Geok Eng Company Ltd v. Hoe Hin Pak Fah Yeow Manufactory, Ltd

HCMP 2115/2016

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO 2115 OF 2016

(On Appeal from Registrar of Trade Marks)

______________________

______________________

______________________

________________

D E C I S I O N

_______________

Introduction

1.The Registrar of Trademarks (“the Registrar”) by two separate albeit near-identical decisions both dated 20 July 2016 (“the Decisions”) invalidated the two registered trade marks (“the Two Marks”) of Geok Eng Company Limited (“GECL”) on the common ground that they had been registered in contravention of section 11 (including the bad faith ground) of the Trade Marks Ordinance, Cap. 559 (“TMO”) upon the applications of Hoe Hin Pak Fah Yeow Manufactory, Limited (“HHPFYML”).

2.GECL commenced these proceedings by its Notice of Motion dated 17 August 2016 to appeal against the Decisions. Inexplicably, there is no return day stipulated in the Notice of Motion.

3.HHPFYML took out a summons dated 13 October 2016 for an order that the Notice of Motion be struck out on the ground that it failed to state any grounds of the appeal pursuant to O55 r.3(2) of the Rules of the High Court, Cap.4A (“RHC”) or alternatively, the Notice of Motion constitutes an abuse of process.

4.Indeed, in his skeleton submission, Mr Yip, for GECL, expressly accepts the lack of the grounds of the appeal in the Notice of Motion. In view of the Summons, instead of making an application for amendments to the Notice of Motion to include the grounds of its appeal, GECL without leave filed a document entitled “Grounds of Appeal” containing five grounds dated 23 November 2016 (“the Document”).

5.Notwithstanding the Document, at the hearing of the Summons, Mr Wong, for HHPFYML, insists that the Notice of Motion should be struck out even in the absence of any supporting evidence adduced by HHPFYML. He confirms that HHPFYML does not need affirmation evidence to support its application and it relies on the obvious defectiveness of the Notice of Motion.

The Notice of Motion

6.The main part of the Notice of Motion is set out as follows:

“The Appellant seeks for (sic) an Order that:-

1.  The Decision of the Registrar of Trade Marks be set aside;

2.  A declaration that the Hong Kong Trade Marks Registration Nos. 30160865 and 301610874 are valid and they should have been registered in Classes 3 & 5 respectively, pursuant to section 12(5) of the Trade Marks Ordinance;

3.  Further and/or relief the Court thinks fit and appropriate;

AND FOR AN ORDER that the Respondent do pay the Appellant costs of this appeal and costs of the hearing in the Intellectual Property Department below.”

7.Apart from the lack of grounds of appeal, the Notice of Motion appears to me to be problematic. First, though the title of the Notice of Motion refers to the Two Marks, it only seeks to set aside one of the Decisions without specifying which of them is under attack. I can assume that it is only a typographical error and GECL actually wishes to set aside both Decisions.

8.Second, if the Decisions are set aside on appeal, the registrations of the Two Marks would be restored and they should be prima facie valid: section 80 of the TMO. It is uncommon and unnecessary to, in addition to setting aside an order for invalidation, seek a declaration to the effect that the registration of a trade mark is valid and that the registered mark should have been registered pursuant to a particular provision under the TMO. In the event that the challenge to the validity of the registrations of the Two Marks mounted by HHPYML fails, GECL does not have to justify their registrations at all.    

The parties’ contentions

9.In a nutshell, Mr Wong’s argument is that the Notice of Motion is incurably defective by reason of its lack of specific grounds of appeal stated and the Document does not assist in that it forms no part of the Notice of Motion and came too late and in any event the five grounds stated therein are thoroughly bad.

10.Mr Lam, for the Registrar, indicates in his skeleton submissions that the Registrar would take a neutral stance in this application save that he agrees that the Notice of Motion is defective by reason of its contravention of O.55 r.3(2) of the RHC and that GECL has only exhibited one of the Decisions to the Notice of Motion. Mr Lam further points out the unusual nature of the declaration sought by GECL in the Notice of Motion.

11.Mr Yip opposes this application. He first submits that the appeal of GECL is governed by both O.55 r.3 and O.100 r.2(2). He accepts that under the former, every notice of the motion by which an appeal is brought must state the grounds of the appeal and on that score, the Notice of Motion is deficient. However, he points out that the latter provides that every application to the court under the TMO may be begun by originating summons in Form No.10 in Appendix A (“the Form”). The Form is the expedited form of an originating summons

12.Based on the fact that there is no ground stated in the specimen of the Form, Mr Yip submits that whether the ground of the appeals must be stated in the Notice of Motion for this kind of cases is still a grey area.

13.In addition, Mr Yip refers this court to Practice Directions 22.1, which provides that at the first hearing of the originating motion for proceedings under the repealed Trade Marks Ordinance, the court will normally give directions as to procedure. Therefore, he urges this court not to dispose of the application of HHPFYML right away and instead this court should allow the Notice of Motion to proceed to the direction stage. With respect, I am unable to understand this submission.

Analysis

14.The requirements under O.55 r.3 are very clear to me. O.55 r.3(1) provides that an appeal to which the Order applies must be brought by originating motion. R.3(2) contains a mandatory requirement about the contents of such originating motions. The Notice of Motion is undoubtedly defective in that it contains no grounds of the appeal.

15.The title of O.100 r.2 is “Appeals and applications under the TMO”. Appeals and applications under the TMO are clearly different matters and they call for different originating processes. O.100 r.2(1) provides that every appeal to the court under the TMO shall be heard and determined by a single judge and this should be the governing provision of the appeal of GECL.

16.O.100 r.2(2) on the other hand is not applicable at all. R.2(2) and hence the Form only relate to applications made under the TMO such as applications for revocation (section 52) or declaration of invalidity (section 52). The Form is not intended for an appeal from a decision of the Registrar and there is no reference to appeal in the Form at all. There is no uncertainties about the requirements of the contents of the Notice of Motion in my view.

17.On the other hand, I fail to understand how Practice Directions 22.1 can in any way prevent this court from exercising its discretion to strike out the defective Notice of Motion, which expressly can be exercised at any stage of the proceedings under the RHC. A closer look at the provision reveals that it has no application at all. This is not the first hearing of the Notice of Motion too.

18.The remaining issue is whether this court should exercise its discretion to strike out the Notice of Motion given its plain and obvious defect. I am cognizant of the fact that GECL will probably be stripped of its substantive rights to appeal against the Decisions if the Notice of Motion is struck out. If the defect can be cured by amendments, this court should think twice before making an order for striking out. In any event, striking out is a drastic remedy and should only be allowed in plain and obvious cases.

19.But the problem here is that GECL has not evinced any intention to amend the Notice of Motion. Unfortunately it is of the view that the Document suffices. As rightly pointed out by Mr Wong, the Document cannot form part of the Notice of Motion. Mr Yip cannot show any legal basis for such incorporations or integration too. I can well appreciate the unfairness and undesirability if a party is allowed to avoid an application under O.20 r.7 to amend its Notice of Motion simply by filing a separate document without leave.  

20.I also agree with Mr Wong that it would be unjust to allow GECL to put in the Document well after the expiry of the 28-day period for appeal. Its Notice of Motion expected to contain the grounds of appeal is required to be filed within time and it should not be allowed to make good the mandatory requirements at its own pace showing a total disregard of the prescribed time period. If this court accepts the Document can perfect its Notice of Motion, GECL in effect obtains an extension of time to file a proper Originating Motion even in the absence of an application supported by good reasons. This cannot be right and it is unfair to HHPFYML.

21.I have perused the Documents for completeness and I agree with Mr Wong that the purported grounds stated therein merely contain general allegations and are defective. They can hardly convince me that GECL is genuine and serious in its appeal.

22.In the circumstances, it appears to me that it is a plain and obvious case that the Notice of Motion should be struck out. GECL, legally represented throughout, can only blame itself for not complying with the RHC. It has kept compounding its mistakes and there is no reason why this court should exercise the discretion in its favour without cogent reasons or any reason at all.

Conclusion and order

23.I conclude that I should accede to the application of HHPFYML. I order that the Notice of Motion should be struck out.

24.I further make an order nisi that costs of the whole proceedings including the Summons should be solely borne by GECL, to be taxed if not agreed. 

25.Lastly, I thank all counsel for their assistance in this matter.

Mr Yip Wing San Roy Bowie instructed by Francis Kong & Co for the Appellant

Mr Philips B. F. Wong instructed by Woo, Kwan, Lee & Lo for Respondent

Mr Arron C. L. Lam, Government Counsel of Department of Justice for Registrar of Trademarks