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TRADE MARKS ORDINANCE (Cap. 559)

OPPOSITION TO TRADE MARK APPLICATION NO. 301171854

MARK:

CLASSES:

34

APPLICANT: Karelia Tobacco Company Inc.

OPPONENT: Basic Trademark S.A.

STATEMENT OF REASONS FOR DECISION

Background

1. On 31 July 2008, Karelia Tobacco Company Inc. (the “applicant”) filed an

application (the “subject application”) under the Trade Marks Ordinance, Cap. 559

(the “Ordinance”) for registration of the following mark:-

(“the subject mark”).

2. Registration is sought in respect of the following goods (“subject goods”) in

Class 34:-

Class 34

Cigarettes, tobacco and tobacco products, lighters, matches and smokers' requisites.

3. Particulars of the subject application were published on 10 October 2008. On

9 March 2009, Basic Trademark S.A. (the “opponent”) filed a Notice of opposition

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attached with a “Grounds of Opposition”.

4. The opposition hearing took place before me on 8 April 2014. Mr. Philips B.F.

Wong of Counsel, instructed by Emily Yip & Co, represented the opponent. The

applicant did not appear at the hearing but had through its agent Rebecca Lo & Co

submitted a “Skeleton Argument for the Applicant” prepared by C W Ling, Counsel

for the applicant, on 3 April 2014.

Grounds of Opposition

5. In the Grounds of Opposition, the opponent opposes registration of the subject

mark under sections 11(1)(a), 11(4)(b), 11(5)(a), 11(5)(b), 12(2), 12(3), 12(4) and

12(5)(a) of the Ordinance. A list of registered trade marks relied upon by the

opponent in launching the opposition against the subject application was set out in the

Grounds of Opposition. That list is reproduced in this decision as Annex 1 hereto.

Counter Statement

6. The applicant filed a Counter Statement on 1 June 2009, denying all the

grounds of opposition.

The opponent’s evidence in support

7. The opponent’s evidence in support comprises a statutory declaration of

Domenico Sindico dated 16 February 2010 (“Sindico’s statutory declaration”).

8. Mr. Sindico is Officer and Proxy of the opponent which is a corporation duly

organised and existing under the laws of Luxembourg, and was authorized by the

opponent to make the statutory declaration on its behalf in these proceedings.

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9. According to Mr. Sindico, the “KAPPA” trade mark was created by the

company Maglificio Calzificio Torinese (“MCT”) in Italy in the 1950s, and by

mid-1950s, had become a “consolidated brand” and “undisputed leader in the socks

and underwear sector”. MCT was said to be then a leading manufacturer of socks

and underwear in Italy, but in 1969, seeing that the textile industry was hit by

recession in a period marked by social change, it decided to diversify and set up

production of outerwear, and in the late 1970s moved into sportswear and technical

sports gear.

10. The “KAPPA” trade mark had evolved alongside MCT’s diversification of

business. “ROBE DI KAPPA” was the brand for outerwear when MCT’s business

began to diversify, and the device shown below, dating back to 1969 from a photo

shot for the “BEATRIX” bathing suits (another MCT brand), was used together with

the word “KAPPA” for sportswear and technical sports gear:-

(the above device is to be referred to hereinafter as the “DEVICE”)

KAPPA trade marks shall refer to marks used by the opponent including the word

mark “KAPPA”, the DEVICE, the word mark “ROBE DI KAPPA” and the composite

mark as shown below:-

(the above composite mark is referred to hereinafter as the “KAPPA and the

DEVICE”).

11. Mr. Sindico further alleged that since the late 1970s, the word mark “KAPPA”

had been largely used and acquired a strong distinctiveness world-wide. On 21

November 1995, the opponent acquired the “KAPPA” business previously run by

MCT including the KAPPA trade marks, and had used the marks ever since

continuously. The opponent is part of the larger industrial group known as the

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BasicNet Group which is alleged to be one of the leading groups in design of sports

and leisurewear products and trademarks and know-how licensing in the international

market, the opponent is the proprietary holder for the BasicNet Group to various trade

marks including the KAPPA trade marks. Exhibit 1 to Sindico’s statutory

declaration contains a portfolio list of the group’s world-wide trade marks together

with copies of registration certificates and filing receipts. It can be seen that the

worldwide registrations are in respect of “KAPPA”, the DEVICE, “KAPPA and the

DEVICE”, and “ROBE DI KAPPA” as well.

12. It is alleged that the word mark “KAPPA” is used for the opponent’s official

sponsorship of several renowned international sports teams such as the US Track and

Field Team which took part in the Olympic games in the 1980s, and famous soccer

teams such as AC Milan (Italy), UC Sampdoria (Italy), AS Roma (Italy), Ajax

(Holland), Auxerre (France), F.C. Barcelona (Spain) and Juventus (Italy) before 2000.

Exhibit 2 to Sindico’s statutory declaration lists out the sponsored teams in various

countries over the world, and Exhibit 3 lists out football and rugby players that are

alleged to have endorsed the KAPPA trade marks.

13. The KAPPA trade marks also featured in many movies, such as “Gone in 60

seconds”, “The Family Man, “Hannibal and “Never Been Kissed”. Exhibit 4

contains evidence of use of the KAPPA trade marks in sponsoring musical, cultural

and athletic events; the more recent important events include the KAPPA Marathon,

the KAPPA Night, the Fencing World Championship.

14. Figures calculated on the “Local Direct Advertising contribution” were given in

Sindico’s statutory declaration to show that the BasicNet Group had invested an

average of more than 24 million Euro per year for the ten years from 1999 to 2008.

Exhibits 6a-b-c are collections of advertisements, catalogues and press reviews

spreading over 1970s and 1980s in relation to the apparel, footwear and accessories

products bearing the KAPPA trade marks. Mr. Sindico highlighted that during the

sponsoring of the US Track and Field Team in the years 1984 and 1988, a KAPPA

product appeared on the cover page of the TIME magazine in the United States.

15. The total turnover generated through the network of licensees and distributors

of the BasicNet Group with the sales of products bearing the KAPPA trade marks are

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given in Sindico’s statutory declaration, showing an annual turnover ranging from 115

to 247 million Euro in the period from 1996 to 30 June 2009. Exhibits 7a-b list out

countries where the KAPPA trade marks are present or licensed, and the names of the

KAPPA licensees. It shows that the KAPPA trade marks have been licensed to use in

more than 100 countries around the world with 40 official licensees and distributors.

Exhibit 8 contains copies of some sales documents of the BasicNet Group.

16. The various KAPPA trade marks are registered in Hong Kong under a variety of

classes of goods, and had been assigned to the BasicNet Group. Exhibit 9 contains

copies of the registration record.

17. It is alleged that use of the KAPPA trade marks in Hong Kong can be traced

back to the 1990s, where MCT signed a distribution and licence agreement with the

company Gallant Sport Supplies Ltd. ("Gallant") in 1991 for the territory of Hong

Kong, and in 1994, the rights of the KAPPA trade marks were sold to the company

Phenix Co. Ltd ("Phenix"). As of May 2003, the BasicNet Group had bought and

acquired all rights in the KAPPA trade marks. Exhibit 10 contains a letter issued by

Gallant acknowledging that the rights of the licence agreement it entered into with

Phenix in connection with sports apparel and accessories products bearing the KAPPA

trade marks had been transferred to the BasicNet Group.

18. Then in January 2004, the BasicNet Group entered into a “Distribution and

Licence Agreement” with Gallant for the distribution of apparel, footwear and

relevant accessories bearing the KAPPA trade marks in Hong Kong. Exhibit 11

contains copy of that agreement.

19. Sindico’s statutory declaration gives the turnover figures generated as a result

of the Distribution and Licence Agreement. The annual turnover exceeded 18

million Hong Kong Dollars for the years 2004 to 2008. Exhibit 12 contains a

collection of invoices issued by Gallant over the years from 2003 to 2008. A

marketing summary and a sponsorship activities list are attached to Sindico’s statutory

declaration as Exhibit 13.

20. It is alleged that apart from Hong Kong, the BasicNet Group had filed

oppositions against the applicant’s application for the mark KAPPA in many other

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jurisdictions. Exhibits 14 and 15 contain information about the opposition

proceedings in Turkey, Thailand and the United States. I do not propose to

summarize them here.

The applicant’s evidence

21. The applicant’s evidence comprises a statutory declaration of Efstathios

Karelias dated 14 October 2010 (“Karelias’ statutory declaration”). Karelias is the

General Manager of the applicant. The facts he deposed to in his statutory

declaration are from his personal knowledge or from the applicant’s books and

records, and he has been duly authorized by the applicant to make the statutory

declaration in these proceedings.

22. According to Karelias’ statutory declaration, the applicant is Greece’s largest

cigarette manufacturer and exporter, having been in the business of manufacture and

distribution of cigarettes, tobacco and tobacco products since 1888, and has gained

protection for the mark KAPPA in a number of territories, including Afghanistan,

Angola, Armenia, Bolivia, The British Virgin Islands, Cambodia, Cuba, The

Democratic Republic of Korea, The Democratic Republic of Congo, Georgia, Ghana,

Kazakhstan, Lebanon, Liberia, Nigeria, Palestine (West Bank), Peru, The Philippines,

The Republic of Korea, Russia, Sudan, Uganda, The United Kingdom and Yemen.

Exhibit “A-1” to Karelias’ statutory declaration is a bundle of copies of applicant’s

application and registration records in respect of the mark KAPPA.

23. Karelias alleged that the mark KAPPA is not an invented word, but was adopted

by the applicant as its trade mark because KAPPA is the 10th letter in the Greek

alphabet, which is the initial letter of the word “Karelia” which is in the applicant’s

name as well as a key component of many of the applicant’s trade mark registrations

in Hong Kong. It is also said that KAPPA is the name of the letter “K” in the Italian

language. Exhibit “A-2” contains an article about the Greek letter “Kappa”

downloaded from Wikipedia, and details of the applicant’s Hong Kong trade mark

registrations. I should point out here that the applicant’s Hong Kong trade mark

registrations are in respect of marks that contain the word “KARELIA” rather than the

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word “KAPPA”.

24. Karelias further alleged that there are many businesses in Europe that have

adopted “KAPPA” as their trade marks for their respective products. Exhibit “A-3”

contains copy of a sworn statement made by a private investigator, Nicola Amsell,

reporting on several examples of use of the name KAPPA by various businesses in

Europe for a variety of products.

25. Exhibit “A-4” contains copies of trade mark registration record gleaned from

this Trade Marks Registry showing marks which have incorporated KAPPA as an

element.

26. The rest of Karelias’ statutory declaration are mainly comments on or responses

to the applicant’s evidence. I do not propose to summarize them here.

The opponent’s evidence in reply

27. The opponent’s evidence in reply comprises another statutory declaration of

Domenico Sindico made on 25 July 2011 (“Sindico’s second statutory declaration”).

28. Sindico’s second statutory declaration was filed as evidence in reply to the

applicant’s evidence, namely, Karelias’ statutory declaration, casting doubt on many

of the claims and responses made by Mr. Krasnianski as discussed above. However,

comments or remarks of Sindico made in this connection are largely his own

observation and submissions, I do not propose to summarize the points here but would

refer to the relevant parts as and when appropriate.

29. There are attached to Sindico’s second statutory declaration Exhibits KA1-01 to

08. Apart from Exhibit KA1-01 which provides materials allegedly showing that the

mark “KAPPA” had been used alone on the opponent’s goods, the other exhibits are

all documents relating to opposition proceedings conducted in foreign jurisdictions in

which the applicant’s application for registration of the mark KAPPA was opposed by

the opponent, in particular, a decision issued by the Opposition Division of the Office

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for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of the

European Union on 1 December 2010 seemingly in favour of the opponent, and an

opposition proceedings filed in Singapore, were highlighted.

Further evidence of both the applicant’s and the opponent’s

30. Both the applicant and the opponent had respectively sought leave to file

further evidence after the filing of the evidence in reply. Leave had been granted

under Rule 20(3) of the Trade Marks Rules, Cap. 559A (the “Rules”) for the

respective filing of a statutory declaration of Peter Joseph Houlihan dated 10

November 2011 (“Houlihan’s statutory declaration”), a further statutory declaration of

Domenico Sindico purportedly made on 12 June 2012 (“Sindico’s third statutory

declaration”) and a statutory declaration of Lo Mang Chong Rebecca dated 4 June

2013 (“Lo’s statutory declaration”).

31. Mr. Peter Joseph Houlihan is a UK registered trade mark attorney in the employ

of Cleveland, Patent and Trade Mark Attorneys which is responsible for the

prosecution of all trade mark applications for the word KAPPA in the name of the

applicant. He has been authorized by the applicant to make the statutory declaration

in these proceedings. He testified on matters in relation to those opposition

proceedings conducted in foreign jurisdictions as mentioned in Sindico’s second

statutory declaration, in particular, the OHIM decision mentioned above was said to

be under appeal.

32. Sindico’s third statutory declaration was filed in respect of the OHIM decision

and the opposition proceedings in Singapore, both of which he had mentioned in

Sindico’s second statutory declaration. Sindico’s third statutory declaration exhibits

a decision issued by the Fifth Board of Appeal on 12 March 2012 in respect of the

earlier decision of the Opposition Division of OHIM on 1 December 2010 and a

decision issued by the Intellectual Property of Singapore on 18 November 2011.

33. Lastly, Lo’s statutory declaration was filed to exhibit a decision made by the

Registrar of Trade Marks of Australia on 20 April 2010 in the applicant’s Australian

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application for registering the mark “Kappa” in international class 34. Ms. Lo Mang

Chong Rebecca is a partner of Messrs. Rebecca Lo & Co, agent for the applicant.

She has been authorized by the applicant to make the statutory declaration in these

proceedings.

Findings on goodwill and reputation of the opponent’s KAPPA trade marks

34. The opponent opposed registration of the subject mark under sections 11(1)(a),

11(4)(b), 11(5)(a), 11(5)(b), 12(2), 12(3), 12(4) and 12(5)(a) of the Ordinance.

Before the hearing, the opponent via their agent’s letter dated 26 March 2014 made it

clear that the opponent would only be proceeding on sections 11(5)(b), 12(2), 12(3),

12(4) and 12(5)(a). I would therefore treat the opposition based on the other pleaded

grounds as no longer being pursued by the opponent.

35. Mr. Philips B.F. Wong, counsel for the opponent, in his “Skeleton Submission

of the Opponent” refers to all the KAPPA trade marks used by the BasicNet Group

and MCT as “the Opponent’s Marks” and linked them to the portfolio list of the

group’s world-wide trade marks (displayed in Exhibit 1 to Sindico’s statutory

declaration) upon which the opponent relies in launching the present opposition.

The KAPPA trade marks, understood in this way, are, whether they have been

registered in Hong Kong or not, the word mark “KAPPA”, the DEVICE, the

composite mark “KAPPA and the DEVICE”, and the mark “ROBE DI KAPPA”.

36. I have outlined the opponent’s evidence in support of the opposition above.

Without repeating them here, I would say that the opponent’s evidence filed in the

present proceedings has shown that, as Mr. Philips Wong so contends, the KAPPA

trade marks have long been used and promoted extensively in respect of apparel,

footwear and accessories, and their use had been extended to a wide variety of

products including bags, umbrella, balls, stationery, eyewear, watches and body care

products. Given the impressive figures of the “Local Direct Advertising

contribution” and the annual turnover as set out in Sindico’s statutory declaration, it is

natural that the KAPPA trade marks cannot be seriously doubted to have gained

recognition and reputation at least among the more sports and leisurewear aware

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sections of the public across the world.

37. How that fares in the local context of Hong Kong is something to be explored

here, as all this has connotations on sections 2(2), 12(3), 12(4) and 12(5)(a) of the

Ordinance where the opponent’s marks must be assessed with reference to any

enhanced distinctive character, reputation and goodwill, or well-known status that it

has acquired or generated. It is convenient for me to first investigate the evidence

and make the relevant findings in this connection.

38. The various exhibits to Sindico’s statutory declaration as well as Sindico’s

second statutory declaration, whilst contain voluminous materials to show that there

had been long and extensive use of the word mark “KAPPA” as well as the DEVICE,

whether the two being used alone or side by side (as in the composite mark “KAPPA

and the DEVICE”), on goods of apparel, footwear and accessories, are mostly of

foreign origins and not related or connected to Hong Kong. Whilst these materials

are in my view sufficient to show the world-wide renown of the KAPPA trade marks,

the only exclusively Hong Kong-related materials shown in Sindico’s statutory

declaration are in Exhibit 12 where a collection of invoices issued by Gallant

suggesting use of the KAPPA trade marks on goods sold in Hong Kong over the years

from 2003 to 2008 are exhibited, and Exhibit 13 displaying evidence of the

opponent’s sponsorship activities in Hong Kong where the KAPPA trade marks are

displayed on the banners or on clothing worn by participants of the events.

Nonetheless, it can reasonably be inferred that the goods of the opponent’s offered

and sold in places outside Hong Kong, as shown in the other exhibits such as Exhibits

6a-b-c and 7a-b-c, would invariably have found their way to the Hong Kong market as

well, and that at least some of the advertisements and catalogues of those goods

would also have found their way to reach local consumers in Hong Kong. Moreover,

the extent and duration of the sponsorship activities, and an annual turnover exceeding

18 million Hong Kong Dollars for the years 2004 to 2008, also seem very impressive,

I am prepared to say “KAPPA” and the DEVICE, whether alone or in conjunction

with each other, have both become the distinguishing feature of the opponent and the

opponent has acquired through them a reputation and goodwill in its goods and

services offered and promoted in Hong Kong. “KAPPA” and the DEVICE were

often used together, but from the exhibits, there were also many occasions to find

them being used alone on the goods, or they are placed widely apart from one another

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in the advertisements or promotional materials.

39. In response to the applicant’s allegation in paragraph 10 of Karelias’ statutory

declaration that the opponent rarely used the mark “KAPPA” alone, Exhibit KA1-01

to Sindico’s second statutory declaration was filed to show allegedly more evidence of

the opponent’s word mark KAPPA being used alone. However, after examining this

exhibit, it just confirmed the impression I got from Exhibits 6a-b-c and 7a-b that the

DEVICE was more used alone on the very goods of clothing items, in particular the

outer garments, than KAPPA was. As between these two marks, merely on the

materials filed, it seems if only one mark was being used on the goods, it's more likely

to find the DEVICE than KAPPA. But it does not necessarily mean that in real life,

one mark is being used more frequently or of a higher reputation and recognition than

the other.

40. My finding is that “KAPPA” and the DEVICE have both become the

distinguishing feature of the opponent and the opponent has acquired through them a

reputation and goodwill in its goods and services offered and promoted in Hong

Kong.

Decision

41. I just record that for any of the grounds of opposition discussed in this decision,

it’s not in dispute that the relevant date is the date the subject application was filed,

viz., 31 July 2008 (“the relevant date”).

Sections 12(2) and 12(3) of the Ordinance

42. Section 12(2) of the Ordinance provides as follows:

“(2) A trade mark shall not be registered if-

(a) the trade mark is identical to an earlier trade mark;

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(b) the goods or services for which the application for registration is made are

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.”

43. Section 12(3) of the Ordinance provides as follows:

“(3) 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.”

44. Under 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.

45. Section 12(2) as well as 12(3) of the Ordinance is similar in effect to section

5(2) of the U.K. Trade Marks Act 1994, which implements Article 4(1)(b) of the First

Council Directive 89/104 of 21 December 1998 of the Council of the European

Communities (“the Council Directive”). In interpreting Article 4(1)(b), as well as

Article 5(1)(b), of the Council Directive, the Court of Justice of the European Union

(“CJEU”) has formulated the “global appreciation” test, the principles of which can be

found in the ECJ decisions 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

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Adidas AG [2000] E.T.M.R. 723.

46. In essence, the test under section 12(2) and 12(3) is whether there is identity or

similarity in marks, and in goods, which would combine to create a likelihood of

confusion. The likelihood of confusion must be appreciated globally and I need to

address the degree of visual, aural and conceptual similarity between the marks,

evaluating the importance to be attached to those differing elements, and taking into

account the degree of similarity in the goods and how they are marketed. I must

compare the marks at issue, having regard to the distinctive character of each and

assuming normal and fair use of the marks across the full range of the goods within

their respective specifications. I must do all of this from the standpoint of the

average consumer for the goods in question.

Earlier trade marks

47. The term “earlier trade mark” is defined in section 5 of the Ordinance.

References to an earlier trade mark shall be construed as including a trade mark in

respect of which an application for registration has been made under the Ordinance

and which, if registered, would constitute an earlier trade mark under or by virtue of

section 5(1)(a), subject to its being so registered.

48. As I have pointed out, Annex 1 hereto reproduces the list of registered trade

marks relied upon by the opponent in launching the opposition against the subject

application. There are many of them and it is just impracticable and unnecessary for

me to consider each of them here, suffice to say that given the fact that the subject

mark is the word mark “KAPPA”, and the fact that the opponent has registered its

own word mark “KAPPA” in, among other classes, Classes 25 and 28 and my finding

that this mark had long been used and promoted extensively in respect of apparel,

footwear and accessories, I find the registration that really matters for the present

purposes is the following registration:-

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Registration

No.

Trade Mark Class

Specification

300757963

25

Clothing; sportswear, sports uniforms and

jerseys, swimwear, underwear, leatherwear,

leather trousers, leather skirts, leather jackets,

leather coats, leather vests, and loungewear;

pants, trousers, jeans, shorts, jackets, coats,

overcoats, raincoats, hosiery, sweaters,

cardigans, fleece and polar fleece tops and

bottoms, training and track suits, shirts,

woven shirts, sweat shirts, polo shirts, t-shirts,

tank tops, tops, cut and sew tops, dresses,

skirts, gowns, socks; robes; bands, sweat

bands, wrist bands; scarves; gloves; headgear;

hats, caps, and head bands; belts and ties;

footwear; shoes, boots, chaps, sandals,

slippers, sport and athletic shoes.

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Games and playthings; gymnastic and

sporting articles not included in other classes;

decorations for Christmas trees; gymnastic

and sporting goods and equipment, namely

balls for games, namely footballs, soccer

balls, basketballs, volley balls, tennis balls,

golf balls, hockey balls and pucks, baseballs

and rugby balls; bladders of balls for games;

sporting accessories, namely football goals,

soccer goals, volleyball nets and volleyball

court lines, tape for making volleyball court

lines, tennis nets and tennis court lines, tape

for making tennis court lines, hockey

accessories, namely hockey sticks, shin pads

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for hockey, rugby field accessories, namely

rugby goals, swimming pool accessories,

namely, inflatable float mattresses for

recreational use, rings and tubes, racing lanes;

body boards, protective padding for playing

football, soccer, hockey, baseball and rugby,

namely, body guards, hand guards, elbow

guards, knee guards, shin guards all for

athletic use; gloves for games, namely

football gloves, goalkeepers' gloves, hockey

gloves, baseball gloves, rugby gloves and golf

gloves; bats; golf clubs, golf putter, golf putter

holder, golf club heads, golf club head covers,

golf shaft, golf grips, tees, golf and tennis ball

retrievers, golf ball markers, tennis rackets,

tennis racket strings, tennis ball baskets; roller

skates, ice skates, inline roller skates,

swimming flippers, stand alone video game

machines, hand held units for playing

videogames; arcade games, stand alone audio

output game machines, dice, nine-pin bowling

alleys; electronic toys, playthings.

49. This opponent’s mark "KAPPA", as chosen above, is the same as the subject

mark. It has obtained registrations in Hong Kong on 10 November 2006 in respect

of goods in a number of classes, among which are Classes 25 and 28 as set out above.

This mark meets the criteria of “earlier trade mark” as defined under section 5(1)(a) of

the Ordinance.

The average consumer

50. As the case law indicates, in the global assessment of the likelihood of

confusion, account should be taken of the average consumer of the category of goods

and services concerned, who is reasonably well informed and reasonably observant

and circumspect. It should also be borne in mind that the average consumer’s level

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of attention is likely to vary according to the category of goods or services in question

(Mundipharma AG v Office for Harmonisation in the Internal Market (Trade Marks

and Designs) (OHIM) – Altana Pharma (RESPICUR) (T-256/04) [2007] E.C.R.

II-449 at [42] and the case law cited), and I have to determine the manner in which

these goods and services are likely to be selected by the average consumer in the

course of trade.

51. The concept of "average consumer" has been well discussed in many of the

case laws of the UK and the European Union. However, given that apparently very

different categories of goods are concerned in the present proceedings, take for

example the applicant’s applied for goods are “cigarettes, tobacco and tobacco

products, lighters, matches and smokers' requisites”, whereas the opponent's

"KAPPA" mark has long and extensively been used in relation to apparel, footwear

and accessories, the peculiar question arises is this: who is the average consumer

when the parties are targeting different markets? Since the opponent's mark

"KAPPA" has acquired a greater degree of distinctive character through use, and use

has largely been made in relation to apparel, footwear and accessories, but not the

other goods for which it is registered, if the opponent wishes to rely upon such

acquired distinctive character as increasing the likelihood of confusion, as a matter of

logic, the relevant average consumer for the purposes of assessing likelihood of

confusion should be the average consumer to whom the opponent's mark "KAPPA"

has become more distinctive.

52. I would therefore say that the relevant public is comprised of members of the

general public in Hong Kong who are interested in the goods of apparel, footwear and

accessories. As apparel, footwear and accessories are goods that would be required

by members of the public at large often, even though not on a daily basis, and the

costs and expenses involved would be affordable by an average consumer of the

general public, the public concerned is therefore virtually the public at large, who is

taken to be reasonably well informed and reasonably observant and circumspect.

Comparison of goods

53. According to settled case-law, in order to assess the similarity between goods or

services, all the relevant features of the relationship between them should be taken

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into account. Those features include, inter alia, their nature, their intended purpose,

their method of use and whether they are in competition with each other or are

complementary. Other factors may also be taken into account such as the

distribution channels of the goods or services concerned (see for example British

Sugar Plc v James Robertson and Sons Ltd [1996] R.P.C. 281; Canon Kabushiki

Kaisha v Metro-Goldwyn-Mayer Inc. See also Case T-443/05 El Corte Inglés v

OHIM – Bolaños Sabri (PiraÑ AM diseño original Juan Bolaños) [2007] ECR II-2579,

paragraph 37 and the case-law cited).

54. As I have discussed above, the applicant’s applied for goods are cigarettes,

tobacco and tobacco products, lighters, matches and smokers' requisites. For

convenience, I would just refer to them as cigarettes and tobacco products.

Cigarettes and tobacco products, obviously on the face of it, seem very different to

apparel, footwear and accessories of which the opponent's "KAPPA" mark has been

registered, used and attributed a reputation.

55. The opponent has not attempted to present any evidence or information

whatsoever that would give hint as to whether cigarettes and tobacco products may be

sold by the same undertaking that manufactures apparel, footwear and accessories, or

the public may expect apparel, footwear and accessories to be produced by the

manufacturer of cigarettes and tobacco products, nor did Mr. Philips Wong argue that

cigarettes and tobacco products are by their nature connected with apparel, footwear

and accessories, or that they are complementary to each other. Mr. Philips Wong has

indeed not seriously disputed that the goods are dissimilar.

Comparison of marks

56. Given that both the opponent’s mark "KAPPA" and the subject mark are just a

word mark consisting of the mere word “KAPPA”, it is apparent that they are

identical marks.

Distinctiveness of “KAPPA”

57. A mark may be particularly distinctive either per se or because of the reputation

it enjoys with the public. The more distinctive an earlier mark, the greater will be

18

the likelihood of confusion (Sabel BV v Puma AG).

58. In determining the distinctive character of an earlier trade mark, I must make an

overall assessment of the greater or lesser capacity of the mark to identify the goods

or services for which it has been registered as coming from a particular undertaking,

and thus to distinguish those goods or services from those of other undertakings. In

making that assessment, account should be taken, in particular, of the inherent

characteristics of the mark, including the fact that it does or does not contain an

element descriptive of the goods or services for which it has been registered; the

market share held by the mark; how intensive, geographically widespread and long

standing use of the mark has been; the amount invested by the undertaking in

promoting the mark; the proportion of the relevant section of the public which,

because of the mark, identifies the goods or services as originating from a particular

undertaking; and statements from chambers of commerce and industry or other trade

and professional associations (Windsurfing Chiemsee v Huber and Attenberger [1999]

E.C.R. I-2779; Lloyd Schuhfabrik Meyer v Klijsen Handel [1999] E.T.M.R. 690).

59. On the one hand, “KAPPA”, as the applicant alleged, is not an invented word

but is the 10th letter in the Greek alphabet. Be that as it may, since KAPPA is not a

word that would describe the characteristics of any goods in issue, I find it has good

inherent distinctiveness.

60. On the other hand, as I have found above, “KAPPA” and the DEVICE have

both become the distinguishing feature of the opponent and the opponent has acquired

through them a reputation and goodwill in its goods and services offered and

promoted in Hong Kong.

61. Hence, as far as the question of whether the “KAPPA” mark has acquired an

enhanced degree of distinctive character through use is concerned, I would hold that it

has.

Likelihood of confusion

62. The global assessment that I am required to undertake implies some

interdependence between the relevant factors. Thus, a lesser degree of similarity

19

between those goods or services may be offset by a greater degree of similarity

between the marks, and vice versa.

63. The present case is an extreme case of identical mark but wholly dissimilar

goods.

64. It has been said that the more distinctive the earlier mark, the greater the risk of

confusion (SABEL, paragraph 24). Marks with a highly distinctive character, either

per se or because of the reputation they possess on the market, enjoy broader

protection than marks with a less distinctive character (see Canon, paragraph 18, and

Lloyd Schuhfabrik Meyer, paragraph 20). As obvious from the discussions so far,

the “KAPPA” mark has acquired a much enhanced degree of distinctive character

through use in respect of apparel, footwear and accessories.

65. On the other hand, I also note that “KAPPA” and the DEVICE were often used

together, or there were many occasions to find both of them being used in the same

advertisements or promotional materials, even though they are placed widely apart

from one another.

66. Taking into account all factors, in particular the long and extensive use of both

“KAPPA” and the DEVICE in respect of apparel, footwear and accessories and the

recognition of both marks by the average consumers, and the very different nature of

the goods involved, I do not think there is a likelihood of consumers being confused

into believing that the goods of cigarettes, tobacco and tobacco products provided by

the applicant are those of the opponent’s or provided by some undertaking linked to

them, even though the applicant’s mark is also “KAPPA”. As I shall elaborate in the

later discussion, consumers may call to mind the opponent’s mark “KAPPA” when

they see the subject mark being used in relation to cigarettes and tobacco products, but

that does not mean that they are confused, rather a negative image may be conjured up

in that situation.

67. It follows that the ground of opposition under sections 12(2) and 12(3) fail.

20

Sections 12(4) of the Ordinance

68. Section 12(4) of the Ordinance provides as follows:

“(4) Subject to subsection (6), a trade mark which is-

(a) identical or similar to an earlier trade mark; and

(b) proposed to be registered for goods or services which are not identical or

similar to those for which the earlier trade mark is protected,

shall not be registered if, or to the extent that, the earlier trade mark is entitled to

protection under the Paris Convention as a well-known trade mark and the use of

the later trade mark without due cause would take unfair advantage of, or be

detrimental to, the distinctive character or repute of the earlier trade mark.”

69. Section 12(4) of the Ordinance, like sections 12(2) and 12(3), requires the

existence of an earlier trade mark which is identical or similar to the mark in question.

Moreover, section 12(4) requires that the earlier trade mark is entitled to protection

under the Paris Convention as a well-known trade mark.

70. As in the case of section 12(2) and 12(3), I identify the opponent’s word mark

“KAPPA” registered in Classes 25 and 28 under registration number 300757963 to be

the possible earlier trade mark. But that mark has also to be a well-known trade

mark.

71. Section 4 of the Ordinance provides that a trade mark which is entitled to

protection under the Paris Convention as a well-known trade mark shall be construed

as references to a trade mark which is well known in Hong Kong, and further provides

that in determining whether a trade mark is well known in Hong Kong, the Registrar

or the court shall have regard to Schedule 2 to the Ordinance.

72. I have examined all the evidence of use of the opponent’s marks filed in these

proceedings and found that the word mark “KAPPA” and the DEVICE have both

become the distinguishing feature of the opponent and the opponent has acquired

through them a reputation and goodwill in its goods and services offered and

21

promoted in Hong Kong. Nonetheless, it is another matter whether “KAPPA” is a

trade mark which is entitled to protection under the Paris Convention as a well-known

trade mark. Paragraph 1 of Schedule 2 to the Ordinance has the following

provisions:-

“(1) In determining for the purposes of section 4 (meaning of "well-known trade

mark") whether a trade mark is well known in Hong Kong, the Registrar or the

court shall take into account any factors from which it may be inferred that the

trade mark is well known in Hong Kong.

(2) In particular, the Registrar or the court shall consider any information

submitted to the Registrar or the court from which it may be inferred that the trade

mark is, or is not, well known in Hong Kong, including, but not limited to,

information concerning the following-

(a) the degree of knowledge or recognition of the trade mark in the relevant sectors

of the public;

(b) the duration, extent and geographical area of any use of the trade mark;

(c) the duration, extent and geographical area of any promotion of the trade mark,

including advertising or publicity and the presentation, at fairs or exhibitions, of

the goods or services to which the trade mark applies;

(d) the duration and geographical area of any registrations, or any applications for

registration, of the trade mark, to the extent that they reflect use or recognition of

the trade mark;

(e) the record of successful enforcement of rights in the trade mark, in particular,

the extent to which the trade mark has been recognized as a well-known trade mark

by competent authorities in foreign jurisdictions; and

(f) the value associated with the trade mark.

(3) The factors mentioned in subsection (2) are intended to serve as guidelines to

assist the Registrar and the court to determine whether the trade mark is well

known in Hong Kong. It is not a precondition for reaching that determination that

information be submitted with respect to any of those factors or that equal weight

be given to each of them. Rather, the determination in each case will depend upon

the particular circumstances of that case. In some cases all of the factors may be

relevant. In other cases some of the factors may be relevant. In still other cases

none of the factors may be relevant, and the decision may be based on additional

22

factors that are not mentioned in subsection (2). Such additional factors may be

relevant alone, or in combination with one or more of the factors mentioned in

subsection (2).”

73. Although the factors listed above are expressly not meant to be exclusive, nor

exhaustive, it is still instructive to evaluate the evidence of use of the opponent’s

marks against each one of them, to see whether there is strong indication that the

KAPPA word mark is well known in Hong Kong.

(a) The degree of knowledge or recognition of the trade mark in the relevant sectors of

the public

74. There are many sports brands in Hong Kong, the opponent is just one of them

and of course some are more famous than the others. There is no direct evidence to

shed light on the degree of knowledge or recognition of the trade mark KAPPA among

the sportswear consumers in Hong Kong. Nevertheless, an annual turnover

exceeding 18 million Hong Kong Dollars for the years 2004 to 2008 is quite an

impressive figure to me, even though there is no information showing how significant

it is when compared to other well-known sportswear brands.

(b) The duration, extent and geographical area of any use of the trade mark

75. According to Mr. Sindico, the “KAPPA” trade mark was created in Italy in the

1950s, and its use in Hong Kong could be traced back to the 1990s when MCT signed

a distribution and licence agreement with the company Gallant in 1991 for the

territory of Hong Kong. The long duration and wide extent of use of the mark,

which presumably covered all areas over the territory of Hong Kong, is one which is

capable of turning it into a well-known trade mark.

(c) The duration, extent and geographical area of any promotion of the trade mark,

including advertising or publicity and the presentation, at fairs or exhibitions, of the

goods or services to which the trade mark applies

76. As I said above, the only Hong Kong-related materials are a collection of

invoices in Exhibit 12 and evidence of the opponent’s sponsorship activities in Hong

Kong in Exhibit 13. It is a bit surprising to see that the opponent did not include in

23

its evidence filed any advertisement displayed in, say, a local magazine or newspaper

advertising and promoting the KAPPA mark directly to the local consumers, other

than a collection of leaflets and promotional materials relating to the sponsor activities.

But the apparent absence of direct advertisement of the goods from the evidence filed,

and the relative abundance of sponsorship activities in particular sports activities, may

just points to the fact that the opponent’s KAPPA mark is so well known and

recognized by the consuming public in Hong Kong that the opponent would focus its

resource and effort in just promoting the healthy life-style image embedded in the

activities sponsored.

77. In the “Skeleton Argument for the Applicant”, Mr. Ling notes that the

opponent’s official sponsorship of sporting teams was in Europe and elsewhere, but

notably absent from the list at Exhibit 2 to Sindico’s statutory declaration is any teams

and individual sportsmen from Hong Kong. This is not quite correct as the

marketing summary and sponsorship activities list at Exhibit 13 show at least a young

soccer team which was promoted to the local League A in 2008-2009, and KAPPA is

the official apparel sponsor for the Hong Kong Team which has participated in the

12th Special Olympics World Summer Games held in Shanghai in 2007.

78. Mr. Philips Wong points out that the opponent’s marks were used to sponsor

several teams of international renown over the years, to say the least some

well-known football teams including AC Milan, Roma, Ajax, etc. I take it as

generally accepted that a number of football teams playing in Europe are well known

to local people, and matches played by them would be watched by local audience

whether via paid or free television channels. Mr. Philips Wong also highlights other

musical, cultural and athletic events in which the opponent’s KAPPA trade marks had

been used for collaboration, partnership and sponsorship.

(d) The duration and geographical area of any registrations, or any applications for

registration, of the trade mark, to the extent that they reflect use or recognition of the

trade mark

79. In the Grounds of Opposition, the opponent has produced a large pile of

registration records of the word mark KAPPA over the world in its "Exhibit 1", and of

the composite mark comprising KAPPA and the DEVICE in "Exhibit 2". This,

24

coupled with the impressive figures of the “Local Direct Advertising contribution”

and the annual turnover as set out in Sindico’s statutory declaration, and use of the

marks in sportswear and technical sports gear since late 1970s, leaves no doubt that

KAPPA, the DEVICE and their combination (i.e., the composite mark) has gained

recognition and reputation at least among the more sports and leisurewear aware

sections of the public in many parts across the world.

(e) The record of successful enforcement of rights in the trade mark, in particular, the

extent to which the trade mark has been recognized as a well-known trade mark by

competent authorities in foreign jurisdictions

80. There is the decision Karelia Tobacco Company Inc v Basic Trademark SA

issued by OHIM on 1 December 2010 in a proceedings between the same parties as

the present proceedings, and later the appeal decision on it issued by the Fifth Board

of Appeal on 12 March 2012 whereby the Board upheld the former’s decision to the

effect that the use of the word mark KAPPA in respect of tobacco products and the

like would be detrimental to the repute of a device mark containing the word KAPPA

which had a reputation for sports clothing and footwear, on the basis that the

opponent's goods were “intrinsically related to the concept of a healthy lifestyle” in

the minds of the relevant consumer whereas “smoking tobacco is universally

considered to be an extremely unhealthy habit” ([37]–[38]). There is also the

opposition decision issued by the Intellectual Property of Singapore on 18 November

2011, again between the same parties as the present proceedings, ruled in favour of

the opponent.

(f) The value associated with the trade mark.

81. There is no doubt that the word sign “KAPPA” and the DEVICE have both

become the distinguishing feature of the opponent and the opponent has acquired

through them substantial reputation and goodwill in its goods and services offered and

promoted across the world. Judging from the impressive turnover and advertising

figures given in Sindico’s statutory declaration, and the wide licensing network

disclosed, the KAPPA mark should be of very high value to the opponent.

82. Mr. Philips Wong points out that the evidence adduced by the opponent is

25

largely unchallenged until the filing of the Skeleton Argument for the Applicant.

Taking all factors into consideration, there is no doubt KAPPA has been a world

renowned brand in sports and leisurewear. From the discussions in paragraphs

205-212 and 260 of the Court of First Instance case Stichting BDO v Banco De Oro

Unibank Inc [2013] 1 HKLRD 847, which in turn drew reference from the ECJ case

General Motors Corp v Yplon SA [2000] RPC 572, it is clear that the reputation

concerning a well-known trademark depends on the products or services marketed and

the requisite knowledge is when the earlier mark is known by a significant part of the

public concerned by the products or services covered by that trade mark. Given the

above discussion as to the duration, extent and geographical area of the use of the

opponent's KAPPA trade marks, evidence on promotion of and recognition of the

opponent's word mark “KAPPA” as well-known mark in foreign jurisdictions,

“KAPPA” should be well known among section of the public in Hong Kong who are

used to purchase the goods of apparel, footwear and accessories, and as these goods

are ordinary items in the daily life of the public, they should constitute a significant

part of the public at large.

83. After establishing that the opponent’s “KAPPA” mark is a trade mark which is

entitled to protection under the Paris Convention as a well-known trade mark for the

purposes of section 12(4) of the Ordinance, I now go on to examine the other

requirements. In Case C-292/00 Davidoff & Cie SA v Gofkid Ltd [2003] E.C.R.

I-389 and Case C-408/01 Adid-as-Salomon AG v Fitnessworld Trading Ltd [2003]

E.C.R. I-12537, the CJEU held that, although the wording of Article 5(2) of the

Directive and Article 9(1)(c) of the Regulation (both of which are similar, though not

identical, to section 12(4) of the Ordinance) refer to goods or services which are not

similar to those for which the mark is registered, this form of protection also extends

to cases where a sign which is identical with or similar to the trade mark is used in

relation to goods or services identical with or similar to those covered by the trade

mark. The Court of Justice also held in Adidas-Salomon AG that it is not necessary

for the trade mark proprietor to establish a likelihood of confusion in order to succeed

in such a claim.

84. In order for the qualified earlier mark succeed under section 12(4) of the

Ordinance, four requirements must be satisfied. The first is that the trade mark is well

known in Hong Kong. That I have found above.

26

85. The second is that there is a degree of similarity between the two marks which

need not be such as to give rise to a likelihood of confusion but may merely have the

effect that the relevant section of the public ‘establishes a link’ between them. In the

case Intel Corporation Inc v CPM United Kingdom Ltd [2009] R.P.C. 15, CJEU said

that the existence of such a link must be assessed globally, taking into account all

factors relevant to the circumstances of the case . Those factors include:

- the degree of similarity between the conflicting marks;

- the nature of the goods or services for which the conflicting marks were

registered, including the degree of closeness or dissimilarity between

those goods or services, and the relevant section of the public;

- the strength of the earlier mark's reputation;

- the degree of the earlier mark's distinctive character, whether inherent or

acquired through use;

- the existence of the likelihood of confusion on the part of the public.

86. Each of the above has been discussed somewhere above in this decision and I

do not see the need to repeat them here, suffice to say that, as I have found above,

since the opponent’s KAPPA mark is well known among the section of the public in

Hong Kong who are interested in the goods of apparel, footwear and accessories, .and

that constitutes a significant portion of the public at large, that would in fact overlap at

least to some extent with another section of the public who would purchase cigarettes

and tobacco products. It follows from the facts that both marks are identical and

KAPPA has a strong distinctive character and highly reputed, that an average

consumer, who is reasonably well informed and reasonably observant and

circumspect, upon seeing the subject mark, is very likely to call the opponent’s

KAPPA mark to mind, and this is tantamount to the existence of a link between the

two marks.

87. The third requirement under section 12(4) of the Ordinance is that the earlier

trade mark proprietor must establish the existence of one of three kinds of injury,

27

which were described by the Court of Justice in L’Oréal v Bellure as follows:

“37.The existence of such a link in the mind of the public constitutes a condition which is necessary

but not, of itself, sufficient to establish the *749 existence of one of the types of injury against which

Article 5(2) of Directive 89/104 ensures protection for the benefit of trade marks with a reputation

(see, to that effect, Intel Corporation , paragraphs 31 and 32).

38.Those types of injury are, first, detriment to the distinctive character of the mark, secondly,

detriment to the repute of that mark and, thirdly, unfair advantage taken of the distinctive character

or the repute of that mark (see, to that effect, Intel Corporation , paragraph 27).

39.As regards detriment to the distinctive character of the mark, also referred to as ‘dilution’,

‘whittling away’ or ‘blurring’, such detriment is caused when that mark's ability to identify the

goods or services for which it is registered is weakened, since use of an identical or similar sign by a

third party leads to dispersion of the identity and hold upon the public mind of the earlier mark. That

is particularly the case when the mark, which at one time aroused immediate association with the

goods or services for which it is registered, is no longer capable of doing so (see, to that effect, Intel

Corporation , paragraph 29).

40.As regards detriment to the repute of the mark, also referred to as ‘tarnishment’ or ‘degradation’,

such detriment is caused when the goods or services for which the identical or similar sign is used

by the third party may be perceived by the public in such a way that the trade mark's power of

attraction is reduced. The likelihood of such detriment may arise in particular from the fact that the

goods or services offered by the third party possess a characteristic or a quality which is liable to

have a negative impact on the image of the mark.

41.As regards the concept of ‘taking unfair advantage of the distinctive character or the repute of

the trade mark’, also referred to as ‘parasitism’ or ‘free-riding’, that concept relates not to the

detriment caused to the mark but to the advantage taken by the third party as a result of the use of

the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image

of the mark or of the characteristics which it projects to the goods identified by the identical or

similar sign, there is clear exploitation on the coat-tails of the mark with a reputation.

42.Just one of those three types of injury suffices for Article 5(2) of Directive 89/104 to apply (see,

to that effect, Intel Corporation , paragraph 28).”

88. In the present case, as regards detriment to the distinctive character of the mark

and the repute of the mark, Mr. Philips Wong put much of his argument effort into the

latter rather than the former. I would therefore focus on the detriment to the repute

28

of the opponent’s KAPPA mark.

89. Mr. Philips Wong’s submission is that the opponent’s mark is primarily reputed

for clothing and sport clothing items, and since these products in the mind of the

relevant consumers are intrinsically related to the concept of a healthy lifestyle, the

opponent’s mark therefore denotes also positive attributes of leisure, recreational and

sports activities, as evidenced by the enormous and active sponsorship of the

opponent’s mark in the sports world. The applicant’s cigarettes and tobacco

products, on the other hand, are universally considered to be extremely unhealthy

products. Thus the use of the subject mark for such unhealthy products is likely to

prompt negative mental associations with the healthy or healthy lifestyle image

projected by the opponent’s mark, causing detriment therefore to its repute.

90. As a matter of fact, the opposition division of OHIM between the same parties

here had made exactly such a finding in its decision on 1 December 2010, which was

upheld on appeal by the Fifth Board of Appeal on 12 March 2012 (Karelia Tobacco

Company Inc v Basic Trademark SA). The Board in effect held that the use of the

word mark KAPPA in respect of tobacco products and the like would be detrimental

to the repute of a device mark containing the word KAPPA which had a reputation for

sports clothing and footwear, on the basis inter alia that the opponent's goods were

“intrinsically related to the concept of a healthy lifestyle” in the minds of the relevant

consumer whereas “smoking tobacco is universally considered to be an extremely

unhealthy habit” (paragraphs [37]-[38]).

91. Although this Registry is not bound by any decision or finding of OHIM, I can

see no factual or logical reason not to follow the above decision in the present

proceedings. I think it’s not in dispute that cigarettes and tobacco are perceived by

the public as unhealthy products, as David Yam J said in JMTM Inc v Registrar of

Trade Marks [2008] HKEC 2132, “In the wake of all the disputes between tobacco

companies and other scientific research, I think the matter is quite settled now.

Cigarette will cause lung cancer, and cigar and tobacco will cause naso-pharengial

cancer (NPC).” The image that would generate from cigarettes and tobacco is quite

incompatible and inconsistent with that of sports clothing and footwear, and use of the

subject mark on the goods of cigarettes and tobacco products would reduce the power

of attraction of the opponent’s mark in relation to sports clothing and footwear for

29

which it had a high reputation, the repute of the opponent’s word mark KAPPA would

be tarnished or degraded as a result. I hold that there is real likelihood of detriment

to the repute of the opponent’s word mark KAPPA if the subject mark is registered.

92. As pointed out above, just one of those three types of injury suffices for section

12(4) of the Ordinance to apply. I do not need to consider whether the subject mark

would take unfair advantage of the distinctive character or the repute of the

opponent’s mark.

93. The final requirement under section 12(4) of the Ordinance is that the use of the

sign must be “without due cause”. In Premier Brands UK Ltd v Typhoon Europe Ltd

[2000] F.S.R. 767 Neuberger J cited with apparent approval a statement by the

Benelux Court in Lucas Bols [1976] I.I.C. 420 at 425 about what “without due cause”

means to the following effect: "What this require, as a rule, is that the user (of the

mark) is under such a compulsion to use this very mark that he cannot honestly be

asked to refrain from doing so regardless of the damage the owner of the mark would

suffer from such use, or that the user is entitled to the use of the mark in his own right

and does not have to yield this right to that of the owner of the mark …"

94. Karelias in his statutory declaration alleged that the mark KAPPA is not an

invented word, but was adopted by the applicant as its trade mark because KAPPA is

the 10th letter in the Greek alphabet, which is the initial letter of the word “Karelia”

which is the applicant’s name as well as a key component of many of the applicant’s

trade mark registrations in Hong Kong. I note, however, the applicant’s Hong Kong

trade mark registrations are in respect of marks that contain the word “KARELIA”

rather than the word “KAPPA”. Even putting aside this fallacy and accept what Mr.

Karelias said on behalf of the applicant, I do not think the explanation offered could

constitute a justifiable reason for the applicant to choose to use an identical mark with

the opponent’s when the opponent’s mark KAPPA has become such a well-known

trade mark across the world for a long time. I do not find there is any due course

shown.

95. The opponent’s case has met all four requirements under section 12(4) of the

Ordinance. It follows that the ground of opposition under section 12(4) succeeds.

30

96. As I have found in favour of the opponent on the ground of opposition under

section 12(4) of the Ordinance, it is not necessary for me to further consider the

grounds of opposition under sections 11(5)(b) and 12(5)(a).

Conclusion

97. As the opponent has been successful in this opposition, I award the opponent

costs. Subject to any representations, as to the amount of costs or calling for special

treatment, which either the opponent or the applicant makes within one month from

the date of this decision, costs will be calculated with reference to the usual scale in

Part I of the First Schedule to Order 62 of the Rules of the High Court (Cap. 4A) as

applied to trade mark matters, unless otherwise agreed.

(Frederick Wong)

for Registrar of Trade Marks

8 October 2014

31

Annex 1

Trade Mark

No

Trade Mark Class Goods

19830504

25 Clothing, including boots, shoes and

slippers.

19850446

3 Soap, perfumery, cosmetics, hair care

products, dentifrices.

19850447AA

18 Leather and imitations of leather, and

articles made from these materials, and

not included in other classes, bags and

handbags included in Class 18;

umbrellas, parasols, walking sticks.

28 Toys, games, playthings, sporting articles

(except clothing).

200011498

9 Contact lenses, containers for contact

lenses, eyeglass cases, eyeglass chains,

eyeglass cords, eyeglass frames,

eyeglasses, eyepieces, lens hoods,

sunglasses, parts and/or fittings for all the

aforesaid goods; all included in Class 9.

1991B2629

25 Clothing, footwear, headgear; but not

including robes.

200109858

14 Precious metals and their alloys and

goods in precious metals or coated

therewith, not included in other classes;

jewellery, precious stones; horological

and chronometric instruments, clocks,

wrist watches, watch bands, key rings,

cups of precious metal, purses of precious

metal and trinkets; all included in Class

14.

300757963

3 Bleaching preparations and other

substances for laundry use; cleaning,

polishing, scouring and abrasive

preparations; soaps; perfumery, essential

oils, hair lotions; dentifrices; body soaps,

perfumes, essential oils for personal use,

cosmetics, aftershave lotions, aftershave

balm, cleansing milk, talcum powder,

sunscreens, astringents, cleansers,

foundation creams, toners, compacts, eye

shadow, rouge, mascara, skin creams, eye

32

liner and lip liner, lipsticks, skin lotions,

powder makeup, liquid makeup, makeup

removing creams and lotions, beauty

masks, nail care preparations, nail varnish

remover, nail top gloss hardeners, cuticle

oil, nail buffing preparations.

9 Games, and amusement apparatus,

namely video game machines adapted for

use with television receivers only;

electronic games, namely computer

software for videogames, computer

games, cd-rom games, electronic game

cards; optical apparatus and instruments,

namely, eye glasses, sunglasses,

spectacles, frames; spectacles in the

nature of goggles, and parts therefore,

clothing and footwear for protection

against accidents, irradiation and fire;

protective clothing, namely vests, jackets,

trousers, gloves, protective shoes and

boots; protective caps and protective

glasses.

16 Stationery, transfers (decalcomanias),

cards, business cards, stickers

(stationery); posters, calendars,

photographs; writing instruments; office

requisites (except furniture).

18 Leather and imitations of leather, and

goods made of these materials and not

included in other classes; animal skins,

hides; trunks and travelling bags;

umbrellas, parasols and walking sticks;

whips, harness and saddlery; bags, travel

bags and luggage; duffel bags; hand bags,

knapsacks, rucksacks, school bags;

shoulder bags; suitcases, briefcases;

all-purpose sport bags; purses, drawstring

pouches, wallets.

25 Clothing; sportswear, sports uniforms and

jerseys, swimwear, underwear,

leatherwear, leather trousers, leather

skirts, leather jackets, leather coats,

leather vests, and loungewear; pants,

trousers, jeans, shorts, jackets, coats,

overcoats, raincoats, hosiery, sweaters,

cardigans, fleece and polar fleece tops

and bottoms, training and track suits,

shirts, woven shirts, sweat shirts, polo

shirts, t-shirts, tank tops, tops, cut and

sew tops, dresses, skirts, gowns, socks;

33

robes; bands, sweat bands, wrist bands;

scarves; gloves; headgear; hats, caps, and

head bands; belts and ties; footwear;

shoes, boots, chaps, sandals, slippers,

sport and athletic shoes.

28 Games and playthings; gymnastic and

sporting articles not included in other

classes; decorations for Christmas trees;

gymnastic and sporting goods and

equipment, namely balls for games,

namely footballs, soccer balls,

basketballs, volley balls, tennis balls, golf

balls, hockey balls and pucks, baseballs

and rugby balls; bladders of balls for

games; sporting accessories, namely

football goals, soccer goals, volleyball

nets and volleyball court lines, tape for

making volleyball court lines, tennis nets

and tennis court lines, tape for making

tennis court lines, hockey accessories,

namely hockey sticks, shin pads for

hockey, rugby field accessories, namely

rugby goals, swimming pool accessories,

namely, inflatable float mattresses for

recreational use, rings and tubes, racing

lanes; body boards, protective padding

for playing football, soccer, hockey,

baseball and rugby, namely, body guards,

hand guards, elbow guards, knee guards,

shin guards all for athletic use; gloves for

games, namely football gloves,

goalkeepers' gloves, hockey gloves,

baseball gloves, rugby gloves and golf

gloves; bats; golf clubs, golf putter, golf

putter holder, golf club heads, golf club

head covers, golf shaft, golf grips, tees,

golf and tennis ball retrievers, golf ball

markers, tennis rackets, tennis racket

strings, tennis ball baskets; roller skates,

ice skates, inline roller skates, swimming

flippers, stand alone video game

machines, hand held units for playing

videogames; arcade games, stand alone

audio output game machines, dice,

nine-pin bowling alleys; electronic toys,

playthings.

300754281 3 Bleaching preparations and other

substances for laundry use; cleaning,

polishing, scouring and abrasive

preparations; soaps; perfumery, essential

34

oils, hair lotions; dentifrices; body soaps,

perfumes, essential oils for personal use,

cosmetics, aftershave lotions, aftershave

balm, cleansing milk, talcum powder,

sunscreens, astringents, cleansers,

foundation creams, toners, compacts, eye

shadow, rouge, mascara, skin creams, eye

liner and lip liner, lipsticks, skin lotions,

powder makeup, liquid makeup, makeup

removing creams and lotions, beauty

masks, nail care preparations, nail varnish

remover, nail top gloss hardeners, cuticle

oil, nail buffing preparations.

9 Scientific, nautical, surveying,

photographic, cinematographic, optical,

weighing, measuring, signalling,

checking (supervision), life-saving and

teaching apparatus and instruments;

apparatus and instruments for conducting,

switching, transforming, accumulating,

regulating or controlling electricity;

apparatus for recording, transmission or

reproduction of sound or images;

magnetic data carriers, recording discs;

automatic vending machines and

mechanisms for coin-operated apparatus;

cash registers, calculating machines, data

processing equipment and computers;

fire-extinguishing apparatus; electronic

games and amusement apparatus, namely

video game machines adapted for use

with television receivers only; electronic

games, namely computer software for

videogames, computer games, cd-rom

games, electronic game cards; optical

apparatus and instruments, namely, eye

glasses, sunglasses, spectacles, frames;

spectacles in the nature of goggles, and

parts therefore, clothing and footwear for

protection against accidents, irradiation

and fire; protective clothing, namely

vests, jackets, trousers, gloves, protective

shoes and boots; protective caps and

protective glasses.

14 Precious metals and their alloys and

goods in precious metals or coated

therewith, not included in other classes;

jewellery, precious stones; costume

jewellery and trinkets; cuff links, tie pins;

jewellery boxes of precious metal; cups,

35

medals, badges, purses (of precious

metal); key-rings (of precious metal);

horological and chronometric

instruments, including clocks, watches,

wrist watches and parts thereof including

watch bands and laces; eyeglass frames

of precious metal.

16 Paper, cardboard and goods made from

these materials, not included in other

classes; printed matter; bookbinding

material; photographs; writing

instruments; stationery; adhesives for

stationery or household purposes; artists'

materials; paint brushes; typewriters and

office requisites (except furniture);

instructional and teaching material

(except apparatus); plastic materials for

packaging (not included in other classes);

printers' type; printing blocks; transfers

(decalcomanias), cards, business cards,

stickers (stationery); posters, calendars.

18 Leather and imitations of leather, and

goods made of these materials and not

included in other classes; animal skins,

hides; trunks and travelling bags;

umbrellas, parasols and walking sticks;

whips, harness and saddlery; bags, travel

bags and luggage; duffel bags; hand bags,

knapsacks, rucksacks, school bags;

shoulder bags; suitcases, briefcases;

all-purpose sport bags; purses, drawstring

pouches, wallets.

28 Games and playthings; gymnastic and

sporting articles not included in other

classes; decorations for Christmas trees;

gymnastic and sporting goods and

equipment, namely balls for games,

namely footballs, soccer balls,

basketballs, volley balls, tennis balls, golf

balls, hockey balls and pucks, baseballs

and rugby balls; bladders of balls for

games; sporting accessories, namely

football goals, soccer goals, volleyball

nets and volleyball court lines, tape for

making volleyball court lines, tennis nets

and tennis court lines, tape for making

tennis court lines, hockey accessories,

namely hockey sticks, shin pads for

hockey, rugby field accessories, namely

rugby goals, swimming pool accessories,

36

namely, inflatable float mattresses for

recreational use, rings and tubes, racing

lanes; body boards, protective padding

for playing football, soccer, hockey,

baseball and rugby, namely, body guards,

hand guards, elbow guards, knee guards,

shin guards all for athletic use; gloves for

games, namely football gloves,

goalkeepers' gloves, hockey gloves,

baseball gloves, rugby gloves and golf

gloves; bats; golf clubs, golf putter, golf

putter holder, golf club heads, golf club

head covers, golf shaft, golf grips, tees,

golf and tennis ball retrievers, golf ball

markers, tennis rackets, tennis racket

strings, tennis ball baskets; roller skates,

ice skates, inline roller skates, swimming

flippers, stand alone video game

machines, hand held units for playing

videogames; arcade games, stand alone

audio output game machines, dice,

bowling nine pins.