TRADE MARKS ORDINANCE (CAP. 559) OPPOSITION TO TRADE MARK APPLICATION NO

TRADE MARKS ORDINANCE (CAP. 559) OPPOSITION TO TRADE MARK APPLICATION NO. 300402759 MARK: CLASSES: 18 and 25 APPLICANT: PACIFIC RIM INDUSTRIES PTE LTD OPPONENT: VALENTINO S.P.A STATEMENT OF REASONS FOR DECISION Background 1. On 14 April 2005, the applicant filed an application for registration ( the subject application ) under the Trade Marks Ordinance (Cap. 559) ( the Ordinance ) for the registration of the following mark :- ( the suit mark ). 2. Registration is sought in respect of goods of the following classes :- Class 18 skins (cattle-); skin (goldbeaters'-); gold beaters' skin; cattle skins; leatherboard; curried skins; pelts; animal skins; leather, unworked or semi-worked; butts [parts of kides]; imitation leather; leather (imitation-); skins of chamois, other than for cleaning purposes; chamois leather; other than for cleaning purposes; bags (net-) for shopping; beach bags; trimmings of leather for furniture; card cases [notecases]; music cases; bags (game-) [hunting accessory]; straps for skates; boxes of vulcanised fibre; travelling bags; valises; bags (garment-) for travel; travelling trunks; travelling sets [leatherware]; garment bags for travel; - 1 -

bags for climbers; straps (leather-); straps of leather [saddlery]; tool bags of leather [empty]; boxes of leather or leather board; bands of leather; valves of leather; leather shoulder belts; boxer of leather (hat-); leather thongs; leather leads; leather thread; cases, of leather or leatherboard; leather leashes; leather straps; coverings (furniture-) of leather; leather twist; chin straps, ol leather; laces (leather-); purses; pocket wallets; leatheroid box; soldier's equipment (straps for-); handbags; frames (handbag-); handles (suitcase-); school satchels; wallets (pocket-); satchels (school-); school bags; coverings of skins (furs); bags for campers; suitcases; suitcase handles; varsity cases [not fitted]; key cases [leatherware]; belts (leather shoulder-); pouches, of leather, for packaging; bags [envelopes, pouches] of leather, for packaging; envelops, of leather, for packaging; sling bags for carrying infants; backpacks; skates (straps for-); trunks [luggage]; wheeled shopping bags; springs (casings, of leather, for plate-); casings, of leather, for springs; haversacks; canvas box; chain mesh purses, not of precious metal; purses, not of precious metal; briefcases; attache cases; shopping bags; parasols; umbrellas; umbrella sticks; umbrella handles; umbrella rings; covers (umbrella-); umbrella or parasol ribs; frames for umbrellas or parasols. Class 25 bath robes; bath sandals; bath slippers; bathing caps; bathing drawers; belts [clothing]; breeches [for wear]; clothing; coats; top coats ; footwear; galoshes; garters; girdles; gloves [clothing]; dressing gowns; gymnastics [clothing]; gymnastic shoes; hosiery; jackets [clothing]; jerseys [clothing]; jumpers [shirt fronts]; knitwear [clothing]; clothing of leather; clothing of imitations of leather; liveries; mittens; neckties; overalls; overcoats; pants; pelisses; pullovers; pyjamas; sandals; shirts; shoes; singlets; skirts; slippers; smocks; sock suspenders; socks; soles for footwear; boots for sports; sports jerseys; sports shoes; stockings; stuff jackets [clothing]; suits; bathing suits; suspenders; sweat-absorbent underclothing [underwear]; sweaters; swimsuits; tee-shirts; togas; top hats; trouser straps; trousers; underclothing; anti-sweat underclothing; underpants; underwear; anti-sweat underwear; uniforms; vests; waistcoats; waterproofing clothing. 3. Particulars of the subject application were published on 3 November 2006. The opponent filed a notice of opposition with the grounds of opposition on 8 March 2007. 4. The opposition hearing was heard on 16 January 2013. Mr. Jeffrey Chau, counsel instructed by Messrs. Deacons, represented the opponent at the hearing. The applicant did not file a notice of intention to appear and was not represented at the hearing. 5. I reserved my decision at the conclusion of the hearing. - 2 -

Grounds of opposition 6. The grounds on which the opponent opposes registration of the suit mark as stated in the grounds of opposition are sections 11(5)(b), 12(3), 12(4) and 12(5)(a) of the Ordinance. 7. The opponent stated that it is the proprietor of a well-known family of VALENTINO trade marks including the and logos and variations ( the opponent s marks ). The marks are registered in Hong Kong and in many countries worldwide. The opponent relies on 11 marks registered in Hong Kong as listed in a Schedule A which is annexed to the grounds of opposition. Particulars of the 11 marks are reproduced at the Appendix. Schedule B to the grounds of opposition sets out particulars of registrations or applications for registration of the VALENTINO related marks in various countries or regions in the world. 8. The opponent 1 has used the opponent's marks, inter alia, extensively in various places worldwide including Hong Kong in respect of prestigious goods including, inter alia, leather and imitations of leather, animal skin, hides, leather goods, leather accessories, trunks, travelling bags, belts, bags, purses, handbags, wallets, attaché cases, brief cases, card cases, pocket wallets, umbrellas, parasols, walking sticks, whips, harness, saddlery; clothing, footwear, headgear, knitwear, polo shirts and T-shirts, sweaters, blouses, raincoats, outer clothing, trousers, top coats, sports wear, swimwear, ties, gloves, scarves, hosiery, shoes, boots, slippers, sports shoes; soaps, perfumery and cosmetic products; optical apparatus and instruments, spectacles and sunglasses and their parts and fittings; precious metals and their alloys and goods in precious metals or coated therewith, gold and silverware; jewellery, costume jewellery, precious stones, horological and chronometric apparatus and instruments and parts and fittings therefor; fashion accessories, smokers articles, textiles, towels, bed and table covers, bathroom and other ceramic tiles, furniture, glassware, porcelain, wallpaper, and other luxury products and accessories ( the opponent s goods ). 9. The opponent asserts that, by reason of the long continued and extensive use and promotion of the opponent s marks by the opponent and its predecessors and/or licensees, the marks have acquired recognition by the public at large as unique to identify the opponent s goods and have acquired significant and valuable goodwill and reputation in favour of the opponent. 1 In this decision, the references to the opponent also encompass its predecessors, as the case may be. - 3 -

10. The suit mark incorporates and closely resembles the opponent s marks by incorporating the opponent s housemark VALENTINO and the logo ( the logo ). The goods applied for also overlap with and/or are associated with the goods covered by the opponent s registrations in Hong Kong and other countries. Counter-statement 11. The applicant filed a counter-statement on 7 June 2007. 12. The applicant avers that the opponent is in essence claiming the exclusive right to use the name VALENTINO which the opponent is not entitled to. There are other users and owners of trade marks containing the name VALENTINO in other countries and Hong Kong, for example GIOVANNI VALENTINO and MARIO VALENTINO. 13. In view of the lack of visual, aural and conceptual similarities between the suit mark and the opponent s marks, there is no likelihood that the applied for goods would be perceived by the public as being provided by or connected with the opponent. 14. It is further averred that the suit mark was created and adopted by the applicant independently without reference to and/or knowledge of the opponent s marks. The suit mark is inherently distinctive and the applicant has filed applications for registration in other countries. 15. The applicant first used the suit mark on the goods applied for in around 1999 and has been using the suit mark on the applicant s goods and business since then. Sales were made in countries and regions including Singapore, China, Hong Kong, Indonesia, the United States and the Philippines. 16. The suit mark has acquired substantial goodwill and reputation for the applicant s goods and business independent of the opponent s marks as a result of the sales achieved and the substantial promotional efforts. The applicant s business conducted under the suit mark has been developed with honest and genuine commercial interest in Singapore since 1999. There is no intention to make use of or take advantage of the goodwill and reputation, if any, of the opponent s marks. - 4 -

Evidence 17. Under Rule 18 of the Trade Marks Rules (Cap.559, sub. leg.)( Rule/s ), the opponent filed a statutory declaration from Antonella Andrioli, together with exhibits, which was declared on 4 February 2010, and a first supplementary statutory declaration from the same Antonella Andrioli, together with exhibits, which was declared on 27 May 2010 ( Andrioli s first statutory declaration and Andrioli s supplementary statutory declaration respectively). 18. The applicant did not file any evidence under Rule 19. Although the applicant has in the counter-statement referred to the use made of the suit mark and the creation of the suit mark independently, these indications are not contained in and filed by way of statutory declaration or affidavit in accordance with Rules 79 and 80 of the Rules. As such, I would not take those indications as the applicant s evidence. Relevant date 19. The relevant date for considering the opposition is 14 April 2005, the date of the subject application for registration. Opponent s evidence Andrioli s first statutory declaration 20. Ms. Andrioli has been the proxy holder of the opponent since 1 September 2006, and is duly authorised by the opponent to make the declaration. 21. She deposes that the opponent acquired the VALENTINO trade mark portfolio of Valentino Globe S.p.A and associated business, goodwill and reputation in September 2003. The opponent is wholly-owned by Valentino Fashion Group S.p.A.. 22. The opponent is in the business of designing, manufacturing, marketing and distributing a wide range of luxury and fashion products. The products cover the goods described as the opponent s goods in paragraph 8 above. 23. The opponent is the proprietor of the family of VALENTINO trade marks including word marks such as VALENTINO, VALENTINO GARAVANI, - 5 -

VALENTINO ROMA, R.E.D. VALENTINO, device marks featuring a or sign, and other composite marks formed by devices of such sign plus word elements such as and. 24. A list of registrations and a list of pending applications for registration of the opponent s marks in Hong Kong with certified entries from the Trade Mark Register are produced at Exhibit AA-11. Another list of registrations in other countries together with copies of certificates of registrations are produced at Exhibit AA-12. 25. The opponent is an international luxury fashion brand founded in 1959 by designer Mr. Valentino Garavani in Rome, Italy. Ms. Andrioli sets out in paragraphs 5 to 17 of her first statutory declaration an account of how Mr. Garavani established his business and subsequently attained recognition and fame in the fashion industry in Italy and internationally. 26. The opponent s VALENTINO mark was first used on clothing in Italy in the late 1950s. Since then, the opponent s predecessors had expanded the business in association with the housemark VALENTINO to encompass sales and production of the opponent s goods and related services on a worldwide scale. 27. For the Hong Kong market, Ms. Andrioli deposes that the use of the mark VALENTINO and its variant marks began since at least the 1970s. The opponent s predecessors and/or licensees have first used the mark in relation to the opponent s goods in Hong Kong since at least the late 1980s and the mark since at least 1999/2000. Since then, these marks have been used continuously and extensively in Hong Kong in relation to the opponent s goods. 28. In the 1970s, the opponent s goods were sold by Joyce Boutique. Exhibit AA-13 is a copy of an article published in Forbes Hong Kong on 2 December 1996 on the interview of Ms. Joyce Ma, founder of Joyce Boutique Holdings. In the article, there was reference to the opening of the first Joyce Boutique in Mandarin Oriental Hotel in Central in 1970, and VALENTINO was one of the Italian labels of products offered in the Boutique. 29. Since at least the 1980s, the opponent s goods were sold through The Swank Shop Ltd ( The Swank ), its licensee/distributor in Hong Kong. A printout from the website of The Swank is produced at Exhibit AA-14 which gives an account - 6 -

of the business of The Swank since 1955 in selling products of various famous international fashion brands through its shops and boutiques. 30. The opponent s goods were subsequently sold in boutiques jointly operated by the opponent and The Swank. In 2000, the opponent and The Swank established a joint venture company to promote and market the opponent s goods. Copies of 7 undated photographs showing window displays and the interior of VALENTINO retail shops (said to be taken in Landmark and Mitsukoshi department stores in 1990, 1991 and 1995 respectively) are produced at Exhibit AA-15. 31. In 2005, the opponent acquired shares of The Swank in the joint venture V.S. Limited and became the sole owner of the retail operations in Hong Kong. As of 14 April 2005, the opponent through V.S. Limited operated 3 stores in Hong Kong. Copy of a press release dated 3 November 2005 retrieved from the website of www.valentinofashiongroup.com reported the acquisition of the shares of The Swank in the joint venture and the operation of shops and sales outlets selling the opponent s goods in Hong Kong (Exhibit AA-16). 32. Exhibit AA-17 is a printout (printed on 20 August 2009) from http://corporate.valentino.com/home2.html showing the addresses of 5 retail outlets in Hong Kong. Exhibit AA-18 provides, inter alia, extracts of business registration records of Valentino Hong Kong Limited (formerly V.S. Limited) showing the dates from which a number of Valentino boutiques commenced business in Hong Kong. It can be discerned from the records that the earliest date of operation of one boutique was 1 September 2001. 33. Ms. Andrioli deposes that for the period from 1980 to 1983, the recorded sales figures of the opponent s goods bearing the opponent s marks in Hong Kong were roughly around US$1.16 million, i.e. approximately HK$9.048 million. For the period from 1990 to 1997, the annual sales figures of the opponent s goods in Hong Kong ranged from HK$754,000 to HK$1.176 million. Exhibit AA-19 comprises copies of sales invoices randomly selected from 1980 to 2005 on sales conducted in Hong Kong. 34. The total worldwide turnover of the opponent s goods for 2004 is approximately 42,240,159, and the figure for the first 3.5 months of 2005 up to 14 April 2005 is approximately 1,364,806. According to the press release issued by - 7 -

Valentino Fashion Group on 10 November 2005, the net consolidated sales of the Group for the first 9 months of 2005 was 1,384.2 million, reflecting an increase of 11% from the figure of 1,244 million achieved for the same period in 2004 (Exhibit AA-20; printout downloaded from www.valentinofashiongroup.com). 35. On advertisement and promotion of the opponent s marks, Ms. Andrioli states that the opponent s marks have been extensively advertised and marketed worldwide including in Hong Kong. In Hong Kong, the opponent has promoted its marks by placing advertisements on light-boxes in Central and through direct advertising. The opponent also concentrates on advertisement through international fashion-oriented and beauty-oriented magazines, and enjoys regular editorial coverage in international magazines and newspapers most of which are available in Hong Kong. Brochures are distributed directly to customers, and fashion shows are held 4 times a year in Paris, Milan and other major cities. 36. During the period from 1993 to 1999, the worldwide advertising expenditure exceeded US$40 million. It is however not possible to apportion the share of the advertising expenditure among individual countries. 37. Ms. Andrioli deposes that Mr. Valentino Garavani has been known in the international press simply by Valentino, his forename, for the past 50 years, as shown in various publications and advertisements. 38. Copies of advertisements are produced at Exhibits AA-21, AA-22, AA-23 and AA-24 including advertisements in international magazines such as Vogue, Vanity Fair, Marie Claire, Elle etc which are available for sale in bookstores, newsstands and convenience stores in Hong Kong. 39. Exhibit AA-25 is a copy of a publication known as CAMPAGNES PUBLICITAIRES 1968-2008 showing pictures of advertising campaigns of VALENTINO goods in various places worldwide. On one page, there is reference to a valentino boutique with an address in Hong Kong. 40. Exhibit AA-33 contains copies of sample advertisements in Femina magazines which were circulated in Hong Kong and in the Asian region in the 1970s and 1980s. 41. Exhibit AA-35 comprises copies of advertisements and newspaper - 8 -

clippings from local newspapers from 1998 to 2005 referring to VALENTINO goods and/or marks in Hong Kong. There are copies showing goods including clothing, bags and shoes of the VALENTINO brand. There are also references to VALENTINO goods favoured by local celebrities, and the publicity aroused on occasions such as fashion shows. Copies of samples of archived news reports of Sing Tao Daily from April 2002 to 1 March 2005 touching on VALENTINO goods are produced at Exhibit AA-36. Copies of advertisements and reports extracted from local magazines such as the Style magazine of South China Morning Post from 2001 up to spring/summer 2005 are produced at Exhibit AA-37. 42. In paragraphs 63 to 66 of the statutory declaration, Ms. Andrioli refers to applications to register the suit mark (or variant marks) in Thailand, Italy and Taiwan which are either successfully opposed by the opponent, or are withdrawn. Exhibits AA-38 to AA-40 consist of copies of letters or decisions of successful oppositions against these applications. Andrioli s supplementary statutory declaration 43. By the supplementary statutory declaration, Ms. Andrioli produces copies of advertisements placed in local publications in Hong Kong in relation to goods bearing the opponent s marks which fall within Class 18 and Class 25 respectively. 44. Exhibits AA-1 to AA-12 are copies of advertisements placed in local magazines including Oriental Sunday, Ming Pao Weekly and Cosmopolitan in respect of the opponent s leather goods such as wallets, key holder cases, bags and briefcases which fall within Class 18. The advertisements cover various dates from 1991 to 1993 and in 1996. 45. On Class 25 goods, Exhibits AA-14 to AA-23 are copies of advertisements and articles in local magazines and newspapers including Femina, Cosmopolitan, Ming Pao Weekly, Oriental Sunday, South China Morning Post, City magazine, Eve Essentials, Sun News, Sing Tao Daily and Takungpao in respect of the opponent s clothing items. The materials cover various dates from 1982 to 1985, 1989 to 1997, and 1999 to 2005. - 9 -

Opponent s evidence of use 46. The opponent has filed voluminous evidence seeking to demonstrate the reputation achieved by the VALENTINO mark and other related marks as well as the use which has been made of these marks in respect of its goods before the relevant date. 47. There are copies of materials among the exhibits e.g. copies of advertisements placed in fashion magazines or publications published outside Hong Kong (Exhibits AA-21 to AA-25 to Andrioli s first statutory declaration) which are either undated or do not relate to the Hong Kong market. Even if I were to take that some of these international publications were also circulated in Hong Kong, the extent of circulation is not known. As such, I am not prepared to accept these exhibits as supportive of the efforts of promotion of the opponent s marks or goods in Hong Kong. In any event, I observe that there are evidence relevant to the Hong Kong market and can substantiate the efforts made in promoting the opponent s marks or goods in Hong Kong. 48. Andrioli s supplementary statutory declaration exhibits copies of advertisements in Oriental Sunday and Ming Pao Weekly from 1991 to 1993 showing the use of the mark and mark in respect of leather goods such as wallets and key holder cases which are available for sale at the opponent s collections boutiques and other retail outlets in Hong Kong (Exhibits AA-1 to AA-9). The mark and VALENTINO mark are also used in advertisements of handbags placed in Cosmopolitan in 1996 which are available for sale at retail outlets in Hong Kong (Exhibits AA-11 and AA-12). 49. I have referred to Exhibit AA-33 above which includes copies of extracts from magazines published in the 1970s and 1980s. The extracts show men s and women s clothing items of the VALENTINO brand with references to Valentino or 華倫天奴 (the transliteration of Valentino in Chinese), or are advertised with the sign. On some copies, there are references to the availability of the clothing items at 詩韻公司 (the transliteration of Swank company in Chinese), Joyce Boutique or The Valentino Boutiques in Hong Kong. The earliest issue bears a reference to autumn/winter 1977, and the other issues show publication dates in the early 1980s. 50. Apart from Exhibits AA-33, AA35 to AA-37, Ms. Andrioli also produces - 10 -

copies of advertisements of clothing items available at The Valentino Boutiques in Hong Kong back in 1982 to 1984 (Exhibit AA-14, Andrioli s supplementary statutory declaration). The advertisements show use of signs including and marks. There are coverages in Cosmopolitan in 1985, 1989, 1992 to 1996 showing pictures of clothing items and references to Valentino being the designer or the brand name. There is also a feature article in the April 1994 issue of Cosmopolitan giving an account of the career of Mr. Valentino and the expansion of business in mainland China since 1993 (Exhibit AA-15, Andrioli s supplementary statutory declaration). 51. Some exhibits to Andrioli s supplementary statutory declaration show articles and pictures in Ming Pao Weekly in 1993 and 1997 of fashion shows referring to Valentino as the designer or the brand name (Exhibit AA-16). Copies of other pictures and references to the VALENTINO brand published in the South China Morning Post and its magazine, the City Magazine, Eve s Essential in the 1990s are also produced (Exhibits AA-18, AA-19 and AA-20). Exhibits AA-21 to AA-23 are copies of news clippings from local newspapers showing references to Valentino as the designer or the brand name. 52. Although the pictures and advertisements mostly show women s clothing items, there are exhibits which show advertisements of men s clothing items and jeans in Oriental Daily and City magazine in 1991 and 1992 (Exhibits AA-17 and AA-19, Andrioli s supplementary statutory declaration). 53. Exhibit AA-19 to Andrioli s first statutory declaration comprises random selection of copies of sales invoices from 1980 to 2005 showing the supply of goods to Hong Kong. The sales invoices cover goods ranging from wearing apparel, accessories, bags to shoes. The VALENTINO mark is printed on almost all sales invoices. Some invoices also show the use of the logo along with the VALENTINO mark. 54. Upon examining the opponent s statutory declarations and the exhibits which are relevant to the Hong Kong market prior to the relevant date, I observe that the marks of VALENTINO / Valentino (whether appearing on its own or together with the logo or in the form of composite marks such as ) have been used and promoted in relation to leather goods and accessories. I have referred to the evidence dealing with advertisements and promotion on these goods which dated back to the early 1990s. It can also be discerned from some copies of the sales invoices produced that goods such as belts and bags are among the goods offered for - 11 -

sale in the Hong Kong market. 55. I also observe that the marks of VALENTINO / Valentino (whether appearing on its own, together with the logo or in the form of composite marks such as ) have been used in relation to clothing items and other goods. I have covered above the evidence of advertisements on clothing items going back to 1977, and there is use of the transliteration of 華倫天奴 for Valentino. There are numerous exhibits showing coverages in local newspapers and magazines featuring or referring to Valentino the designer, or goods designed by or bearing the brand of Valentino. 56. In my view, the VALENTINO mark or brand and the mark have acquired remarkable reputation and enhanced distinctiveness in Hong Kong in respect of the goods of the opponent. They have become widely recognized by the public in Hong Kong and would be relied upon by consumers for distinguishing the goods of the opponent from those of other undertakings. Opposition under section 12(3) of the Ordinance 57. Section 12(3) of the Ordinance provides as follows: A trade mark shall not be registered if (a) the trade mark is similar to an earlier trade mark; (b) the goods or services for which the application for registration is made are identical or similar to those for which the earlier trade mark is protected; and (c) the use of the trade mark in relation to those goods or services is likely to cause confusion on the part of the public. 58. According to section 7(1) of the Ordinance, in determining whether the use of a trade mark is likely to cause confusion on the part of the public, the Registrar may take into account all factors relevant in the circumstances, including whether the use is likely to be associated with an earlier trade mark. 59. Section 12(3) of the Ordinance is similar in effect to section 5(2) of the UK Trade Marks Act 1994 which implements Article 4(1)(b) of the First Council Directive 89/104 of 21 December 1988 of the Council of the European Communities. In determining the issue under section 12(3), I take into account the guidance and - 12 -

principles provided by the European Court of Justice (ECJ) in Sabel BV v Puma AG [1998] R.P.C. 199, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. [1999] R.P.C. 117, Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel B.V. [2000] F.S.R. 77 and Marca Mode CV v Adidas AG [2000] E.T.M.R.723. The principles are set out in Julius Sämann Ltd v Tetrosyl Ltd [2006] F.S.R. 42 at para. 51, which have been adopted in the Hong Kong case of Guccio Gucci SpA v Gucci [2009] 5 HKLRD 28. They are as follows: (a) (b) (c) (d) (e) (f) (g) (h) The likelihood of confusion must be appreciated globally, taking account of all the relevant factors. The matter must be judged through the eyes of the average consumer of the goods in issue, who is deemed to be reasonably well informed and reasonably observant and circumspect. In order to assess the degree of similarity between the marks concerned the court must determine the degree of visual, aural or conceptual similarity between them and, where appropriate, evaluate the importance to be attached to those different elements taking into account the nature of the goods in question and the circumstances in which they are marketed. The visual, aural and conceptual similarities of the marks must therefore be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components. The perception of the marks in the mind of the average consumer plays a decisive role in the overall appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyze its various details. There is a greater likelihood of confusion where the earlier trademark has a highly distinctive character, either per se or because of the use that has been made of it. The average consumer rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind; further the average consumer s level of attention is likely to vary according to the category of goods in question. Appreciation of the likelihood of confusion depends upon the degree of similarity between the goods. A lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods, - 13 -

and vice versa. (i) (j) Mere association, in the sense that the later mark brings the earlier mark to mind, is not sufficient for the purpose of the assessment. But the risk that the public might believe that the goods come from the same or economically linked undertakings does constitute a likelihood of confusion within the meaning of the section. 60. Section 12(3) essentially prohibits the registration of a trade mark which would be likely to cause confusion on the part of the public as a result of its being similar to an earlier trade mark and because it is to be registered in respect of goods the same as or similar to those the subject of the earlier trade mark. I must therefore consider whether there are similarities between the suit mark and the opponent s marks and the goods covered, and whether they would combine to create a likelihood of confusion. 61. Particulars of 11 marks which are registered in Hong Kong and are relied upon by the opponent are reproduced in the Appendix. These marks have dates of application for registration earlier than that of the suit mark. According to section 5(1)(a) of the Ordinance, these marks are earlier trade marks in relation to the suit mark. Comparison of marks 62. A comparison of the marks concerned has to be based on an overall appreciation of the visual, aural and conceptual similarities of the marks in question, taking into account the overall impressions given by the marks, and bearing in mind, in particular, their distinctive and dominant components. 63. In comparing the marks, I have to consider the perception of the marks in the mind of the average consumer of the goods and services in question. Registration of the suit mark is sought for the goods set out in paragraph 2 above. The applied for goods in Class 18 cover a wide variety of goods ranging from leather and imitation leather, goods such as bags made of leather or other materials, to umbrellas and parasols. As to the applied for goods in Class 25, they cover clothing items, footwear and headgear. 64. Although the majority of the applied for goods are consumer merchandise and the relevant consumers would be members of the general public in - 14 -

Hong Kong, some of the goods such as trimmings of leather for furniture and umbrella or parasol ribs appear to target manufacturers and traders who look for such goods for business purposes. As such, the average consumer would comprise members of the general public as well as some manufacturers and traders in Hong Kong who are deemed to be reasonably well informed and reasonably observant and circumspect. Members of the general public are expected to exercise an average level of care and attention in the selection of goods. As to the manufacturers and traders, they can generally be expected to exercise a higher level of care and attention. However, as the applied for goods relevant to them are not highly specialized or expensive items, the level of care and attention of this group of consumers will not differ much from that of members of the general public. In my view, the average consumer is expected to exercise an average to slightly above average level of care and attention in the selection of goods. 65. Mr. Chau on behalf of the opponent submitted the following on comparison of marks:- (a) the suit mark comprises an eye-catching logo placed at the centre of the mark, and reproduces the opponent s housemark VALENTINO in its entirety; (b) emphasis is placed on the logo and the word Valentino by adopting the logo in the suit mark; the logo and the word Valentino would be viewed by the average consumers as the dominant elements of the suit mark; (c) the line dividing the logo and the words Emilio Valentino has no trade mark significance and should be ignored; (d) the word Emilio is of much reduced significance; the word also happens to be a word of 4 syllables as in Garavani ; (e) viewing the suit mark as a whole, the suit mark is visually and conceptually similar to the opponent s registered marks in particular the,, and marks all of which bear a prominent V logo and incorporates the mark Valentino in full; the and marks have exactly the same structure as the suit mark, with two words placed directly below a V logo; - 15 -

(f) phonetically, the suit mark may be pronounced V Emilio Valentino, Emilio Valentino or Valentino (given the emphasis on the logo in the suit mark which comprises Valentino ). 66. The applicant contends that there is a lack of visual, aural and conceptual similarities between the suit mark and the opponent s marks, and the suit mark is an inherently distinctive trade mark resulting from the combination of the word elements and the device (paragraphs 7 and 8, counter-statement). 67. I would first look at the suit mark. The suit mark consists of three elements, namely the logo, the words Emilio Valentino and a horizontal line in between these two elements. The logo displays the letter V in a stylized manner. It occupies about three-fifths of the height of the suit mark and is positioned at the centre above the horizontal line. The words Emilio Valentino are written in plain font without stylisation. The first letters E and V of the words Emilio Valentino are in capital letters which signify that this expression is a personal name. The horizontal line is in my view indistinctive and does not have any effect in terms of distinctiveness. 68. The logo, given its size and prominent position, is capable of attracting the attention of the average consumer. The styled letter V representing as corresponds to the first letter V of the word Valentino, and the logo has the effect of reinforcing or accentuating the significance of the word Valentino in the suit mark. 69. For the purpose of determining the ground of opposition based on section 12(3) of the Ordinance, I would compare the suit mark with the opponent s, and marks viz. trade mark numbers 199404866, 1996B11046 and 300032624 respectively which bear the closest resemblance to the suit mark having regard to the goods covered by these registrations ( the 3 opponent s marks ). If the opponent succeeds in opposing the subject application based on the 3 opponent s marks, the finding would be sufficient to dispose of the present case and there is no need for the opponent to rely on the other marks at the Appendix. 70. I would proceed to compare the suit mark with each of these marks visually, aurally and conceptually. - 16 -

(A) Comparison with the opponent s mark Visual comparison 71. Mr. Chau submitted that the mark has the same structure as the suit mark. I agree. Both the suit mark and the mark are formed by the combination of the respective V logos at the top and two words below. Although the suit mark also contains a horizontal line between the logo and the words, I do not consider the line has much significance. 72. Unlike the suit mark, the two words in the mark are written in the lower case. The word Valentino is placed after the word Emilio in the suit mark, whilst the word valentino is the first word in the mark. I am also mindful that the logo bears a different design when compared with the device in the mark. However, I consider it unlikely that these would make much difference to the visual impact, bearing in mind imperfect recollection and that marks are not compared side by side. The V logos in both marks can be readily recognized as representing the letter V and corresponds to the word valentino in the marks. The logos have the effect of accentuating the impression conveyed by the distinctive and dominant word valentino in both marks. 73. Following from the above, I find the suit mark similar to the mark visually. Aural comparison 74. Aurally, the suit mark would be pronounced E-mi-li-o Va-len-ti-no. The mark would be pronounced va-len-ti-no ga-ra-va-ni. As the V logos in the respective marks are likely to be recognized as representing the letter V, the pronunciations can also be V E-mi-li-o Va-len-ti-no and V va-len-ti-no ga-ra-va-ni. I find the marks moderately similar aurally. Conceptual comparison 75. The respective V logos in the suit mark and the mark correspond to and accentuate the element of Valentino in the marks. For the suit mark, Emilio is not an English word but the word is likely to be perceived by an average consumer as the name of an individual. The words valentino garavani in - 17 -

the mark would also be perceived by an average consumer as the name of an individual. As such, the meanings conveyed by the marks are both marks constituted by a V logo and personal names bearing the word Valentino. I find the marks very similar conceptually. 76. Having compared the suit mark and the mark, I consider the overall impression perceived by the average consumer would be that of marks formed by a V logo above a personal name consisting of the word Valentino. I find the two marks similar. (B) Comparison with the opponent s mark Visual comparison 77. The mark bears the logo of the opponent and the words VALENTINO COUTURE written in capital letters and in plain font. The logo appears on the top of the mark. The words VALENTINO and COUTURE are not placed on the same level. As such, the case used for the words VALENTINO COUTURE and the manner in which they appear in the mark are different from the word elements of the suit mark. That said, I consider it unlikely that these would make a great difference to the visual impact, bearing in mind imperfect recollection and that marks are not compared side by side. In my view, the mark would still convey the visual impact of a mark formed by a V logo above two words at the bottom. The V logos in both marks accentuate the impression conveyed by the distinctive and dominant word valentino in both marks. 78. The word COUTURE means high-fashion designing and dressmaking or the clothes themselves (Collins English Dictionary). The word is thus indistinctive in relation to clothing items. 79. Following from the above, I consider the suit mark moderately similar to the mark visually. Aural comparison 80. Aurally, the mark would be pronounced VA-LEN-TI-NO or VA-LEN-TI-NO COU-TURE (the word COUTURE being indistinctive may not - 18 -

be included in pronunciation). If the V logo would also be pronounced, the respective pronunciations would be V E-mi-li-o Va-len-ti-no, and V VA-LEN-TI-NO or V VA-LEN-TI-NO COU-TURE. moderately similar aurally. I find the marks Conceptual comparison 81. The suit mark conveys the idea of a mark constituted by a V logo and the personal name of Emilio Valentino. The mark conveys the idea of a mark constituted by a V logo plus the name, brand or mark of VALENTINO. Like the mark, the presence of the V logo accentuates the significance of Valentino in the suit mark. I consider the suit mark and mark similar conceptually. 82. Having compared the suit mark and the mark, I consider the overall impression perceived by the average consumer would be that of marks formed by a V logo above two words one of which is Valentino. I find the two marks moderately similar. (C) Comparison with the opponent s mark Visual comparison 83. Visually, the mark is a word mark written in capital letters and in plain font. The words VALENTINO GARAVANI together take up about two-thirds of the length of the whole mark. In my view, the words VALENTINO GARAVANI are likely to dominate the visual impact and attract the attention of the average consumer. The words R.E.D., with the commas after each of the words R, E and D, stand for some abbreviations. I do not consider the average consumer would pay as much attention to the words R.E.D. as in the case of VALENTINO GARAVANI. 84. Having regard to the presence of the same word Valentino in the suit mark and the mark but the difference in presentation and the presence of other elements in the two marks which are not visually similar, I consider the suit mark similar to the mark to a low degree visually. - 19 -

Aural comparison 85. Aurally, the mark would be pronounced R-E-D VA-LEN-TI-NO GA-RA-VA-NI or RED VA-LEN-TI-NO GA-RA-VA-NI. Having regard to the presence of the same word Valentino in the suit mark and the mark but the presence of other elements in both marks which are pronounced differently, I find the marks similar to a low degree aurally. Conceptual comparison 86. The words Emilio Valentino in the suit mark and VALENTINO GARAVANI in the both convey the idea of personal names consisting of the word Valentino. In the case of the suit mark, there is the inclusion of the logo which accentuates the significance of the word Valentino. I find the marks similar conceptually. 87. I consider that the average consumer would perceive the suit mark as a composite mark constituted by three elements, whilst the mark is a word mark. Both marks consists of personal names especially the same word Valentino, but the presentation of the marks overall is not similar. The two marks are in my view similar to a low degree. Comparison of goods 88. The goods for which the suit mark is sought to register are goods under Classes 18 and 25. I would compare the applied for goods with those registered under the 3 opponent s marks examined above. 89. Goods can be considered as identical when the goods designated by the trade mark application are included in a more general category designated by the earlier mark, or vice versa. (Meric v Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) (Case T-133/05); Bowerbank s Application [2008] ETMR 31) 90. In assessing the similarity of the goods concerned, all the relevant factors relating to those goods themselves should be taken into account. Those factors include, inter alia, their nature, their end users, their method of use and whether they are in competition with each other or are complementary. (British Sugar v James - 20 -

Robertson and Sons Ltd [1996] R.P.C. 281; Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. [1999] R.P.C. 117) 91. I would compare the applied for goods and the goods in Class 18 covered by the opponent s registrations of the mark (registration number 199404866) and the mark (registration number 300032624). I find that the applicant s applied for goods shown in the left column below are covered by and fall within the broad terms of the opponent s goods of the two registrations shown in the right column. Applicant s applied for goods in Class 18 skins (cattle-); skin (goldbeaters'-); gold beaters' skin; cattle skins; curried skins; pelts; animal skins; leather, unworked or semi-worked; butts [parts of kides 2 ]; skins of chamois, other than for cleaning purposes; chamois leather; other than for cleaning purposes; leatherboard; imitation leather; leather (imitation-); trimmings of leather for furniture; straps (leather-); tool bags of leather [empty]; boxes of leather or leather board; bands of leather; valves of leather; leather shoulder belts; boxer of leather (hat-); leather thongs; leather leads; leather thread; cases, of leather or leatherboard; leather leashes; leather straps; coverings (furniture-) of leather; leather twist; chin straps, of leather; laces (leather-); leatheroid box; coverings of skins (furs); key cases [leatherware]; belts (leather shoulder-); pouches, of leather, for packaging; bags [envelopes, pouches] of leather, for packaging; envelops, of leather, for packaging; springs (casings, of leather, for plate-); casings, of leather, for springs; Opponent s goods registered in Class 18 Goods covered by the & registrations leather Goods covered by the registration animal skins, hides Goods covered by the & registrations imitations of leather Goods covered by the & registrations goods made of [leather and imitations of leather] and not included in other classes 2 The meaning of the word kides cannot be found from dictionaries. I take that to be the mis-spelt form of hides. - 21 -

bags (net-) for shopping; beach bags; card cases [notecases]; music cases; bags (game-) [hunting accessory]; straps for skates; boxes of vulcanised fibre; purses; pocket wallets; soldier's equipment (straps for-); handbags; frames (handbag-); handles (suitcase-); school satchels; wallets (pocket-); satchels (school-); school bags; suitcases; suitcase handles; varsity cases [not fitted]; sling bags for carrying infants; backpacks; skates (straps for-); wheeled shopping bags; haversacks; canvas box; chain mesh purses, not of precious metal; purses, not of precious metal; briefcases; attache cases; 3 travelling bags; valises; bags (garment-) for travel; travelling trunks; travelling sets [leatherware]; garment bags for travel; bags for climbers; bags for campers; trunks [luggage]; 4 Goods covered by the registrations goods made of [leather and imitations of leather] and not included in other classes Goods covered by the registration Trunks and travelling bags & straps of leather [saddlery]; Goods covered by the registration harness and saddlery parasols; umbrellas; Goods covered by the registration umbrellas, parasols 92. The remaining applied for goods of umbrella sticks; umbrella handles; umbrella rings; covers (umbrella-); umbrella or parasol ribs; frames for umbrellas or parasols in Class 18 are parts of umbrellas. These goods are intended for use as components of umbrellas or parasols and they can be available at the same trade channels of umbrellas or parasols. The users who look for umbrellas or parasols may also look for these components as replacement parts of umbrellas. As such, I find that umbrella sticks; umbrella handles; umbrella rings; covers (umbrella-); umbrella or parasol ribs; frames for umbrellas or parasols are similar to umbrellas, 3 The goods here are not specified to be but can be made of leather or imitations of leather. As such, they are covered by goods made of leather and imitations of leather and hence identical goods. Even if any of such goods are not made of these materials, they would still be similar goods, for reason of the same methods of use, nature, users, trade channels, and that such goods are in competition with the corresponding goods which are made of leather or imitations of leather. 4 For the goods here not specified to be but can be made of leather or imitations of leather, they are either identical or similar to goods made of leather and imitations of leather of the & registrations, for the reason stated in footnote 3. - 22 -

parasols under the registration referred to above. 93. As to the applied for goods in Class 25, I would compare them with those goods in Class 25 covered by the opponent s mark (registration number 1996B11046) and mark (registration number 300032624). I find that the applicant s applied for goods shown in the left column below are covered by and fall within the broad terms of the opponent s goods of the two registrations shown in the right column. Applicant s applied for goods in Class 25 bath robes; bathing drawers; belts [clothing]; breeches [for wear]; clothing; coats; top coats; garters; girdles; gloves [clothing]; dressing gowns; gymnastics [clothing]; jackets [clothing]; jerseys [clothing]; jumpers [shirt fronts]; knitwear [clothing]; clothing of leather; clothing of imitations of leather; liveries; mittens; neckties; overalls; overcoats; pants; pelisses; pullovers; pyjamas; shirts; singlets; skirts; smocks; sock suspenders; sports jerseys; stuff jackets [clothing]; suits; bathing suits; suspenders; sweat-absorbent underclothing [underwear]; sweaters; swimsuits; tee-shirts; togas; trouser straps; trousers; underclothing; anti-sweat underclothing; underpants; underwear; anti-sweat underwear; uniforms; vests; waistcoats; waterproofing clothing. Opponent s goods registered in Class 25 Goods covered by the registrations Clothing & bath sandals; bath slippers; footwear; galoshes; gymnastic shoes; hosiery; sandals; shoes; slippers; socks; soles for footwear; boots for sports; sports shoes; stockings; 5 Goods covered by the registration footwear bathing caps; top hats; Goods covered by the registration headgear 5 Footwear encompasses anything that covers the foot, including socks. As footwear such as socks can also be considered as clothing, it would, to that extent, overlaps with clothing. - 23 -

Likelihood of confusion 94. The likelihood of confusion must be appreciated globally, taking account of all relevant factors all of which have a degree of interdependency. The matter must be judged through the eyes of the average consumer of the goods and services who is deemed to be reasonably well informed and reasonably observant and circumspect. A lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods and services and vice versa. 95. As stated above, there is a greater likelihood of confusion where the earlier trademark has a highly distinctive character, either per se or because of the use that has been made of it. 96. The 3 opponent s marks are not descriptive of the opponent s goods concerned and the marks are distinctive per se. 97. I have examined above the evidence filed by the opponent on the use and promotion of the opponent s marks and goods in Hong Kong. The opponent s evidence also substantiates the publicity attracted by the name and brand of Valentino in Hong Kong. I have in paragraph 56 above concluded that the VALENTINO mark or brand and the mark have acquired remarkable reputation and enhanced distinctiveness in Hong Kong in respect of the goods of the opponent. 98. Mr. Chau submitted that the remarkable reputation acquired by the opponent s marks would increase the likelihood of confusion. He also referred me to the judgment of Deputy High Court Judge Horace Wong S.C. in the Guccio Gucci case (supra) in relation to the allegation made by the plaintiff in that case that the use of the defendant s COSIMO GUCCI mark and the expression designed by COSIMO GUCCI in the course of trade or business infringed the plaintiff s registered mark GUCCI under section 18(3) of the Ordinance. 6 99. The relevant passages read as follows: 6 An action for infringement under section 18(3) requires determination, inter alia, of whether the use of the alleged infringing marks in relation to the goods concerned is likely to cause confusion on the part of the public. - 24 -