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”). - 1 - 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. - 2 - 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, The New Yorker, Allure, Q, Teen Vogue, etc.. The Opponent’s publications have been issued in many countries/region including but not limited to the USA, France, 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 fashion, beauty, culture, living and runway. As of today, the VOGUE magazine has 23 international editions including VOGUE CHINA, TEEN VOGUE and VOGUE PARIS.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.