Wong To Yick Wood Lock Ointment Ltd v. Wintex Medicine Trading Ltd

HCMP 1950/2014

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO 1950 OF 2014

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JUDGMENT
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1.This is an application of Wong To Yick Wood Lock Ointment Limited, by its originating summons dated 7 August 2014, for a declaration that the Hong Kong trade mark registration number 300408942 (“the suit mark”) is invalid and should be removed from the Trade Mark Register.

2.The sole ground relied upon by the applicant is that the registration was made in bad faith and hence pursuant to section 11(5)(b) and section 53(3) of the Trade Mark Ordinance, it should be removed.  

3.Wintex Medicine Trading Limited, the registered owner of the suit mark, is absent at the hearing.  I am satisfied that sufficient notice has been given to the respondent about this hearing by way of service of notice of hearing at the address appearing at the trade mark registration record and so I decided to proceed with the application in its absence.

4.The applicant has filed ample evidence to make this court be convinced that it has used its registered mark, (Trade Mark Number B9582 of 1995) in respect of its medicated oil products.  The applicant’s mark was registered in December 1991 and it is a word mark consisting of three Chinese characters, 「黃道益」.  This court is convinced that the applicant has used the registered mark extensively in Hong Kong at least starting from the date of its registration of its mark, if not earlier, and by doing so, substantial goodwill has been gained in respect of the applicant’s mark.

5.The suit mark consists of the three Chinese characters 「黃道益」too. It was registered in 2005 after the applicant’s mark had been used extensively in Hong Kong and had become a household name for medicated oil products in Hong Kong.  More importantly, as highlighted to me by Mr Pun, counsel for the applicant, the evidence shows that there is no record of the respondent having been incorporated in Hong Kong in 2005.  On this basis, the purported registered owner of the suit mark did not even exist.

6.I accept Mr Pun’s submission that this is an indication of bad faith in respect of its application for registration and I conclude that this ground is made out.

7.Further, there is no explanation whatsoever for the respondent’s adoption of the suit mark as its registered mark, which also consists of the three Chinese characters 「黃道益」. In my judgment, the suit mark is confusingly similar to the applicant’s mark by reason of this common element. 

8.Given the substantial goodwill already gained in respect of the applicant’s mark, I am satisfied that the adoption and the subsequent registration of the suit mark must be made in bad faith absent any evidence to the contrary.  In the circumstances, I am satisfied that this court should exercise the discretion to grant the declaration sought by the applicant and the suit mark should be declared to be invalid and be removed from the Trade Mark Register.

9.I further make an order that the costs of and occasioned by this application be paid by the respondent to the applicant, to be taxed if not agreed.

10.I thank Mr Pun for his helpful assistance.

Mr Dominic Pun, instructed by William W L Fan & Co, for the applicant

The respondent was not represented and did not appear