevant date 9. The relevant date for considering the opposition is 12 October 2012, 1 Amended Grounds of Opposition, paras. 21 and 22. 2 that is the filing date of the application for registration of the subject mark. Evidence of the Opponent 10. According to Tassie’s Declaration, the Opponent is a corpora tion incorporated and existing under the laws of the United States of America. It engages in the manufacturing and distribution of automobiles. The Opponent has established many automotive brands including Ford, Lincoln and Mercury. It is said to have achieved substantial sales of its automobiles and much recognition worldwide, including in Hong Kong. 2 11. In Hong Kong, the Opponent is said to own more than 60 trademark registrations/applications with the earliest registration recorded back in 1927. 3 According to the list of the Opponent’s trademark registrations/applications in Hong Kong at Exhibit FD -5 to Tassie’s Declaration, the Opponent has filed an application for “COBRA” for goods in class 12 after the relevant date. 12. It is said that, between 1962 and 1968, the Opponent co-operated with A.C. Cars Limited (“AC Company”) and Carroll Shelby in the design, manufacture and marketing of a two seat sports car powered by the Opponent’s engine, such car being named “Cobra”. In 1964, the Opponent acquired title to the “COBRA” trademark in the U.S.A. and elsewhere from Carroll Shelby, and subsequently used the “COBRA” trademark on cars, engines and parts in the U.S.A. and exported them to many other countries. 4 13. Exhibit FD-7 to Tassie’s Declaration consists of a list of the Opponent’s registrations for “COBRA” in various countries and regions further to a search conducted at the World Intellectual Property Organisation Global Brand Database. The list shows that the Opponent is the owner of 10 registrations for “COBRA” for, inter 2 Tassie’s Declaration, paras. 4 and 5. 3 Tassie’s Declaration, para. 7. 4 Tassie’s Declaration, paras. 8 and 9. See also Recitals A and B of the Licence Agreement as set out in para. 15 below. 3 alia, goods in class 12 in Canada, Finland, Ireland, Italy, Mexico, Sweden, Switzerland, the U.S.A. and the Benelux countries. According to this list, the earliest application was filed i n the Benelux countries in 1971. 14. In 1996, the Opponent entered into a licence agreement (“ Licence Agreement”) with A.C. Car Group Limited (“AC Car Group”). A copy of the Licence Agreement is exhibited at Exhibit FD -9 to Tassie’s Declaration. The Licence Agreement was executed by the Applicant on behalf of AC Car Group as the latter’s director. 15. In the recitals of the Licence Agreement, it is stated: “A. Ford [i.e. the Opponent] and [AC Company] cooperated with Carroll Shelby in the design, manufacture and marketing between 1962 and 1968 of a two seat sports car powered by a Ford engine based upon the AC Ace, such car being named Cobra (hereinafter called the “Original Cobra”). B. Ford acquired title to the COBRA trademark in the U.S.A. and elsewhere from Carroll Shelby in 1964, and Ford subsequently used the COBRA trademark on cars, engines and parts in the U.S.A. and exported to many other countries. C. Ford has applied to register or has registered the COBRA trademark in many countries including those set forth in the attached Schedule. D. [AC Car Group] wishes to manufacture and sell a derivative of the Original Cobra also powered by a Ford engine (hereinafter called the “AC Mk IV”). E. Ford is willing to license [AC Car Group] to use the COBRA trademark in relation to the AC Mk IV on the following terms and conditions.” (emphasis added) 16. The salient terms of the Licence Agreement include: 4 “1. Definitions a. “COBRA Trademark Registrations” means the trademark registrations and applications to register listed in the attached Schedule 5. … 2. Licenses Ford hereby grants to [AC Car Group] a nonexclusive, royalty-free license, without the right to grant sub -licenses, under the COBRA Trademark Registrations and any other rights that Ford may now or hereafter own in the COBRA trademark to use the name Cobra on the AC Mk IV sports car and in connection with the sale of such cars. 3. Territory The license granted pursuant to Section 2 is limited to vehicles manufactured by [AC Car Group] in the U.K. but is without limit as to sales and marketing territory… … 8. Unauthorized Use a. [AC Car Group] shall carry out investigations in each country outside of North America in which it sells AC Mk IVs bearing the COBRA trademark to establish whether and by whom unauthorized use is being made of the COBRA trademark in relation to cars and shall report the results of such investigations to Ford. b. [AC Car Group] will supply to Ford, and on request by Ford, all available documentation showing evidence of [AC Car 5 The Schedule is titled “COBRA Applications and Registration s” and refers to various applications and registrations in Argentina, Australia, Austria, Benelux, Canada, Denmark, Finland, France, Germany, Great Britain, Greece, Ireland, Italy, Japan, Mexico, New Zealand, Norway, Portugal, South Africa, Spain, Sweden, Switzerland, the U.S.A. and Venezuela. 5 Group’s] usage of the COBRA trademark. … 9. Use of Cobra by Ford Nothing in [the Licence Agreement] shall interfere with the right of Ford… to use, license, dispose of, or exercise in any way its rights in the COBRA trademark. … 14. Accrual of Trademark Rights to Ford All trademark rights arising from the use of the COBRA trademark name by [AC Car Group] during the term of [the Licence Agreement] shall accrue to Ford. [AC Car Group] agrees not to contest Ford’s rights in the COBRA trademark. 15. Good Will The parties agree that there is invaluable good will associated with the COBRA trademark… [AC Car Group] agrees that it will not do anything or engage in any activity that will reflect adversely upon or tarnish the favorable good will and reputation associated with Ford and its trademarks. 17. Effect of Termination In the event [the Licence Agreement] is terminated… [AC Car Group] agrees that it will immediately cease and desist from any and all uses of the COBRA trademark. Further, in the event of such termination… the obligations of [AC Car Group] under Sections… 15… shall survive and remain in full force and effect.” (emphasis added) 17. According to Tassie’s Declaration, in January 2001, AC Car Group submitted a request to the Opponent to widen the scope of the Licence Agreement to, inter alia, the right to use the “COBRA” trademark on derivative vehicles powered by a Lotus engine. In June 6 2001, the Opponent gave AC Car Group written notice that the licence would terminate in twelve months according to the Licence Agreement. AC Car Group did not accept the termination. 6 18. In July 2001, the Opponent brought an action against AC Car Group to prevent the latter’s anticipatory breach of the Licence Agreement and use of the Opponent’s COBRA and FORD marks without the Opponent’s authorisation. A copy of the agreed Order granted by the United States District Court for the Eastern District of Michigan on 4 March 2002 (“Order”) is included at Exhibit FD-10 to Tassie’s Declaration. The Order was consented by both the Oppo nent and AC Car Group and executed by the Applicant on behalf of the latter. 19. According to the Order, the findings of facts stipulated by the Opponent and AC Car Group and entered by the court include the following: “Ford [i.e. the Opponent] has for many years been engaged in marketing and selling automobiles, automotive engines, automotive parts, accessories, clothing and promotional goods (collectively, “Automotive Goods”) throughout the United States under Ford’s COBRA trademarks, its stylized COBRA Snake Design trademarks, and its FORD trademarks (collectively, “the Marks”).