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TRADE MARKS ORDINANCE (Cap. 559) OPPOSITION TO TRADE MARK APPLICATION NO. 300051001 MARK :

CLASS :

32

APPLICANT :

TING YI (CAYMAN ISLANDS) HOLDING CORP.

OPPONENT :

ESPN, INC.

STATEMENT OF REASONS FOR DECISION

Background

1. On 22 July 2003, Ting Yi (Cayman Islands) Holding Corp. (the “applicant”) filed an application under the Trade Marks Ordinance, Cap 559 (the “Ordinance”) for registration of the mark, which is represented above (the “suit mark”), in Class 32 in respect of “beers; essences fo r making beverages, fruit juices, fruit nectars, grape must, isotonic beverages, lithia water, milk of almond beverages, mineral water, non-alcoholic beverages, non-alcoholic fruit extracts, non-alcoholic fruit juice beverages, peanut milk beverages, powders for effervescing beverages, soda water, syrups for lemonade, tomato juice for beverages, waters, whey beverages; aerated waters; syrups and other preparations for making beverages”.

2. Particulars of the subject application were published on 17 October 2003. The Opponent filed a notice of opposition which includes the grounds of opposition on 16 January 2004.

3. The opposition hearing took place before me on 17 October 2007. At the hearing, Mr. C.W. Ling, counsel, instructed by China.hk Intellectual Property Services Co., Ltd., appeared for the applicant, and Mr. Philips B.F. Wong, counsel, instructed by Sit, Fung, Kwong & Shum, Solicitors, appeared for the opponent.

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Grounds of opposition

4. The opponent opposes registration of the suit mark under sections 3(1), 11(1)(a), 11(1)(b), 11(1)(c), 11(1)(d), 11(4)(a), 11(5)(a), 11(5)(b), 12(1) to 12(4), 12(5) and 63 of the Ordinance.

The opponent’s marks

5. The opponent states at paragraph 3 of the grounds of opposition (which has been amended to include the graphical representations of the marks mentioned therein) that it is the owner of the following trade marks, which have been registered with the Hong Kong Trade Marks Registry in a number of classes in respect of different goods and services, details of the registration are set out in Appendix I hereto:

(a) (referred to as the “SPORTSCENTER” mark)

(b) (referred to as the “X Games & globe device (black)” mark)

(c) (referred to as the “X Games & globe device (grey)” mark)

(d) (referred to as the “XG X GAMES” mark)

(e)

(referred to as the “X Games & globe device (white)” mark)

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Counter-statement

6. The applicant filed a counter-statement on 26 April 2004. In the counter-statement, the applicant avers that to the general public at large in Hong Kong, the suit mark is visually, phonetically and conceptually very different from the marks of the opponent as depicted in paragraph 5 above, and the goods it sought to be registered upon, namely, beers and other non-alcoholic drinks in Class 32, are totally unrelated to the goods or services upon which the opponent has secured or intended to secure registration for its marks. The applicant further avers that “although ESPN is known to a section of the Hong Kong public for sports events and sports programmes, the said marks of the opponent are not well known in Hong Kong”, and they are not entitled to protection under the Paris Convention as well-known trade marks under section 63 of the Ordinance.

The opponent and its evidence

7. The opponent’s evidence comprises two statutory declarations of David Pahl. The first one was made on 14 April 2005 and the second on 6 July 2006. Mr. Pahl is the Vice President of the opponent.

8. According to Mr. Pahl, the opponent is one of the world’s leading multinational, multimedia sports entertainment companies. Established in 1979, the opponent has for many years been designing, packaging, exporting, distributing and selling a variety of goods, including videos, CDs, DVDs, computer games, bicycles, books, magazines, bags, luggage, clothing, hats and footwear, toys and sports equipment and beverages, and has been organizing, conducting and promoting sports competitions and providing sports entertainment services via different media, under and by reference to various marks, including what are called the “X GAMES, GAMES & Device trade marks”. The trade mark “X GAMES” was coined by the opponent in 1996 in connection with the X GAMES sporting event, which features a variety of action sports.

9. A comprehensive summary of what the X GAMES sporting event is about can be found in an article published in Sport Scene which was issued by the Hong Kong Sports Development Board at the end of 2003 (exhibited in Exhibit B, see paragraph 12 below):- “In recent years, a sporting culture called X-Games has taken a firm grip on sports lovers and has spread across the world at the speed of light. Its unconventional and thrill-seeking components have won the hearts of like-minded

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enthusiasts all over the world and has especially gained popularity among young people. The history of X-Games roughly dates back to 1995 when the US sports channel ESPN first held a competition for minority sports. These were sports that, at the time, did not fit into the description of mainstream sports. Many of these sports originated from street games and all of them featured elements of highly skilful stunts. And it is this aspect, the art of taking athletic skills to the extreme, that helped give these sports the name “Extreme Games”. This was changed to “X-Games” in the following year.”

10. Mr. Pahl claims that since 1996, the X GAMES sporting event has been held at least once every year in different parts of the world, and the trade mark “X GAMES” has become one of the world’s best known action sports trade marks.

11. Mr. Pahl further claims that the opponent first used its marks in Hong Kong in 1996. The opponent’s “Asian X GAMES” event was held in Phuket, Thailand, in 1998, 1999 and 2000 and in Kuala Lumpur, Malaysia, in 2002, 2003 and 2004. X GAMES sporting events have been broadcast via ESPN Asia in Hong Kong since 1996. The opponent has also organized the “Junior X GAMES Asia” event since 1999, for athletes aged ten to fourteen.

12. Mr. Pahl exhibits copies of the following to his first statutory declaration:

Exhibit information arranged in chronological order under the heading “The Life of X – A Brief History of the X Games”, downloaded from the website www.asianxgames.com.

Exhibit B – an article entitled “Meeting the Extreme Challenges of X-GAMES”, published in Sport Scene, Vol. 18, issued by the Hong Kong Sports Development Board (now dissolved and replaced by the Hong Kong Sports Institute Limited) at the end of 2003.

Exhibit C – certificates of registration of some of the marks registered by the opponent with the Hong Kong Trade Marks Registry.

Exhibit D – certificates of registration of marks registered by the opponent with trade marks registries in various countries around the world.

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Exhibit E – extracts of event management reports for events held in 1998, 1999, 2000, 2002 and 2004.

Exhibit F – bundles of event management reviews or reports, press clippings and post event reports covering the events held in the years 1998 to 2004.

Exhibit G – “Asian X Tour and Asian X Games Qualifier 2000 Telecast Schedule”, downloaded from www.expn.go.com.

Exhibit H – a television schedule entitled “X Games X Broadcast Schedule”, downloaded from www.asianxgames.com.

Exhibit I – a network distribution record, with a chart entitled “Channel distribution for July 2004”, issued by Corporate Communications Department of Singapore.

Exhibit J – network distribution records, with charts showing channel distribution for June or July in the years 2000 to 2004, issued by Corporate Communications Department of Singapore.

Exhibit K – extracts of management reviews or reports, press clippings and post event reports covering the “Asian X GAMES”.

Exhibit L – extracts of management reviews or reports showing figures of promotion for the “Asian X GAMES”.

Exhibit M – a table showing total broadcast hours via ESPN Asia and Hong Kong TVB for the Asian X GAMES events 2002, 2003 and 2004.

Exhibit N – information captioned “Junior X Games Event Fact Sheet” for the event held during the period 3rd to 10th December 2000, downloaded from www.expn.go.com.

Exhibit O – a press release entitled “Microsoft Announces Details of Japanese Xbox Launch on Feb. 22 – Japanese Pricing, Launch Games, Presales and Special Edition Xbox Announced”, downloaded from www.microsoft.com.

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Exhibit P – extracts from the Oxford Advanced Learner’s English-Chinese Dictionary showing the meanings of “sport” and “game”.

Exhibit Q – photographs, advertisements, and extracts from management reviews or reports, press clippings, post event reports and webpages, allegedly showing use of the “X GAMES” mark on products such as beverages, foodstuff, clothing, etc.

13. In his second statutory declaration, which was filed as evidence in reply to the applicant’s evidence and consists mainly of submissions and opinions which I do not propose to summarize here, Mr. Pahl exhibits copies of the following:

Exhibit R – search results for the words “sport” and “game” via online dictionaries such as Compact Oxford English Dictionary, Cambridge Advanced Learner’s Dictionary, etc.

Exhibit S – search results for “x sport” via the Google search engine.

Exhibit T – registration certificates or official trade marks records showing applications by or registrations owned by ESPN for the “X GAMES” mark in respect of food and beverage products.

Exhibit U – an article with a caption “XXX ACTION!”, downloaded from www.gadflyonline.com.

Exhibit V – an article with a caption “Just in Time for X Games, 7-Eleven Introduces Intense-Flavored Mountain Dew Slurpee”, downloaded from www.7-eleven.com.

Exhibit W – printout of advertisement of the 7-Eleven Mountain Dew Slurpee.

Exhibit X – printout allegedly showing a promotional booth and the stadium in the X GAMES event.

Exhibit Y – printout of Internet blog from the website HKSkateBoarding.com, dedicated to the Asian X Games VIII.

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Exhibit Z – official trade marks records showing applications or registrations owned by the opponent in respect of its X GAMES marks.

The applicant and its evidence

14. The applicant’s evidence comprises a statutory declaration of Wei Ing-Chou made on 21 October 2005. Mr. Wei is the Chairman and Chief Executive Officer of the applicant.

15. According to Mr. Wei, the applicant was incorporated under the laws of Cayman Islands on 12 January 1994. The applicant has been engaged in the business of producing and distributing instant noodles in China since 1992, and had expanded the business to cover beverages and baked goods since 1996. The applicant was listed on the Stock Exchange of Hong Kong in 1996. The applicant distributed its products throughout China through a sales network of 344 sales offices and 77 warehouses serving 4,860 wholesalers and 49,311 retailers as of 31 December 2003. The sales turnover of the beverages business reached US$379,112,000 in 2003. Mr. Wei exhibits copies of the following to his statutory declaration:

WIC-1 – certificate of incorporation of the applicant.

WIC-2 – selected sections of the annual report of the applicant 2003.

16. Mr. Wei avers that “the applicant has adopted the [suit mark] by combining the letter X and the English word sport for its ease of pronunciation and its implied meaning of “UNLIMITED SPORT””, and applied for registration of the mark in good faith, there being no intention to take unfair advantage of the opponent’s marks. The remainder of Mr. Wei’s statutory declaration consists in the main submissions which I do not propose to summarize here, but in that connection Mr. Wei exhibits copies of the following:

WIC-3 – printouts from the records of the Hong Kong Trade Marks Registry in respect of trade marks registered in Classes 30 or 32 and contain the letter X, the word “GAME” or the word “SPORT”.

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WIC-4 – printouts from the records of the Hong Kong Trade Marks Registry in respect of trade marks that contain the letter X.

WIC-5 – printouts from the records of the Hong Kong Trade Marks Registry in respect of trade marks that contain the word “SPORT”.

WIC-6 – printout from www.dictionary.com showing the meanings of the word “sport”.

WIC-7 – printouts from the records of the Trade Marks Registries of USA, Taiwan, Australia and the office of the European Union in respect of trade marks that contain the letter X and the word “SPORT”.

Decision

17. Despite the numerous grounds pleaded by the opponent (see paragraph 4 above), Mr. Philips B.F. Wong, counsel for the opponent, sensibly in my view indicated that the opponent only wished to pursue the grounds based on sections 11(5)(b), 12(4) and 12(5) of the Ordinance. I shall first consider section 12(5).

Section 12(5)

18. Section 12(5) of the Ordinance provides as follows :

“… a trade mark shall not be registered if, or to the extent that, its use in Hong Kong is liable to be prevented –

(a) by virtue of any rule of law protecting an unregistered trade mark or other sign used in the course of trade or business (in particular, by virtue of the law of passing off) ; or

(b) …

and a person thus entitled to prevent the use of a trade mark is referred to in

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this Ordinance as the owner of an “earlier right” in relation to the trade mark.”

19. The pleadings and evidence of the opponent only support a cause of action based on paragraph (a) but not the other paragraph of the subsection. I shall therefore only consider section 12(5)(a).

20. Section 12(5)(a) concerns the protection of “an unregistered trade mark or other sign used in the course of trade or business”. At the start of his submission on this ground, I asked Mr. Wong what marks are included when reference is made to the opponent’s marks. Mr. Wong’s answer is that all the registered marks as depicted under paragraph 4 of Mr. Pahl’s first statutory declaration together with the unregistered word mark “X GAMES” are the opponent’s marks. Mr. Ling objected to the inclusion of the unregistered word mark “X GAMES” and pointed out that in the opponent’s pleadings nothing has been pleaded about the use of that mark. Mr. Ling submitted that it is not acceptable that the opponent could be allowed to introduce a new element at this late stage of the proceedings. Mr. Wong in reply accepted that the use of the unregistered word mark had not been specifically pleaded, but pointed out that in paragraph 2 of Mr. Pahl’s first statutory declaration, the use of the word mark has been spelt out, so at least since then the applicant would or should have understood that the word mark would be relied upon in the opponent’s cause.

21. The problem of inadequacy of pleadings before the Registrar has been the subject of judicial comment in NASA Trade Mark (now reported as Julian Higgins’ Trade Mark Application [2000] R.P.C. 321), Club Europe Trade Mark 2000 RPC 329 and Demon Ale Trade Mark 2000 RPC 345. These reported cases have emphasised the need to provide a full and focused statement of the grounds relied on. The function of pleadings has been succinctly summarized by the Vice-Chancellor Sir Richard Scott in NASA Trade Mark, where, after confirming that a notice of opposition is, for the purpose of registration proceedings before the Registrar, in effect a pleading, he said,

“If the pleadings do not identify the right issues, the issues the parties propose to argue about, then it cannot be expected that with any consistency the right evidence will be adduced at the hearing. The pleadings are supposed to identify the issues to which the evidence will be directed. If the pleadings do not properly identify the issues someone, sooner or later, is going to be taken by surprise.”

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22. In CLUB EUROPE Trade Mark, the Vice-Chancellor further reiterated that:

“It is the function of pleadings to define the issues between the parties. Notices of opposition and counterstatements play the part of pleadings in contested trademark registration applications. To some extent supporting statutory declarations may be regarded as complementing that pleading function. But in the present case neither the notices of opposition, nor the counterstatements, nor the statutory declarations identified or defined the issues between the parties.”

23. In the present scenario, the opponent’s unregistered word mark “X GAMES” is not identified in the pleadings. But paragraph 2 of Mr. Pahl’s first statutory declaration contains the following statement: “The opponent was established in 1979 and has for many years been continuously and extensively designing, packaging, exporting, distributing and selling a variety of goods and services, including … under and by reference to various marks, including its world famous X GAMES and GAMES & Device trade marks (the “Opponent’s Marks”).” In the circumstances, the applicant was not being kept totally in the dark that the opponent had used a trade mark “X GAMES”, it is just that they had not been sufficiently alerted that they have to meet a case of passing off based on that mark. The proper course for the opponent to take is to seek amendment of the pleadings before the hearing should take place, but unfortunately that had not happened. As it is, I think the fair course to take is to adopt the approach of Mr. Geoffrey Hobbs in Demon Ale Trade Mark, where the learned Appointed Person of the UK Registry said, “I am not willing (even if I am able) to let the unsatisfactory state of the pleadings deflect me from upholding the relevant objection under section 3(6). However, I think that the justice of the case requires the costs of the successful objection, which was not pleaded, to be set against the costs to which the applicant was prima facie entitled upon failure of all of the many objections unsuccessfully pleaded in the opponent’s statement of grounds.”

24. I would accordingly proceed to consider the claim of passing off based on the opponent’s registered marks as depicted under paragraph 4 of Mr. Pahl’s first statutory declaration together with the unregistered word mark “X GAMES”, and, if necessary, deal with the costs issue separately.

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Passing off – endorsement case

25. A helpful summary of the elements of an action for passing off can be found in Halsbury’s Laws of Hong Kong Vol 15(2) at paragraph 225.001. The guidance takes account of speeches in the House of Lords in Reckitt & Colman Products Ltd v Borden Inc [1990] R.P.C. 341 and Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] A.C. 731, and is as follows :

“The House of Lords has restated the necessary elements which a plaintiff has to establish in an action for passing off:

(1) the plaintiff’s goods or services have acquired a goodwill or reputation in the market and are known by some distinguishing feature;

(2) there is a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the plaintiff; and

(3) the plaintiff has suffered or is likely to suffer damage by reason of the erroneous belief engendered by the defendant’s misrepresentation.

The restatement of the elements of passing off in the form of this classical trinity has been preferred as providing greater assistance in analysis and decision than the formulation of the elements of the action previously expressed by the House of Lords. However, like the previous statement of the House of Lords, this latest statement should not be treated as akin to a statutory definition or as if the words used by the House of Lords constitute an exhaustive, literal definition of ‘passing off’, and in particular should not be used to exclude from the ambit of the tort recognized forms of the action for passing off which were not under consideration on the facts before the House of Lords.”

26. However, instead of following this classic form of the tort of passing off, Mr. Wong relies on two case authorities, namely, Irvine v Talksport Ltd. [2002] F.S.R. 60 and Nicolas v Borg 7 I.P.R. 1., to put forward his proposition that use of the suit mark “X-sport” would amount to an “endorsement” case (or more strictly a false endorsement case) that falls within the modern scope of passing off, and registration of the suit mark should be disallowed under section 12(5)(a) of the Ordinance.

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27. The facts of Irvine v Talksport Ltd. could illustrate what a typical endorsement case means : - The claimant was a prominent Formula 1 motor racing driver; he came very close to winning the World Championship in 1999. The defendant was the operator of a radio station called Talk Radio until the end of 1999 and Talksport thereafter. In 1999 the radio station obtained the rights to cover the Formula 1 Championship and engaged the services of a marketing company, SMP Ltd, to prepare a pack promoting its coverage for distribution to potential advertisers. SMP produced 1000 of these packs. Included in each pack were a couple of novelty items and a brochure, on the front cover of which was an image of the claimant holding a portable radio bearing the words “Talk Radio”. This image had been created by SMP by manipulating a photograph of the claimant. There is no copyright issue involved as the photograph had been legitimately obtained from a photograph agency. It is said that “[w]hen someone endorses a product or service he tells the relevant public that he approves of the product or service or is happy to be associated with it. In effect he adds his name as an encouragement to members of the relevant public to buy or use the service or product.” If that message is false, it means the endorsee is taking the benefit of the attractive force which is the reputation or goodwill of the famous endorser, for that a passing off action should succeed even without the necessity of showing that the claimant and defendant share a common field of activity or that sales of products or services will be diminished either substantially or directly, at least in the short term. But the claimant is required to prove at least two inter-related facts, which in the context of the case are that the claimant had a substantial reputation or goodwill in 1999, and that a significant proportion of those to whom the brochure was sent would have thought that the claimant had endorsed, recommended or approved Talk Radio. Having found that the claimant had established the two facts, judgment was given for the claimant.

28. The opponent’s case is that it has organized the global well-known sporting event called “X GAMES” at least once every year since 1996, in addition, “Asian X GAMES” since 1998 and “Junior X GAMES Asia” since 1999. Hence, use of the suit mark “X-sport” would amount to a misrepresentation that the applicant’s products are somehow endorsed by the organizer of the X GAMES (i.e., the opponent). Mr. Wong further submitted that this is especially so when the opponent has endorsed a wide variety of products for its “X GAMES” and “Asian X GAMES” sporting events, and drew my attention to Exhibit Q to Mr. Pahl’s statutory declaration, which contains photographs, advertisements, and extracts from management reviews or reports, press clippings, post event reports and webpages for or in connection with the “X GAMES”, “Asian X GAMES” and “Junior X GAMES Asia”. I could see tha t, in these advertisements, management reports, etc., the signs or marks of the famous sponsors for the sporting events, just to name a few, 7-ELEVEN, TOYOTA, Pizza Hut, etc.,

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and in particular MILO for beverage products, appearing alongside the “X Games & globe device (black)” mark (the graphical representation of which is depicted at item (b) under paragraph 5 above).

29. However, the characterization of the present case as an endorsement case is met with objection from the applicant. Mr. C.W. Ling, counsel for the applicant, submitted that an endorsement case would require that there be an endorser and an endorsee, as in Irvine v Talksport Ltd. where the prominent Formula 1 motor racing driver is the endorser and the radio station “Talk Radio” is the endorsee. Mr. Ling further submitted, with respect to the advertisements, photographs of articles of clothing and extracts of management reviews, etc., in Exhibit Q, that if endorsement is to be deduced there, it is not clear who are the endorser and the endorsee.

30. I accept there are no obvious answers to Mr. Ling’s questions. For example, it is difficult to tell who is endorsing whom with respect to the following representation

which appears on the front cover of the management report 2004 of the opponent, and on a cap and on a windbreaker as shown in two photographs in Exhibit Q. But I do not think I need to go into that, for all that the opponent wished to make of Exhibit Q is to run an argument as follows:- since the opponent has got a large number of entities to sponsor the “X GAMES”, “Asian X GAMES” and “Junior X GAMES Asia” which are popular sporting events — as exemplified by the various materials contained in that exhibit — this would make it particularly likely that the public would be misled into believing that the applicant’s beverage products sold by reference to the suit mark “X-sport” are also endorsed, recommended or approved by the opponent as well.

31. With respect, whilst I have no difficulty in finding that the opponent has got a number of well known sponsors for the sporting events, I do not see the logical connection between that fact and the “inherent” deceiving nature of the suit mark. I call it “inherent” because there is no evidence before me that could point to that the suit mark has in fact deceived as suggested. Still less could I understand why Mr. Wong tries to clothe the case as an endorsement case, except perhaps to take

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advantage of a point the judge in Irvine v Talksport Ltd. had tried hard to press – that it is not correct to follow the then most recent endorsement case in England 1 that had been decided on the basis that it was necessary for a claimant to show the existence of “a common field of activity” in which both he and the defendant conducted business. I shall examine later in this decision whether there is a common field of activity between the applicant and the opponent.

32. In my view, it is not befitting to characterize the present case as an endorsement case. Whilst endorsement is readily seen in the celebrity type cases where the court is concerned to allow celebrity personas to protect their images and other attributes of their personality from unauthorised exploitation by third parties for commercial purposes, outside this scope it is difficult to find an exemplifying case of endorsement. In Irvine v Talksport Ltd., there were indeed arguments over what constitutes an endorsement case (at paragraph 9):-

“… Throughout the trial reference was made to sponsorship, endorsement and merchandising. The evidence sometimes referred to one, sometimes another and at times to all of these. As Ms Lane, who appeared for the claimants, explained, this case is concerned with endorsement. When someone endorses a product or service he tells the relevant public that he approves of the product or service or is happy to be associated with it. In effect he adds his name as an encouragement to members of the relevant public to buy or use the service or product. Merchandising is rather different. It involves exploiting images, themes or articles which have become famous. To take a topical example, when the recent film, Star Wars Episode 1 was about to be exhibited, a large number of toys, posters, garments and the like were put on sale, each of which bore an image of or reproduced a character or object in the film. The purpose of this was to make available a large number of products which could be bought by members of the public who found the film enjoyable and wanted a reminder of it. The manufacture and distribution of this type of spin-off product is referred to as merchandising. … An example of merchandising is the sale of memorabilia relating to the late Diana, Princess of Wales. A porcelain plate bearing her image could hardly be thought of as being endorsed by her, but the enhanced sales which may be achieved by virtue of the presence of the image is a form of merchandising.”

33. In the instant case, there is indeed no evidence before me whether and how the applicant has ever used the suit mark other than having sought registration with

1 The case referred to is McCulloch v. Lewis A. May (Produce Distributors Ltd) (1947) 65 R.P.C. 58.

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various trade marks registries over the world. All that I have to go to is therefore the very appearance of the suit mark in its application for registration – as Mr. Wong submitted, given that the suit mark is visually and conceptually similar to the opponent’s marks, the public will thus be misled into believing that the applicant’s products bearing the suit mark are, contrary to the facts, endorsed, recommended or approved by the opponent.

34. In other words, all that could arise to deceive stems from the similarity of the suit mark with the opponent’s mark. Beside that, there is nothing to falsely represent that the opponent had added its name as an encouragement to members of the relevant public to buy or use the applicant’s products.

35. The second case on which Mr. Philips Wong relied may indicate how rare or difficult it is to find an endorsement case outside the scope of the celebrity type cases. Nicolas v Borg is a decision of the Supreme Court of South Australia but which, as Mr. Ling rightly pointed out, concerned merely the grant of an interlocutory injunction, where the plaintiff only needed to establish an arguable case. Hence, I agree with Mr. Ling that it cannot be taken as a finding for endorsement. I therefore do not propose to go into that case.

36. In my view, given the arguments Mr. Wong had in respect of passing off, the applicant’s case could well be examined in the light of the classic form of the tort of passing off as I have outlined at paragraph 25, and I would proceed to do so.

Relevant date

37. It is well established that the material or relevant date for passing-off is the date of the behaviour complained of (see Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1981] RPC 429 and Inter Lotto (UK) Ltd v Camelot Group PLC [2004] RPC 8 and 9). The applicant’s evidence has been summarized at paragraphs 14 to 16 above. Mr. Wei had given a description of the applicant’s business in the statutory declaration, but there is no indication that the suit mark had been used before the application for its registration. For the purpose of section 12(5)(a), the relevant date cannot be after the date of application for registration of the subject mark under opposition. As there is no evidence of use of the suit mark, the relevant date is the date on which the application to register the suit mark was made, i.e. 22 July 2003 (the “relevant date”).

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Reputation and goodwill in the opponent’s marks

38. The evidence of the opponent has been described above (see paragraphs 7 to 13). The history of the X Games sporting event, as stated by the opponent at the website www.asianxgames.com. (exhibited in Exhibit A to the first statutory declaration of David Pahl) and by Mr. David Pahl in his statutory declarations filed in the proceedings, is not disputed and in gist is summarized as follows:- in 1993 the opponent started to devote resources to create a sports gathering event, mainly for television broadcasting, in respect of a bundle of sporting activities so-called street sports, extreme sports, action sports, alternative sports, etc.; the sporting event made its debut in 1995 and was called the “Extreme Games”; after enthusiastic response from the athletes, organizers, spectators and sponsors, the opponent decided to hold the event the following year, instead of every two years as originally announced; in January 1996, the event name “Extreme Games” was officially changed to the “X Games”, the primary reasons for the change being to allow easier translation to international audiences and better branding opportunities; since 1996, the X Games has been held at least once every year in and broadcast to different parts of the world; in 1997, the X Games branched out to cold weather extreme sports called the “Winter X Games”, which since then has also become an annual event held in and broadcast to different parts of the world.

39. At paragraph 3 of his first statutory declaration, Mr. Pahl said, “The trade mark “X GAMES” was coined by the opponent in 1996, in connection with its X Games sporting event”, and further he said, “The opponent first used the Opponent’s Marks in Hong Kong in 1996 and since then the opponent has continuously used the Opponent’s Marks in connection with the Opponent’s Goods and/or Services.” As discussed in paragraph 23 above, the “Opponent’s Marks” as used in Mr. Pahl’s first statutory declaration refers to “X GAMES and GAMES & Device trade marks”. “Opponent’s Goods and/or Services” refers to a variety of goods (in respect of which I shall later discuss) and “organizing, conducting and promoting sports competitions and providing sports entertainment services via different media” (paragraph 2 of the statutory declaration). Mr. Pahl claimed that the X Games sporting event has been broadcast via ESPN Asia in Hong Kong since 1996. Though there is no direct evidence showing that the broadcasting began in 1996, I am reasonably satisfied that this claim is largely supported by the following:- Exhibit G contains a television schedule downloaded from www.expn.go.com showing the dates, time and channels for broadcast of the Asian X Games events for the period from 25 November 2000 to 5 February 2001 to various Asian countries and places, including Hong Kong; in the management review 1999 prepared by the opponent (in Exhibit L), it is shown that the Asian X Games was broadcast to Hong Kong via ESPN Asia during December 13 to

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18, 1999 for totally 6 hours, and via TVB Jade for 6 hours as well (no period specified). I do not count Exhibit H as it contains a schedule of television broadcast that is after the relevant date.

40. As to the extent of reach of the television broadcast, Exhibits I and J contain network distribution records issued by Corporate Communications Department of Singapore, with charts showing channel distribution for 2000 to 2004. ESPN Asia, which is described as an encrypted pay service, had 27,030 home subscribers in June 2000, which went up to 503,900 by July 2004; at the same time, Star Sports, described to be available via encrypted cable in Hong Kong, had 449,000 estimated home subscribers in June 2000, which remained more or less static over the following years to give 446,838 in June 2004. I have not overlooked that the numbers of subscribers for the television channels do not mean that the same numbers of people had actually watched the sporting events on television. Exhibit M is said to contain a table showing total broadcast hours via ESPN Asia and Hong Kong TVB for the Asian X GAMES events 2002, 2003 and 2004. Hong Kong TVB had 8 broadcasting hours for each of 2002, 2003 and 2005, whereas ESPN Asia had 31.5 in 2002, 48 in 2003 and 50 in 2004.

41. Exhibits K and L contain extracts of management reviews or reports, press clippings and post event reports covering the “Asian X GAMES”. News report about the Asian X GAMES were seen in some local newspapers as well as a Chinese language sports magazine, the earliest one being in Sing Pao Daily News published on 14 March 1998, a local newspaper which is said to have then a circulation of 216,590.

42. The above largely summarizes the use of the opponent’s marks in relation to the services and activities which the opponent claimed to have been engaged in, namely, “organizing, conducting and promoting sports competitions and providing sports entertainment services via different media”. I find that the plain words “X GAMES” or “X Games” (both are in use, and I do not find there is any preferred or discriminatory use of “GAMES” over “Games” or vice versa in the evidence) had been used as the name by which the sporting event X GAMES, and with additional words its branched out events Asian X Games, Junior X Games, etc., were called or referred. For the present purposes I would treat “X GAMES” as an unregistered trade mark or sign of the opponent that would form the subject matter of protection by virtue of the law of passing off, as provided under section 12(5)(a) of the Ordinance. But over the years (in the evidence from 1998 to 2003), the marks that massively and prominently appeared in all advertisements promoting the Asian X Games or Junior X Games sporting events, in the annual “management review” and “event management report” presented by the opponent, and on the television schedule webpage of

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websites www.asianxgames.com and www.expn.go.com that is said to be powered by the opponent, are the “X Games & globe device (black)” mark, “X Games & globe device (grey)” mark and the “X Games & globe device (white)” mark (collectively called the “X Games & globe device” marks), taking on one of the forms as represented below (extracted from Exhibit F), or in a form similar but adopted for the particular event :-

I do not find that the other marks of the opponent’s marks had been in use.

43. The above is in respect of services the opponent had provided. In so far as use of the opponent’s marks on goods is concerned, however, only scanty evidence can be found, and they are all in Exhibit Q. I have already discussed above about Exhibit Q, which contains photographs, advertisements, and extracts from management reviews or reports, press clippings, post event reports and webpages, showing use of the opponent’s marks alongside with the marks of the sponsors in many advertisements and promotional materials. I find that the subject matter of the advertisements and promotional materials really is the sporting event rather than any specific goods. The same could be said of the sample advertisements and posters depicted in the “Marketing” section of the management reports. These are not evidence of use of the opponent’s marks on goods. Nevertheless, I note that Exhibit Q does contain certain “merchandise catalog” or “merchandise collection” of the opponent in respect of clothing items such as jackets, T-shirts, etc., of which certain items do seem to bear the “X Games & globe device” marks. Besides, Exhibit Q also contains certain printouts from online auction or purchase sites eBay and amazon.com listing sporting equipment such as bike helmet, knee and elbow pads, swim suits, handle bar, etc. and video game consoles which bear the “X Games & globe device” marks. These goods, however, were not listed in Hong Kong as the supplier’s contact details appearing in the merchandise catalogues or online auction sites suggest that these sites were situated in the United States. Can the use of the mark on them constitute use of the mark on goods in Hong Kong?

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44. The evidential value of use of a trade mark on a website or via a website is always a difficult question to answer, as there are implications for issues of jurisdiction. The safest answer is that it all depends on the factual circumstances of the case. In fact this is at least the approach of the courts in the United Kingdom and Hong Kong, and is in accord with the recommendation of the World Intellectual Property Organization (WIPO)2. Hence there is no one uniform rule that can be applied in all cases of Internet use, nonetheless, useful guidance can still be found from some cases.

45. In 1-800 Flowers Inc v. Phonenames Ltd [2000] E.T.M.R. 369 (ChD), Jacob J. said,

“For trade mark laws to intrude where a website owner is not intending to address the world but only a local clientele and where anyone seeing the site would so understand him would be absurd. So I think that the mere fact that websites can be accessed anywhere in the world does not mean… that the law should regard them as being used everywhere in the world. It all depends upon the circumstances, particularly the intention of the website owner and what the reader will understand if he accesses the site. In other fields of law publication on a website may well amount to a universal publication, but I am not concerned with that.” (in para.138 of the judgment)

46. The 1-800 Flowers case had been upheld on appeal (800-Flowers Trade Mark [2002] F.S.R. 12). In the Court of Appeal, Buxton L.J. said:

“⋯the very idea of “use” within a certain area would seem to require some active step in that area on the part of the user that goes beyond providing facilities that enable others to bring the mark into the area. Of course, if persons in the United Kingdom seek the mark on the Internet in response to direct encouragement or advertisement by the owner of the mark, the position may be different; but in such a case the advertisement or encouragement in itself is likely to suffice to establish the necessary use.” (in para.138 of the judgment)

2 WIPO Publication 845: Joint Recommendation Concerning the Protection of Marks, and Other Industrial Property Rights in Signs, on the Internet. The Joint Recommendation, which includes the text of the provisions as adopted by the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) at its sixth session (March 12 to 16, 2001), was adopted at a joint session of the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organization (WIPO) at the Thirty-Sixth Series of Meetings of the Assemblies of the Member States of WIPO (September 24 - October 3, 2001).

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47. In Kerly’s Law of Trade Marks & Trade Names (14th Edition)(“Kerly”), after summarizing the obiter of Jacob J. in the above case, the learned editors suggest the following propositions (at paragraph 23-060):

(a) The expectation that many sites will be foreign means that the user takes at least some notice of the information provided to him about the nationality of the website. That information may be part of the domain name [e.g. crateand barrel- ie.com or crateandbarrel.ie, as in Euromarket Designs [2001] F.S.R.20.] or part of the content of the site.

(b) The appearance of a mark on a foreign website will constitute use of the mark in the course of trade in the United Kingdom if, objectively speaking, the website is aimed at or intended for consumers in the United Kingdom, even if the United Kingdom is only one of the intended markets.

(c) If a significant number of customers in the United Kingdom have purchased goods bearing a mark through a foreign website, then use in the course of trade in the United Kingdom will have been established.

(d) If the only evidence of purchases being made from the United Kingdom is trap purchases conducted on behalf of the claimant, then there is probably no use in the United Kingdom, unless the operation has only just commenced.

48. The above had been considered by Lam J. in the local case Kabushiki Laisha Yakult Honsha & Others v Yakudo Group Holdings Ltd & Another (No 4) [2004] 2 HKLRD 587. In view of the judgment of Buxton LJ in 1-800 Flowers, Lam J. had reservation whether the test advocated by counsel before him and modeled on Kerly’s proposition (b) (as set out in the preceding paragraph) is the correct test to determine whether use of a mark on a foreign website can constitute use within the jurisdiction.

49. In the UK Trade Marks Registry decision Carte Bleue Trade Marks [2002] R.P.C. 31 (TMR), since the website pages in question there did not indicate clearly that the services covered by the registrations had been offered to customers in the UK, there being no indication that the website had been accessed by anyone from the UK, no indication that the website had been taken up by the British press, no explanation

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as to how or why the tribunal should infer from the evidence of the website that it was accessed by persons in the UK, the hearing officer in that case reached the view that the registered proprietors had not discharged the onus which was upon them to show use of their trade mark.

50. I would say the same things in the instant case – there is no indication that the websites had been accessed by anyone from Hong Kong, no indication that the websites had been taken up by the local media or press, no explanation as to how or why the tribunal should infer from the evidence of the websites that they were accessed by persons in Hong Kong, or that goods can be shipped to an address in Hong Kong. Above all, from what appears in some of the webpages in question, “items can be shipped only within the U.S.” I therefore do not find that any of the opponent’s marks had been used on goods in Hong Kong.

51. To sum up from the above, in my view, the X Games sporting event and its branched out events such as Asian X Games, Winter X Games, etc., which had reached audience in various countries and places around the world via television broadcast and various printed media over many years and reputed to be the pinnacle of global action sports competition, cannot be seriously doubted to have gained recognition and reputation at least among the more sports aware sections of the public across the world. Such reputation and the goodwill generated in connection with the services the opponent provided had been extended to Hong Kong by virtue of local television broadcast and advertising in local newspapers and magazines, as reflected in the evidence analysed above. I am therefore satisfied that as at the relevant date, the opponent had established a reputation and goodwill in the services of organizing, conducting and promoting sports competitions and providing sports entertainment services via different media, in the mind of the more sports aware section of the Hong Kong public. The services are known by the unregistered plain words “X GAMES” and the three colour versions of the registered “X Games & globe device” marks.

Misrepresentation

52. As already discussed, there is no evidence before me whether and how the applicant has ever used the suit mark other than having sought registration with various trade marks registries over the world. The question of whether there is a misrepresentation by the applicant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the applicant are goods or services of the opponent is therefore entirely dependent upon whether the suit mark

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and the relevant opponent’s marks are sufficiently similar to give rise to that likelihood.

53. For the purpose of assessing the degree of similarity between the suit mark and the opponent’s marks, I do not think I need to compare the suit mark with each of the unregistered word mark “X GAMES” and the three colour versions of the registered “X Games & globe device” marks in turn, for obvious ly the “X GAMES” mark is the one closest in similarity to the suit mark. I will therefore just compare the “X Games” mark and the suit mark as far as similarities are concerned, but will consider the other marks as well when other factors of misrepresentation are concerned.

54. Mr. Wong submits that the suit mark is visually and conceptually similar to the “X GAMES” mark in that both consist of the same letter “X” as prefix and a conceptually identical word as suffix, namely, the word “Sport” and the word “Games”.

55. I understand visual and conceptual similarities are the very essence of the opponent’s case. However, marks are to be compared having regard to their visual, aural and conceptual similarities, bearing in mind their distinctive and dominant components. Furthermore, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (Sabel v Puma, paragraph 23).

56. The aural similarity and difference between the two marks are plain to note. Aurally they both begin with an “X”, but then followed by a completely different part. The importance of the first syllable of a word mark has been recognised in some reported cases, but in the instant case the sound of the other syllables of the two marks are quite distinct and cannot be discounted. I have no hesitation in coming to the conclusion that the difference between the marks considered as wholes easily outweighs the commonality of the first syllable. Aurally the marks are of low similarity.

57. The same can be said of the visual similarity. Although the two marks share the same capital letter “X” at the beginning, the words “Games” and “sport” are each distinctive enough to make a visual difference. Visually the two marks are also of low similarity.

58. Conceptually, there are two facets to consider. The first is the common use of the capital letter “X” as the prefix of the marks. Mr. Wei in his statutory

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declaration had put in a number of trade mark registrations of third parties to show that it is not uncommon for a mark to have the capital letter “X” as its prefix. I do not think I need to rely on that to say that the letter “X” is that sort of thing others might well want to use in their trade names or trade marks and is not particularly inventive. As the evidence stands, in particular Exhibit Q which has been discussed above, when the opponent wish to indicate their endorsement of a product, they would apply one of the opponent’s marks on the product itself or in the relevant advertisement (alongside of the mark of the sponsor or endorsee). It has never been the case that the opponent would use any mark having “X” as a prefix other than the “X Games”-type marks as a way to identify goods made or endorsed by them. Prefix “X” is not a monopoly enjoyed by the opponent. I do not think that much weight can be attached to the argument that since “X” was used in both marks as their prefix, they are essentially similar conceptually. One has to look at the other elements of the marks as well.

59. So I come to the other facet I have to consider, which is, the similarity or dissimilarity of the meanings of the words “Games” (in the opponent’s mark) and “sport” (in the suit mark). Both parties have put in considerable amount of dictionary references (Exhibits P and R to Mr. Pahl’s statutory declaration, and exhibit “WIC-6” to Mr Wei’s statutory declaration) to advance their own arguments.

60. Mr. Wong for the opponent argued that the two words are “conceptually identical”. The Oxford Advanced Learner’s English-Chinese Dictionary defines “game” to mean “form of play or sport with rules”; and “sport” to mean ““physical activity done, esp. outdoors, for exercise and amusement, usu played in a special area and according to fixed rules”, and “particular form of such activity; particular game or pastime”. Furthermore, the same dictionary also defines “games” as “(a) athletics or sport as part of a school curriculum, and (b) (also the Games) (international) athletic contests”; it seems that is the closest the opponent could get. Other dictionaries give definitions in more or less the same wordings, of particular interest may be The Wordsmyth English Dictionary-Thesaurus which cites “game” as the synonym for “sport” when the latter is defined as “any of a number of competitive athletic events played according to established rules and often requiring certain physical abilities.”

61. Mr. Ling for the applicant submitted that it does not require a dictionary for ordinary people to tell that the two words, which are just ordinary words, mean different things. In this regard, he said that people would understand “game” to refer to something played for fun, e.g., a chess game, and “sport” to the particular form of physical activity.

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62. It is certainly correct and in accord with the dictionary meanings discussed that “game” could refer to amusement activities that do not have an athletic or sporting context, hence Mr. Ling’s common sense approach is justifiable. On the other hand, it has also been noted above and consistent with other dictionary references available in the present proceedings that the word “Games” (in plural form with a capital “G”) would mean athletic contests or an organized competition consisting of different sporting events, e.g., the Olympic Games. In this respect “Games” and “sport” are similar, but, the question is how much of this particular meaning will have percolated through to an average consumer in Hong Kong.

63. The guidance from Sabel v Puma is that consumers do not approach trade marks in a spirit of analysis. There is simply no evidence to enable me to infer what a consumer’s perception of the opponent’s marks would be. My own view of the matter is that ordinary consumers in Hong Kong upon seeing the word “Games” might call to mind something in the sporting or athletic context. This means that there is an appreciable degree of conceptual similarity between the opponent’s marks and the suit mark.

64. However, one could claim no monopoly over the concept of sports or athletics. Unlike in cases of device marks, deceptive similarity based on the fact that the marks share the same concept does not arise particularly with word marks. As has been pointed out by Kerly (Kerly’s Law of Trade Marks and Trade Names 14th Ed.) in paragraph 17-029, “ … with word marks, the court is apt to be more impressed by the dangers of giving the claimant what amounts to a monopoly in a large class of words”. This is particularly so if, in all other respects, the marks are entirely different.

65. In this regard I have particular reference to the Australian case Cooper Engineering Company Proprietary Limited v Sigmund Pumps Limited (1952) 86 CLR 536, which had been cited with approval and followed in the Hong Kong High Court decision in Montres Tudor SA v Concord Watch Co SA [2001] 3 HKC 358. The Court in Cooper had to compare ‘Rainmaster’ with ‘Rain King’, it said at 538 :

“In the present case the prefix of the two words is the same word ‘Rain’, but the suffix ‘master’ differs from the suffix ‘King’ in appearance and in sound. This makes the two marks as a whole quite distinct and the marks must be judged as a whole. ‘Rainmaster’ does not look like ‘Rain King’ and it does not sound like it. There is not a single common letter in master and in King. The two words are so unlike to the eye and to the ear that counsel for the appellant was forced to rely on the likelihood of deception arising

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from the two words conveying the same idea of the superiority or supremacy of the article as a mechanism for making a spray similar to falling rain or artificial rain as it was called during the argument. But it is obvious that trademarks, especially word marks, could be quite unlike and yet convey the same idea of the superiority or some particular suitability of an article for the work it was intended to do. To refuse an application for registration on this ground would be to give the proprietor of a registered trademark a complete monopoly of all words conveying the same idea as his trademark. The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive.”

66. Much of the same can be said in the instant case. Other than the capital letter “X”, there is not a single common letter in “Games” and “sport” except the small letter “s” at the end and at the front respectively. The two words are so unlike to the eye and to the ear that the opponent is forced to rely on the likelihood of deception arising from the two words conveying the same idea of sports and athletics. To refuse an application for registration on this ground would be to give the opponent a complete monopoly of all words conveying the idea of sports and athletics. This is something this tribunal should not do.

67. My overall conclusion is that the similarity between the marks is not sufficient in itself to create a deceptive resemblance between the marks to generate any misrepresentation to mislead the public.

68. That could have concluded my determination on misrepresentation. However, I wish to mention that even if I were wrong on the finding of similarity, the fields of activities in which the opponent and the applicant are engaged do present a grave hurdle for a finding of passing of. Whilst I am not sticking to the strict rule that it was necessary for a claimant to show the existence of “a common field of activity” in which both he and the defendant conducted business (as proposed in McCulloch v. Lewis A. May (Produce Distributors Ltd but rejected by Laddie J. in Irvine v Talksport Ltd.), it is another matter and “an important and highly relevant consideration in assessing misrepresentation” to find out “whether there is any kind of association, or could be in the minds of the public any kind of association, between the field of activities of the [opponent ] and the field of activities of the [applicant]” (in the words of Millet L.J. in Harrods Ltd v Harrodian School Ltd [1996] RPC 697 at 714 citing Annabel’s (Berkeley Square) Ltd v G Schock (trading as Annabel’s Escort Agency) [1972] RPC 838 at 844). As to be shown below, I would answer that in the

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negative.

69. I have already found that the reputation and goodwill of the opponent’s “X GAMES” mark and “X Games & globe device” marks in Hong Kong are only in respect of organizing, conducting and promoting sports competitions and providing sports entertainment services via different media, whereas the applied for goods under the subject application are, in general terms, beers and non-alcoholic drinks or beverages. Mr. Wong seemed to suggest that one could make a connection between a sporting event and beers and non-alcoholic drinks or beverages, as people tend to consume a lot of beers and drinks on watching or participating in a sporting event. Whilst the consumption point may well be true, it goes too far to say that could lead to a connection between the organizer of a sporting event and the supplier of a beer or drink. Mr. Wong pointed to the fact that MILO, a generally known brand name for hot beverages, had been a sponsor of the X Games sporting event (see my discussion in respect of Exhibit Q at paragraph 28 above), implying that it is not surprising that people would make such a connection. I do not agree. If the example of MILO is of any indicative value, it shows that the supplier of drink or beverage would retain its own brand name or trade mark in advertising, along with the mark or logo of the organizer of the sporting event (which in this example is an entirely different name or mark). There is nothing, at least not in the evidence, to suggest that the organizer of the X Games would adopt a brand name or trade mark beginning with a capital “X”, or engage a sponsor that has such a brand name or mark, to supply beers and drinks. To quote again the words of Millet L.J. in Harrods Ltd v Harrodian School Ltd (at 713), “Many sporting and artistic events are sponsored by commercial organisations which require their name to be associated with the event, but members of the public are well aware that the sponsors have no control over and are not responsible for the organisation of the event”.

70. I trust members of the public in Hong Kong would have the same level of awareness not to make any assumption of connection between the sponsors or their goods with the organizer of a sporting event. It is highly unlikely that they would be misled, in the words of Mr. Wong, that the applicant’s goods have been endorsed, recommended or are approved of by the opponent.

71. In sum, I could find nothing the opponent can effectively rely on to justify a claim that use of the suit mark by the applicant will give rise to a false message or misrepresentation which will be understood by a not insignificant section of the public that goods offered by the applicant are goods of the opponent or are goods endorsed by the opponent. There is no need for me to go on to consider the other elements of passing off. The ground of opposition based on section 12(5) must necessarily fail.

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Section 12(4)

72. Section 12(4) requires the existence of a trade mark which is identical or similar to an earlier trade mark, and the earlier trade mark is entitled to protection under the Paris Convention as a well-known trade mark. I have analysed the similarity of the “X GAMES” mark (which in any event does not constitute an earlier trade mark as defined under the Ordinance) with the suit mark, and find that they are of low degree of similarity only. The same finding should apply to “X Games & globe device” marks as well.

73. The other marks the opponent had registered in Hong Kong, as pleaded at paragraph 3 of the grounds of opposition (and reproduced in Appendix I hereto) or even not pleaded but appear in paragraph 4 of Mr. Pahl’s first statutory declaration, are the following three:-

It is plain to see that the latter two marks above resemble the suit mark even less than the “X Games & globe device” marks do.

74. As to the SPORTSCENTER mark, I am satisfied that the aural and visual differences between this mark and the suit mark considered as wholes easily outweigh the commonality of the element “SPORT”. Conceptually, this mark refers to the place where sports are done whereas the suit mark has no such meaning, I do not see they have much similarity either. As a whole I do not consider them similar.

75. It follows that there is no earlier mark sufficiently similar to the suit mark.

76. Mr. Philips Wong, however, submitted that it is sufficient that there is a certain degree of similarity between the mark applied for and the earlier well known mark by virtue of which the public makes a connection between the two marks, i.e., a link is established between them. He cited Adidas-Salomon v Fitnessworld [2004] FSR 21 at 423 to 424 and Mango Sport System v Diknah [2005] ETMR 5 at para 13 to support that proposition. The two cited authorities are respectively decisions of the Court of Justice of the European Communities and the First Board of Appeal of the OHIM Office, dealing with Article 5(2) of First Council Directive 89/104 of 21 December 1998 of the Council of the European Communities (“the Council Directive”) and Article 8(5) of the Council Regulation No.40/94 of 20 December 1993

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on the Community trade mark (“CTMR”) respectively. Although Article 5(2) of the Council Directive and Article 8(5) of CTMR are couched in many of the terms similar to the ones used in section 12(4) (as well as section 18(4)) of the Ordinance, there are important differences between the provisions of the Ordinance and these European provisions. Nonetheless, I need not be concerned with the differences here, for what had been decided in the two cited authorities is only that it is not a requirement that the similarity must give rise to a likelihood of confusion between the marks, but still it is required that there be a certain degree of similarity between the marks by virtue of which the relevant section of the public makes a connection between the marks in question, that is to say, establishes a link between them even though it does not confuse them. By virtue of what has been discussed above, the only viable similarity between the suit mark and any of the opponent’s marks is that they all contain the capital letter “X”, this, in my view, would not by itself be sufficient to establish a link between the marks.

77. I do not therefore need to consider further whether any of the opponent’s marks are a well-known trade mark and must hold that the ground of opposition under section 12(4) fails.

Section 11(5)(b)

78. Section 11(5)(b) of the Ordinance provides that a trade mark shall not be registered if the application for registration of the trade mark is made in bad faith. The term “bad faith” is not defined in the Ordinance.

79. In Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd [1999] R.P.C. 367 at 379, Lindsay J. said in relation to section 3(6) of the U.K. Trade Marks Act 1994 (equivalent to section 11(5)(b) of the Ordinance):

“I shall not attempt to define bad faith in this context. Plainly it includes dishonesty and, as I would hold, includes also some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined. Parliament has wisely not attempted to explain in detail what is or is not bad faith in this context: how far a dealing must so fall-short in order to amount to bad faith is a matter best left to be adjudged not by some paraphrase by the courts (which leads to the danger of the courts then construing not the Act but the paraphrase) but by reference to the words of the Act and upon a

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regard to all material surrounding circumstances.”

80. In Harrison v Teton Valley Trading Co (CHINAWHITE) [2005] F.S.R. 10, where the Court of Appeal in the United Kingdom said (at paragraph 26):

“The words “bad faith” suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.” (emphasis added)

81. Further, in Ajit Weekly Trade Mark [2006] RPC 25, the Appointed Person said,

“The subjective element of the test means that the tribunal must ascertain what the defendant knew about the transaction or other matters in question. It must then be decided whether in the light of that knowledge, the defendant’s conduct is dishonest judged by ordinary standards of honest people, the defendant’s own standards of honesty being irrelevant to the determination of the objective element.”

82. Bad faith is thus a serious allegation that must be proved. An allegation of bad faith should not be lightly made unless it can be fully and properly pleaded and should not be upheld unless it is distinctively proved and this will rarely be possible by a process of inference (ROYAL ENFIELD Trade Marks [2002] R.P.C. 24 at para. 31).

83. I have already considered that none of the opponent’s marks is similar to the suit mark.

84. There is nothing further in the evidence that could be said to allude to any dealings on the part of the applicant which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the field as the Applicant’s.

85. A case of bad faith has not been made out. The ground of opposition under section 11(5)(b) also fails.

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Conclusion

86. As the opposition has failed, I award the applicant 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 2 April 2008

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APPENDIX 1

Trade Mark Class Registration No.

Date of Registration Goods/Services

a. SPORTSCENTER

38 1999B16084 20 September 1995 telecommunications services; all included in Class 38.

b. SPORTSCENTER

41 1998B11087 20 September 1995 production of cable television programmes; all included in Class 41.

c. SPORTSCENTER

41 1999B11086 8 May 1995 provision of sports information and entertainment news information by computer; all included in Class 41.

d. SPORTSCENTER

42 1997B10728 8 May 1995 leasing access time to a computer database for sports, news and general interest information; all included in Class 42.

e. X Games & Device

41 199915336 7 October 1998 services in relation to organizing and conducting a series of sporting competitions; production of radio and television programmes; production of motion picture films, production of television programmes concerning sporting events, general interest and news; cinema services;

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Trade Mark Class Registration No.

Date of Registration Goods/Services

television and radio studio services; television entertainment and production of television education programmes; provis ion of entertainment services by computers in the form of sports, news and general interest information; presentation of live sports and entertainment performances, events and shows; all included in Class 41.

f. X Games & Device

38 200300732 9 August 2001 broadcasting of television series featuring sporting events; all included in Class 38.

Trade Mark Applications

Trade Mark Class Registration No.

Date of Registration

Goods/Services

g. X Games & Device

25 200026887 13 December 2000 clothing; T-shirts, sweatshirts, jackets, caps and visors; all included in Class25.

h. XG X GAMES

9 300130670 19 December 2003 optical apparatus and instruments; optical wear; eye wear; apparatus for recording, transmission or

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Trade Mark Class Registration No.

Date of Registration

Goods/Services

reproduction of sound or images; magnetic data carriers, recording discs; pre-recorded tapes and discs including pre-recorded video tapes and DVDs; computer game and video game software and programs parts, fittings and accessories for all the aforesaid goods.

i. X Games & Device

9 300130689 19 December 2003 optical apparatus and instruments; optical wear; eye wear; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; pre-recorded tapes and discs including pre-recorded video tapes and DVDs; computer game and video game software and programs parts, fittings and accessories for all the aforesaid goods.