樂氏同仁藥業科技集團有限公司 v. 中國北京同仁堂(集團)有限責任公司

HCIP 62/2020

[2022] HKCFI 2512

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

INTELLECTUAL PROPERTY PROCEEDINGS NO. 62 OF 2020

________________________

	IN THE MATTER OF the Trade Marks Ordinance (Cap. 559)  (the “Ordinance”)
	IN THE MATTER OF an application to appeal the decision of Ms 羅淑儀 (Connie Law)  acting for the Registrar of Trade Marks dated 20 August 2020 in relation to an Opposition by 中國北京同仁堂(集團)有限責任有限公司 (the “Opponent”/“Respondent”)  to Trade Mark Application No. 303570679 for in Classes 3 and 5 (the “Subject Application”/ “Opposed Mark”)  applied for by 樂氏同仁藥業科技集團有限公司 (the “Applicant”/ “Appellant”)

________________________

BETWEEN

________________________

AND

HCIP 63/2020

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

INTELLECTUAL PROPERTY PROCEEDINGS NO. 63 OF 2020

________________________

IN THE MATTER OF the Trade Marks Ordinance (Cap. 559)  (the “Ordinance”)

IN THE MATTER OF an application to appeal the decision of Ms 羅淑儀 (Connie Law)  acting for the Registrar of Trade Marks dated 20 August 2020 in relation to an Opposition by 中國北京同仁堂(集團)有限責任有限公司 (the “Opponent”/“Respondent”)  to Trade Mark Application No. 303197197AB for in Classes 32, 33, 36 and 41 (the “Subject Application”/ “Opposed Mark”)  applied for by 樂氏同仁藥業科技集團有限公司 (the “Applicant”/“Appellant”)

________________________

BETWEEN

________________________

(Heard together)

Before:  Hon Lok J in Chambers

Date of Hearing:  2 August 2021

Date of Judgment:  11 August 2022

________________________

J U D G M E N T

________________________

1.The Applicant appeals against two decisions of the hearing officer for the Registrar of Trade Marks (“the Registrar”), Ms Connie Law (“the Hearing Officer”), handed down on 20 August 2020 in relation to oppositions filed by the Opponent. Since the oppositions were heard together, I have ordered these two appeals shall be heard together as well.

THE RELEVANT TRADE MARK APPLICATIONS AND THE APPEALS

2.The Opponent is the owner of the well-known “同仁堂” (Tong Ren Tang)  and “北京同仁堂” (Beijing Tong Ren Tang)  marks (“the Opponent’s Marks”).  The Applicant is a company incorporated in the Mainland on 17 May 2013.

3.On 12 November 2014, the Applicant applied for registration of the following mark in respect of goods and services in Classes 3 and 35 (Trade Mark Application No 303570679):  

4.On 20 October 2015, the Applicant applied for registration of the following mark in respect of goods and services in Classes 32, 33, 36 and 41 (Trade Mark Application No 303197197AB):

5.For easy reference, I will refer the mark in §3 above as “the Words Mark” because it contains only words and the mark in §4 above as “the Logo Mark” because it contains a logo.  I will also refer both marks collectively as “the Subject Marks”.

6.The Opponent opposed the registration of the Logo Mark in Classes 3 and 35 and the Words Mark in Classes 32, 33, 36 and 41.  The Hearing Officer ruled in favour of these oppositions.

7.There is also a related application (Trade Mark Application No 303197197AA)  for the Words Mark in Classes 1 (which includes medical preparation preservative), 7, 8, 10 (which includes medical testers and medical diagnostic equipment), 11, 14, 16, 18, 20, 21, 22, 24, 25, 28, 29, 31, 39, 40, 42 and 43.  Since there was no opposition to such application, the Applicant has obtained registration of the Words Mark for these classes of goods and services.

8.The first appeal (HCIP 63/2020)  is in relation to the finding of the Hearing Officer that the application for the Words Mark was made in bad faith under s 11(5)(a)  of the Trade Marks Ordinance (“the TMO”).  However, if the Applicant succeeds in challenging the Hearing Officer’s finding on bad faith, the Opponent will then rely on the confusing similar ground under s 12(3), the well-known mark ground under s 12(4)  and the passing off ground[1] under s 12(5)  of the TMO to oppose the registration of the Words Mark. 

9.The second appeal (HCIP62/2020)  is against the finding of the Hearing Officer that the Logo Mark and the Opponent’s marks are similar and likely to cause confusion under s 12(3).  Again if the Applicant succeeds in challenging such finding, the Opponent will then rely on the bad faith ground under s 11(5)(a), the well-known trade mark ground under s 12(4)  and the passing off ground under s 12(5)(a)  to challenge the registration of the Logo Mark.

APPROACH OF THE COURT IN DEALING WITH APPEALS FROM THE REGISTRAR

10.The principles to be applied in considering an appeal from the Registrar have been set out by me in Monster Energy Co v. 洪嘉珮[2]. I do not intend to repeat the same principles here.  In a nutshell, unless there is sufficient clarity that there is an error, the appellate tribunal should not intervene and overturn the decision of the Registrar.  There is no dispute between the parties about these principles.

THE ISSUE OF BAD FAITH

11.I propose to deal with the issue of “bad faith” first.  This is one of the main grounds advanced by Mr Clark, counsel for the Applicant, in challenging the Hearing Officer’s decision in HCIP 63/2020.

(i)  The history of the trade name “同仁堂” (Tong Ren Tang)  and its relationship with the “樂氏” (Yue’s)  family

12.In determining this particular issue, one needs to understand the history of the trade name “同仁堂” (Tong Ren Tang)  and its relationship with the Yue’s family (“the Yue’s Family”).

13.The statutory declarations in support of both trade mark applications were made by Mr Song Zhigang (“Song”)  who is the legal person responsible for the operation of the Applicant.  The opposing statutory declarations were made by Mr David Tsai (“Tsai”)  who is the solicitor for the Opponent and has been authorized to make the statutory declarations on behalf of the Opponent.

14.Song has provided a history of “同仁堂” (Tong Ren Tang)  and its relationship with the Yue’s Family in his statutory declarations:

(i)  “同仁堂” (Tong Ren Tang)  is a well-known pharmacy selling Chinese medicine and pharmaceutical products in China with a history dating back to the Ching Dynasty in 1669.  It was established by the Yue’s Family, and “同仁堂” (Tong Ren Tang)  was authorised to supply Chinese medicine to the imperial family in the Ching Dynasty.

(ii)  Due to historical reason, the 13^th generation of the Yue’s Family, Mr Yue Chong Hui (樂崇輝)  (“Yue”), left the Mainland and went to Taiwan in 1949.  He brought with him various traditional family recipes of Chinese medicine and started to operate “同仁堂” (Tong Ren Tang)  pharmacy in Taiwan.

(iii)  Some members of the Yue’s Family stayed in the Mainland after 1949, and the “Tong Ren Tang” business in the Mainland became a partly private and partly stated-owned business.  After the cultural revolution, the business was taken over by a state-owned enterprise.  As a result, the Yue’s Family lost all the tangible and intangible assets of the “Tong Ren Tang” business in the Mainland.

(iv)  In 2006, the 14^th generation of the Yue’s Family, Mr Yueh Chueh Hsin (樂覺心)  (“Yueh”)[3], decided to bring the family business back to the Mainland.  He also brought back the traditional family recipes of Chinese medicine for his Mainland business.  In May 2013, he set up the Applicant.  He operated the business under the name “樂氏同仁” (Yue’s Tong Ren).

(v)  The operation of the business using the name “樂氏同仁” (Yue’s Tong Ren)  had attracted a lot of publicity and received tremendous support from the government and the public.  Factories were set up to produce Chinese pharmaceutical products of high quality.  Some of the products of the business were very successful with high volume of sales in the Mainland, Taiwan, Hong Kong, Macau and other parts of the world.

(vi)  As the “北京同仁堂” (Beijing Tong Ren Tang)  business had been taken over by the Opponent, Yueh decided to use the trade name “樂氏同仁” (Yue’s Tong Ren)  to continue his family business in the Mainland, and he had applied to register such trade name in various places including the Mainland, Taiwan, Hong Kong and Macau.  The words “Royal Herbalist Since 1669” were included in some of the trade marks to show the connection of the Yue’s Family with the imperial family since 1669.  According to Song, the business now operated by the Opponent has no connection with the family business dating back to the Ching Dynasty.

(vii)  In order to protect its rights, the Applicant had engaged in various legal battles with the Opponent in recent years relating to the use of the different trade names and trade marks incorporating the name “同仁” (Tong Ren).  In 2017, the Beijing Intellectual Property Court (“the Beijing IP Court”)  rejected the opposition and allowed the Applicant’s registration of two trade marks which contained the words “樂氏同仁” (Yue’s Tong Ren)  and “Royal Herbalist”.

15.There is no serious dispute about the history of the “同仁堂” (Tong Ren Tang)  pharmacy and its connection with the Yue’s Family. However, Tsai stated the following in his statutory declarations:

(i)  The Opponent is a well-known company established in the Mainland for supplying various Chinese pharmaceutical products. After 1949, it inherited the former pharmacy business carried on by the Yue’s Family, and so the Yue’s Family has no more rights in using the trade name and the trade marks of the former business.

(ii)  The Opponent owns 3 listed companies and operates about 2,000 shops in the Mainland and more than 100 shops outside the Mainland including Hong Kong, Taiwan, many Western and South East Asia countries.  The Opponent owns various trade marks incorporating the words “同仁” and “Tong Ren”, and the trade name “同仁堂” (Tong Ren Tang)  is well known to the public.

(iii)  The Opponent has successfully opposed the Applicant’s applications to register various trade marks incorporating the words “樂氏同仁” or “Yue’s Tong Ren” in the Mainland, Hong Kong and various other places.

(iv)  The Applicant was only incorporated in 2013 with a short history.  The Yue’s Family has no more connection with the Opponent’s business in the Mainland, and so the Applicant has tried to mislead the public by using the term “Royal Herbalist since 1669”.

(v)  The trade mark registration documents in Taiwan show that the applicant for the marks is Yueh and not the Applicant.

(vi)  The Opponent queries whether the Applicant’s pharmaceutical products are produced using the traditional recipes of the Yue’s Family.

(vii)  From the information provided by the Applicant, “樂氏同仁” (Yue’s Tong Ren)  in Taiwan was not operated by Yue but by other members of Yue’s Family, and such pharmacy had ceased operation in Taiwan for many years.

(viii)  The Applicant was formed by three persons outside the Yue’s Family in 2013.  Yueh only became a shareholder of the Applicant in 2016.

(ii)  Relevant legal principles on bad faith

16.There is no dispute between the parties relating to the legal principles on “bad faith”.  In Owndays Co Ltd v Professional Optometrist Ltd & Ors[4], I adopted and applied a summary of the law given by Arnold J (as he then was)  in Red Bull GMBH v Sun Mark Ltd, Sea Air & Land Forwarding Ltd[5] in determining the question of bad faith:

(i)  The relevant date for assessing whether an application to register a trade mark was made in bad faith is the application date.

(ii)  Although the relevant date is the application date, later evidence is relevant if it casts light backwards on the position as at the application date.

(iii)  A person is presumed to have acted in good faith unless the contrary is proved. An allegation of bad faith is a serious allegation which must be distinctly proved. The standard of proof is on the balance of probabilities, but cogent evidence is required due to the seriousness of the allegation. It is not enough to prove facts which are also consistent with good faith.

(iv)  Bad faith includes not only dishonesty, but 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”.

(v)  The relevant statutes are intended to prevent abuse of the trade mark system.  As the case law makes clear, there are two main classes of abuse.  The first concerns abuse vis-à-vis the relevant office, for example where the applicant knowingly supplies untrue or misleading information in support of their application; and the second concerns abuse vis-à-vis third parties.

(vi)  In order to determine whether the applicant acted in bad faith, the tribunal must make an overall assessment, taking into account all the factors relevant to the particular case.

(vii)  The tribunal must first ascertain what the defendant knew about the matters in question and then decide whether, in the light of that knowledge, the defendant’s conduct is dishonest (or otherwise falls short of the standards of acceptable commercial behaviour)  judged by ordinary standards of honest people.  The applicant’s own standards of honesty (or acceptable commercial behaviour)  are irrelevant to the enquiry.

(viii)  Consideration must be given to the applicant’s intention.

17.Further, lack of honest belief and bad faith are two different concepts. The test is whether one acted in bad faith and not whether one acted under an honest belief.[6]

18.According to the Applicant, the present case is about co-existence and concurrent use of related trade names in different jurisdictions by persons who have some connections with the origin of such trade names.  There is also an issue as to whether in establishing bad faith, it is a condition to show that the applicant has an intention to prevent other traders from using the mark covered by the registration.  I will deal with these matters in the latter part of this Judgment when I address the merits of the appeal against the finding of bad faith.

(iii)  The Opponent’s pleaded case of bad faith and the findings made by the Hearing Officer on such issue

19.The Opponent’s pleaded case in relation to bad faith is in §§16 and 17 of the Notice of Opposition.  In summary, it is alleged that:

(i)  The Applicant must have known about the Opponent and its business when it filed the trade mark applications.

(ii)  Since the Chinese name “同仁” (Tong Ren)  is not a necessary name in the relevant industry, the Applicant has no reasonable reason or reason to adopt the name “同仁” (Tong Ren)  as part of the Subject Marks.

(iii)  The Applicant’s inclusion of the words “Royal Herbalist since 1669” in the Subject Marks indicate that the Applicant had intention to mislead the public into believing that the Subject Marks are related to the Opponent.

(iv)  The Applicant is engaged in pharmaceutical-related industries at the same time as the Opponent, and the Applicant should have knowledge of the Opponent.

(v)  The Applicant had applied to register the Logo Mark in 2014, but it withdrew the application after the filing of the opposition by the Opponent.  Hence, the Opponent has reasons to believe that the Applicant had intentionally tried to exploit the goodwill enjoyed by the Opponent.

20.The findings made by the Hearing Officer in relation to bad faith are contained in §§ 49 to 57 of the Hearing Officer’s decision on the opposition of the Words Mark, which can be summarised as follows:

(i)  The marks “北京同仁堂” (Beijing Tong Ren Tang)  and “同仁堂” (Tong Ren Tang)  had a certain degree of fame and goodwill at the date of application (i.e. 12 November 2014).[7]

(ii)  In determining bad faith, one must consider the intention of the Applicant.  While the Applicant claims to be continuing the business of the Yue’s family, there is no evidence at the time of application of the Yue’s family involvement in the business of the Applicant.  Further, it is doubtful whether Yue himself established the shop “臺灣同仁堂樂家老鋪” (Taiwan Tong Ren Tang Yue’s Family Old Store)  (“the Taiwan Shop”)  in Taiwan.[8]

(iii)  There is no evidence that the business of “樂氏同仁” (Yue’s Tong Ren)  in Taiwan had any fame or goodwill outside Taiwan.  Further, after the close down of the Taiwan Shop, there is no evidence that there was any further use of the name of such shop or “樂氏同仁” (Yue’s Tong Ren).[9]

(iv)  In any event, even if the business of “Tong Ren Tang” in the Mainland had not been acquired by the state owned enterprise, this does not mean the members of the Yue’s Family can use the mark.  In fact, there is evidence to show that by a family agreement made by the 11^th generation of the family, the four branches of the family would not be allowed to use the name of the Taiwan Shop for their individual businesses.  There is no evidence that Yueh’s predecessor had any trade mark rights.[10]

(v)  Since 1993, the Opponent has been developing its overseas business and has built a large fame and reputation (including in Hong Kong and the Mainland).[11]

(vi)  Yueh could have chosen another name such as “樂家老鋪” (Yue’s Family Old Store)  or “樂永繼達” (Yue’s Family Forever Succession)  for his business.  As he had tried to register the Subject Marks for goods and services unrelated to Chinese medicine, there was no need to use the name “同仁” (Tong Ren).[12]

(vii)  The evidence does not show that Yueh was a shareholder of the Applicant at the time when it was established.  There is also no evidence to show that: (a)  Yueh had authorised the Applicant to use the name “樂氏同仁” (Yue’s Tong Ren); and (ii)  the Applicant had used the Subject Marks, the name “樂氏同仁” (Yue’s Tong Ren)  or “臺灣同仁堂” (Taiwan Tong Ren Tang)  for goods or services relating to Chinese medicine.  The Applicant also has no basis to claim that it has  been “the Royal Herbalist since 1669” which is clearly a misstatement.[13]

(viii)  The Applicant had previously applied for and withdrawn an application for the markin Class 5 for Chinese medicine and Class 35 for services related to Chinese medicine.  The Applicant in its Counter Statement had also stated that it had a Hong Kong subsidiary known as “香港樂氏同仁堂有限公司” (Hong Kong Yue’s Family Tong Ren Tang Limited Company).   From this the Hearing Officer considered that it was clear the Applicant had an intention to copy and use the Opponent’s “同仁” (Tong Ren Tang)  mark.[14]

(ix)  In conclusion, the Hearing Officer considered that the Applicant had intentionally applied for a mark including the name “同仁” (Tong Ren)  for the purposes of trading off the reputation of the Opponent and intentionally causing confusion to consumers.[15]

(iv)  The Applicant’s challenge against the finding of bad faith

21.Mr Clark’s challenge against the finding of the Hearing Officer on bad faith can be summarized as follows:

(i)  There was no intention on the part of the Applicant to prevent the Opponent from using its marks, which according to Mr Clark, is an essential requirement for a finding of bad faith.

(ii)  There is evidence of co-existence of the marks incorporating “樂氏同仁” (Yue’s Tong Ren)  and “同仁堂” (Tong Ren Tang)  for many years.  There could not have been bad faith as this is a situation involving bona fide conflict between the trade mark rights, or perceived rights, of different traders.

(iii)  The Opponent’s business is in the manufacturing and supply of Chinese medicine. There could not have been bad faith when the Applicant applied for registration of the Words Mark (or indeed the Logo Mark)  for other categories of goods.

(iv)  The Hearing Officer did not accept that Yueh was the founder of the Applicant and so the latter could not claim any right to use the mark through Yueh.  However, on this very issue, the Beijing IP Court accepted that Yueh was the founder and operator of the Applicant and that the Applicant was continuing the use of the trade name “樂氏同仁” (Yue’s Tong Ren)  used by the Yue’s Family in Taiwan.  The Beijing IP Court held that the Applicant had legitimate interests in registering trade marks incorporating the name “樂氏同仁” (Yue’s Tong Ren)  and to use the term “Royal Herbalist”.  The conditions for the operation of issue estoppel are met and there is therefore no basis to support the Hearing Officer’s finding on bad faith.

(v)  The Hearing Officer has failed to consider evidence after the relevant date which may shed light as to the intention of the Applicant at the time of the making of the Application, such as the rulings of the Beijing IP Court and the successful applications for identical or similar marks in respect of other classes of goods and services in Hong Kong and Macau with no opposition from the Opponent.

(vi)  The Hearing Officer had failed to consider the presumption of good faith.

(vii)  The Hearing Officer had relied on unpleaded grounds to make the finding of bad faith, for examples:

(a)  that the former business of Yue’s Family did not give the Applicant an exclusive right to use the name “同仁堂” (Tong Ren Tang)  or to give Yueh the right to inherit the related business;

(b)  that a purported family agreement was made by members of the former generation of the Yue’s Family not to use marks incorporating the name “同仁” (Tong Ren);

(c)  that Yueh was not a shareholder of the Applicant at the time of the applications and that there was no evidence that Yueh had consented to the applications by the Applicant;

(d)  that there was no evidence that the business of “樂氏同仁” (Yue’ Tong Ren)  in Taiwan had any business, fame, goodwill or trade marks outside Taiwan;

(e)  that Yueh could have chosen other names and did not have to use a name incorporating the words “同仁” (Tong Ren)  for his new business which had nothing to do with Chinese medicine; and

(f)  that there was evidence of the Applicant's intention to copy and use the Opponent’s mark “同仁堂” (Tong Ren Tang)  by reason of: (a)  the Applicant had applied in Hong Kong for registration of trade mark (including in Classes 5 and 35)  which had been rejected; and (b)  the Applicant had stated in its Counter Statement that it had a Hong Kong subsidiary called “香港樂氏同仁堂藥業有限公司” (Hong Kong Yue’s Family Tong Ren Tang Limited Company).

(v)  Discussion

22.I agree with Mr Clark that there are flaws in the finding of bad faith made by the Hearing Officer.

23.There is no serious dispute about the historic connection between the Yue’s Family and the “Tong Ren Tang” pharmacy operated since the Ching Dynasty.  Though the Mainland “Tong Ren Tang” business had been taken over by the state-owned enterprise after 1949 and the Yue’s Family had lost all the tangible and intangible assets of the former business, it does not mean that the Yue’s Family had no legitimate interest to use the name “樂氏同仁” (Yue’s Tong Ren)  for its business at least outside the Mainland.

24.It seems that the Hearing Officer accepted that there is legitimate, or at least perceived legitimate, interest for the Yue’s Family to use the name “樂氏同仁” (Yue’s Tong Ren).  However, since there is no evidence showing the connection between the Yue’s Family and the Applicant, the Hearing Officer found that there must have been bad faith in applying for registration of the Subject Marks, in particular when the Applicant knew full well about the Opponent’s business and its scale at the time of the applications.

25.I have problems with such reasoning.

26.First, Song confirmed in his statutory declarations that Yueh was the founder of the Applicant.  The Hearing Officer rejected Song’s evidence solely on the basis that a company search report showed that he was not a shareholder (through a local company)  until 2016 and not at the relevant dates in 2014 and 2015.   However, Song stated on oath that Yueh was a founder.  The finding of the Hearing Officer by inference was a finding that Song had lied on oath.  No application was made to cross examine Song.  Yet this should have been a matter for cross examination given the very serious nature of the allegation[16] and the presumption of good faith.  I accept that that this is an error on the part of the Hearing Officer.

27.It is also important to note that Song’s evidence is not just bare allegations.  The historic connection between the Yue’s Family and the old “Tong Ren Tang” pharmacy is not disputed.  There are also newspaper reports to support the fact that Yueh was trying to bring back the family business of the Yue’s Family to the Mainland.  To a certain extent, the use of the “樂氏同仁” (Yue’s Tong Ren)  marks in Taiwan is also supported by the registration of these marks under the name of Yueh in Taiwan.

28.Second, the Hearing Officer’s decision is contrary to the findings made by the Beijing IP Court.  In the two decisions handed down in 2017, the court accepted that the Applicant’s right to use the “樂氏同仁” (Yue’s Tong Ren)  mark derived from the Yue’s Family.  The court also found that Yueh was both the founder and the operator of the Applicant.  Though the court did not elaborate as how the Applicant had obtained such right, whether someone from the Yue’s Family or Yueh had actually given a licence or permission to the Applicant to use the name, the finding remains that there was connection between the Yue’s Family and the Applicant’s business.

29.It is not necessary for me to decide whether the principle of issue estoppel is applicable here.  At the very least, the decisions of the Beijing IP Court offer some evidential basis to support the Applicant’s evidence that it had considered itself legitimate to use the “樂氏同仁” (Yue’s Tong Ren)  name by reason of its connection with the Yue’s Family in Taiwan.  Hence, in the absence of cross examination of Song, it is difficult to support a finding of bad faith on the part of the Applicant when it applied to register the Subject Marks.

30.There is always an issue about the relevance of the findings made by courts and authorities outside jurisdiction in respect of trade mark matters.  In general, such kind of findings are not relevant, in particular when such findings are about evaluation of similarity of marks and likelihood of confusion.  The cultures of different places may vary.  The behaviour of and the impression of a mark to an average consumer may be different in different places.  For example, there may be medical institutions and roads using the name “同仁” (Tong Ren)  in the Mainland (which is not the case in Hong Kong), and that may affect how an average consumer perceives the dominant and distinctive component of a mark if any.  Hence, it is quite common for the courts and authorities in different jurisdictions to reach different conclusions about these matters.

31.However, the situation may be different if the findings are about factual matters.  As the Beijing IP Court accepted that Yueh was the founder and was involved in the operation of the Applicant and the Applicant derived its right to use the name “樂氏同仁” (Yue’s Tong Ren)  from the Yue’s Family, which are matters confirmed by Song on oath, it is not right for the Hearing Officer to rely on some queries, which may be clarified by Song during cross examination, to make a serious finding of bad faith against the Applicant.

32.In making the finding of bad faith, the Hearing Officer had placed great weight on the facts that: (i)  the Applicant had withdrawn the application for registration of trade mark incorporating the name “同仁” (Tong Ren)  for Chinese medicine; (ii)  for registration of the Subject Marks for other classes of goods and services, there was no need for the Applicant to use the name “同仁” (Tong Ren)  for these other goods and services as they had nothing to do with the former family business relating to the provision of Chinese medicine; (iii)  there was doubt as to whether Yueh had the right to the use the name “同仁” (Tong Ren); and (iv)  the Applicant had intentionally tried to mislead the public by using the name “同仁” (Tong Ren)  and the term “Royal Herbalist since 1669”.

33.Again I have problems with these reasons in the absence of cross examination of Song.  According to Song, this is a case of honest concurrent use of the name “同仁” (Tong Ren).  Yueh had the right, or at least the perceived right, to use the name “樂氏同仁” (Yue’s Tong Ren)  and he was the founder involved in the business of the Applicant at the time of the application of the Subject Marks.  Further, the words “樂氏” (Yue’s)  were added to the words “同仁” (Tong Ren)  in order to differentiate the Subject Marks from the Opponent’s Marks and to show their origin to the Yue’s family business which originated from the Ching Dynasty. If there are any queries about these allegations, the Opponent should have expressly pleaded the same in the Notice of Opposition.  At the very least, the Opponent should have applied to cross examine Song at the hearing.  Without all these, the Applicant would not have been able to know that there were such queries with its case.

34.On the basis of Song’s evidence and the findings made by the Beijing IP Court, there is at least some justification to support the Applicant’s evidence that the applications were not made mala fide.  There may be a lot of legitimate reasons as to why the Applicant wanted to register the name “樂氏同仁” (Yue’s Tong Ren)  for classes of goods and services unrelated to the provision of Chinese medicine and why it withdrew the application for registration of the Logo Mark upon the opposition filed by the Opponent.  In the absence of cross examination, it would be unsafe to rely on these inferences to reject the Applicant’s evidence or to support a finding of bad faith against the Applicant.  In particular, trade mark applications are presumed to be made in good faith unless the contrary is proved.  After all, this is a case of legitimate or at least perceived legitimate use of the name.

35.In the course of the argument, there is an issue as to whether the dicta made by Arnold J (as he then was)  in Hotel Cipriani Srl v Cipriani (Grosvenor Street)  Ltd^[17] are applicable in the present case.

36.In that case, Hotel Cipriani Srl, which ran Hotel Cipriani in Venice, had applied for a Community Trade Mark (“CTM”)  for the trade marks “Hotel Cipriani” and “Cipriani” covering hotel and restaurant services.  The defendants had established a restaurant in London under the name “Cipriani London”.  Hotel Cipriani Srl sued them for trade mark infringement and passing off.  As a defence to the action, the defendants sought to invalidate the said marks on the basis that they were applied for in bad faith because of the use made by two other hotels in Venice, Locanda Cipriani and Hotel Villa Cipriani.  All of the entities had a common heritage: a Signor Giuseppe Cipriani having been involved in their establishment.  There was an agreement in place between Hotel Cipriani and Locanda Cipriani allowing it to use its name and a similar express or implied term in relation to Hotel Villa Cipriani.  The registration would not prevent these entities from using the name “Cipriani”.  Eventually, Arnold J rejected the claim to invalidate the registration of the said marks on the ground of bad faith.

37.In making the ruling, the judge held that:

(i)  The statutory provision on bad faith has no application to situations involving a bona fide conflict between the trade mark rights, or perceived rights, of different traders.[18]

(ii)  It does not constitute bad faith for a party to apply to register a trade mark merely because it knows that third parties are using the same mark in relation to identical goods or services, let alone where the third parties are using similar marks or are using them in relation to similar goods or services.[19]

(iii)  A party that has been making legitimate use of a mark in one jurisdiction has an obvious and legitimate interest in applying to register its mark in other jurisdictions.  No case of bad faith has ever been established where the application was made by someone who was actually using the mark and had a legitimate interest of their own in protecting it.[20]

38.Whilst these are sound principles, I must point out that that the judge was only applying these principles in the context of CTMs.  So far as the concurrent use of marks in different jurisdictions is concerned, Hotel Cipriani is a case about concurrent use in different European Union jurisdictions.  Further, whether there is a bona fide conflict between different traders is a highly fact-sensitive matter depending on the particular facts of each case.  On the existing evidence, there is simply insufficient basis for the court to doubt the Applicant’s allegation that this is a case of bona fide dispute between two traders who have some claims to the use of the name “同仁” (Tong Ren), or at least they have some sort of connection with the original “同仁堂” (Tong Ren Tang).

39.There is also a legal issue as to whether it is essential for a finding of bad faith that there must be intention on the part of the applicant to prevent other traders from using the relevant mark.  In support of such contention, Mr Clark refers me to the dicta of the English Court of Appeal in Sky Ltd & Ors v Skykick, UK Ltd & Anor[21]and Hotel Cipriani Srl & Ors v Cipriani (Grosvenor Street)  Ltd & Ors[22](the appellate decision in respect of the said judgement of Arnold J).

40.Since these dicta were made in the context of the European trade mark law relating to CTMs, I am not prepared to hold that these represent the law in Hong Kong.  Yet the court would certainly take such matter into account in determining whether there is a bona fide dispute about the use of certain mark or name by different traders and whether the application was made in bad faith.  In the present case, it suffices for me to say that there is simply insufficient basis to challenge Song’s evidence that this is a case about bona fide dispute concerning the use of the mark “樂氏同仁” (Yue’s Tong Ren).

41.For these reasons, I set aside the finding of bad faith made by the Hearing Officer in respect of the registration of the Words Mark.  Similarly, there is no basis for any finding of bad faith for the application of the registration of the Logo Mark.

OPPOSITIONS TO THE REGISTRATION OF THE SUBJECT MARKS BASED ON S 12(3)  GROUND

42.In view of the successful challenge against the finding of bad faith, I then have to consider the other grounds relied on by the Opponent to oppose the registration of the Words Mark.  Since the Hearing Officer made no decision on these grounds, I have to consider the grounds de novo.

43.There is also an appeal against the finding made by the Hearing Officer on s 12(3)  ground in respect of the Logo Mark.  Since the Words Mark and the Logo Mark are similar, it would be sensible for me to address the oppositions together, though I am fully aware that the two marks are different and each of them would have to be assessed individually.

(i)  Legal principles in considering the question of similarity and likelihood of confusion under s 12(3)

44.In Monster Energy Co v. 洪嘉珮^[23], I have set out the relevant legal principles and the proper approach that should be adopted in assessing similarity of the marks and likelihood of confusion under s 12(3)  of the TMO.  The same principles are also applicable in the present exercise.

45.Mr Clark has tried to challenge my dicta in §19 of the judgment in the Monster Energy case[24] when I cited the English case of Oasis Stores Ltd’s Trade Mark Application[25] and observed that “in assessing the distinctive and dominant components in a composite mark, generally speaking words ‘speak louder’ than devices”.  According to him, such statement is not correct given the decisions of the Court of Final Appeal and the Court of Appeal in Tsit Wing (Hong Kong)  Co Ltd v TWG Tea Co Pte Ltd[26].  He submits that the TWG case has laid down the principle that the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a composite mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements.[27]  In other words, it would be wrong to adopt the maxim “words speak louder than devices” in identifying the dominant and distinctive components of the marks, thereby ignoring the fundamental principle that the marks should be compared by reference to the overall impressions of the marks given to the average consumer.

46.I think Mr Clark has misunderstood what I have said in the Monster Energy case.  The observation that “generally speaking, words speak louder than devices” is only an aid in the comparison exercise reflecting the usual behaviour of an average consumer.  To most consumers, words may carry more weight in identifying a brand name than a device.  Since a brand name would be a very important factor indicating the origin of the goods or services, it would be right to say that, generally, words speak louder than devices, when the consumers are looking for something in a mark which give them some clue about the origin of the goods or services.  It is just natural that when a consumer is being asked about a particular brand (which is an important indicator showing the origin of the goods or services), they would usually refer to the words in the mark showing the brand name rather than the device. This is just common behaviour of a normal consumer.

47.Yet whether such observation is applicable in each case depends on the design and the words and device used in the mark.  If the words are more descriptive of the products and not indicative of the origin of the goods or services, or if the words do not look like a brand name at all, then different considerations apply and words may not speak louder than the devices.  Hence, this is only a general observation which may not be good for all cases.  After all, the approach remains one set out in the judgments in the TWG case, and the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks.

48.As I will further elaborate in the latter part of this Judgment, there is ample justification for the Hearing Officer to conclude that the words “同仁” (Tong Ren)  and “樂氏同仁” (Yue’s Tong Ren)  speak louder than the device in the Logo Mark (even more so in the Words Mark), as these words appear to an average consumer as more like brand names indicating the origins of the goods or services.

(ii)  The decision of the Hearing Officer on the s 12(3)  ground in respect of the Logo Mark

49.Since the Hearing Officer made a decision on the s 12(3)  ground for the Logo Mark and no decision on such ground for the Words Mark, it would be sensible for me to deal with the Applicant’s challenge against the Hearing Officer’s finding on the Logo Mark first.

50.In her decision, the Hearing Officer compared the Logo Mark (the left one)  with the Opponent’s mark relied by the Opponent to oppose the registration (the right one)  (“the Opponent’s Mark”):

51.The Hearing Officer cited the well-known principles in assessing similarity of the marks and likelihood of confusion as affirmed by the Court of Appeal in the TWG case[28].

52.The Hearing Officer assessed that the dominant and distinctive component of the Opponent’s Mark is “同仁堂” (Tong Ren Tang)  and that the dominant and distinctive part of the Logo Mark is “樂氏同仁” (Yue’s Tong Ren).

53.The Hearing Officer then conducted visual, aural and conceptual comparison of the marks.  The Hearing Officer concluded that the marks have a certain degree of similarity (有一定的相似度)  because of the common characters “同仁” (Tong Ren).   She found that the visual similarity is “relatively low” (較低).  She then found that on an aural comparison there is a “medium similarity” (聽覺上有中等的相似度).  On conceptual comparison, she found that due to the common characters “同仁” (Tong Ren), there is a “certain degree of similarity” (有一定的相似度). Taking all these into account, the Hearing Officer concluded that the similarity between the marks is “average” (一般).[29]

54.The Hearing Officer then compared the goods and services applied for in respect of the Logo Mark and the goods and services registered for the Opponent’s Mark, applying the well-known principles set out in British Sugar Plc v James Robertson & Sons Ltd[30]. She found that the goods and services applied for are similar.

55.Finally on the question of likelihood of confusion, the Hearing Officer applied the well-known principles in the TWG case and found that there is likelihood of confusion as an average consumer would believe that the respective goods or services bearing the Logo Mark come from the Opponent or economically-linked undertakings.

(iii)  The Applicant’s challenge against the comparison exercise under s 12(3)  ground in respect of the Logo Mark

56.Mr Clark submits that the Hearing Officer had erred in her approach in comparing the marks:

(i)  The Hearing Officer made an error in §47 of the Decision by wrongly applying the old adage “words speak louder than devices” (“文字通常比圖案會留下較深刻印象”)  to determine that the dominant and distinctive feature of the Opponent’s mark is “同仁堂” (Tong Ren Tang)  and that the dominant and distinctive part of the mark applied for is “樂氏同仁” (Yue’s Tong Ren).

(ii)  The Hearing Officer had failed to take into account the presence of the device “” (“the Device”)  in the Logo Mark applied for.  The Device forms a large part of the mark and should be regarded as the dominant part of the mark.

(iii)  The Hearing Officer had failed to take into account the other differences in the marks, for examples, the difference in the stylization of the Chinese characters, the presence of the English words “Tong Ren Tang” in the Opponent’s Mark and the English and Chinese words “Royal Herbalist since 1669” in the Logo Mark.

(iv)  The consumers of the relevant products would spend more time in comparing the marks and inspecting the goods and services.

(v)  The low similarity between the marks means that confusion is unlikely even if the registration of the Logo Mark were to be allowed.

(iv)  Merits of the challenge against the s 12(3)  findings in respect of the Logo Mark

57.There is no merit in such challenge.

58.First, there is no appeal against the findings that:[31]

(i)  the subject goods and services are identical and highly similar to the registered goods and services;

(ii)  “同仁” (Tong Ren)  has a certain degree of distinctiveness in the relevant trade;

(iii)  “同仁” (Tong Ren)  is not descriptive in relation to the applied-for goods and services; and

(iv)  “同仁” (Tong Ren)  is not a commonly used term in the relevant trade.

59.In setting out the principles affirmed in the TWG case, it is clear from the Decision of the Hearing Officer that she was well aware that the marks should be compared as a whole.[32]

60.Mr Clark relies on the dicta of the Court of Final Appeal in §78 of the TWG case[33] to argue that the Hearing Officer had wrongly applied or overemphasized the maxim “words generally speak louder than devices” in the comparison exercise.

61.I disagree.  In making the said dicta, the Court of Final Appeal was only responding to the submission that the trial judge and the Court of Appeal fell into error of law “by placing too much upon aural rather than visual comparison between [the relevant marks]”, being one of the submissions developed and recast from the original trade marks questions for which the leave to appeal to the Court of Final Appeal was granted.  Whether “words speak louder than devices” certainly depends on the circumstances of each case.  The Hearing Officer was entitled in exercising a value judgment on her part in saying that “words speak louder than device” in comparing the Logo Mark and the Opponent’s Mark in the comparison exercise.

62.In the earlier part of this Judgment, I have already explained that “words speak louder than devices” is only an observation which reflects the general behaviour of consumers in the market who would pay more attention to the words rather than the devices in identifying the brand name of a product which is an important indicator of the origin of the goods or services.  As mentioned above, this is a general observation which may not hold good in all cases.  In the present case, judging from the designs and the nature of the words used in the marks, there is ample justification for the Hearing Officer to apply the said maxim in comparing the marks.  She was well aware that both marks had to be assessed as a whole in the comparison exercise.  She dealt with each part of the marks and explained why she concluded that “同仁堂” (Tong Ren Tang)  and “樂氏同仁” (Tong Ren Tang)  are the most dominant and distinctive components of the Opponent’s Mark and the Logo Mark respectively.

63.In trade mark opposition proceedings, hearing officers often have to make “multi-factorial comparison”, evaluating similarity of marks, similarity of goods and services and other factors in order to reach conclusions about likelihood of confusion and the outcome of a notional passing off claim.  A lot of these assessments involve value judgments.  The court has to guard against substituting the hearing officer’s evaluation of these matters with its own evaluation.[34]

64.The other grounds have no merit as well.  It is clear that the Hearing Officer had not ignored the Device, the presence of the English words “Tong Ren Tang” in the Opponent’s Mark and the words “Royal Herbalist since 1669” (in both English and Chinese)  in the Logo Mark in assessing the similarity of the marks.  There was also no fault on her part in conducting the visual, aural and conceptual comparison of the marks.  Taking into account the nature of the average consumer in Hong Kong, she was also entitled to pay more attention to the Chinese characters (as opposed to the English words)  in conducting such comparison exercise.  There is simply no room for this court to interfere with these judgments made by the Hearing Officer.  Indeed, I agree with Ms Ma, counsel for the Opponent, that if the Hearing Officer had “neglected” the other elements as alleged by the Applicant, the Hearing Officer would not have found that the marks only have low degree of visual similarity, average aural similarity and a certain degree of conceptual similarity.

65.There was also no fault on the part of the Hearing Officer in comparing the goods and services and assessing the likelihood of confusion based on the similarity of the marks.  In fact, there is no dispute that the applied-for goods and services are identical and highly similar to the registered goods and services.  Hence, I reject the challenge against the decision of the Hearing Officer refusing the registration of the Logo Mark on s 12(3)  ground.

66.Even if the Hearing Officer were wrong for any of the reasons advanced by Mr Clark and I have to do the comparison exercise de novo, I would have come to the same conclusion as that made by the Hearing Officer.

67.Assessing each of the marks as a whole and adopting the well-established principles in the Court of Final Appeal’s decision in the TWG case[35], I agree that the most dominant and distinctive components of the Opponent’s Mark and the Logo Mark are “同仁堂” (Tong Ren Tang)  and “樂氏同仁” (Yue’s Tong Ren)  respectively.  Since both marks have the words which, to an average customer, may indicate some kind of a brand name, I would say that, for the marks in question, words speak louder than the Device and the common characters “同仁” make the marks similar.  I also agree with the visual, aural and conceptual comparison made by the Hearing Officer.  In fact, I would assess the similarity between the marks as “slightly above average”.  In making the comparison, I have not ignored the size and the position of the Device in the Logo Mark, the different stylization of the Chinese characters in the two marks, the presence of the English words “Tong Ren Tang” in the Opponent’s Mark and the words “Royal Herbalist since 1669” (in both English and Chinese)  in the Logo Mark.  Yet I would still say that the Chinese characters in the marks, like some kind of brand names, would leave a more significant impression on an average consumer in identifying the origin of the goods or services.  As mentioned above, the similarity between the marks is slightly above average.

68.For the same reasons given in the Decision by the Hearing Officer in comparing the goods and services and assessing the likelihood of confusion[36], I find that, due to the similarity of the marks, the intended use of the Logo Mark in relation to the goods and services applied for is likely to cause confusion on the part of the public.  I therefore uphold the Hearing Officer’s decision in rejecting the registration of the Logo Mark on s 12(3)  ground.  By reason of such ruling, it is not necessary for me to consider the other grounds of opposition and the appeal in HCIP 62/2020 must therefore fail.

(v)  De novo determination of the opposition against the Words Mark based on s 12(3)  ground

69.I then turn to the opposition against the registration of the Words Mark under HCIP 63/2020.  As I have set aside the Hearing Officer’s finding on bad faith, it is necessary for me to consider the other grounds of opposition de novo for the registration of the Words Mark.

70.Ms Ma confirms that the Opponent is relying on the Opponent’s Mark (Registered Trade Mark 300098640 in Classes 3, 30 and 33 and Registered Trade Mark 303069379 in Classes 35, 41 and 44)  to oppose the registration of the Words Mark on s 12(3)  ground.

71.The Words Mark does not feature the Device or indeed any device.  In fact, the Words Mark only contains the Chinese characters “樂氏同仁” (Yue’s Tong Ren)  presented in a vertical manner with the tiny English words “Royal Herbalist since 1669” in the bottom.

72.Applying the same approach and reasoning mentioned above, it would not be difficult to find that there would be a higher degree of similarity between the Words Mark and the Opponent’s Mark mainly due to the absence of any device in the Words Mark.  Mr Clark does not disagree with such observation.

73.The main issue here is whether there is any likelihood of confusion as the goods and services applied for the registration of the Words Mark may be different from those registered under the Opponent’s Mark.

74.The Applicant seeks to register the Words Mark for goods and services in Classes 32, 33, 36 and 41 which is opposed by the Opponents.[37]  The goods and services applied for the registration of the Words Mark are as follows:

Class 32:

Beer; non-alcoholic fruit juice beverages; mineral water; vegetable beverages; lozenges for sparkling beverages; powder for sparkling beverages; fruit juice; non-alcoholic cider; bean beverages; beverage making ingredients; beverage flavors; soda drinks

Class 33:

Fruit wine (alcoholic); distilled beverages; honey wine; spirits (drinks); alcoholic beverages (except beer); rice wine; pre-mixed alcoholic beverages (except beer); rice wine; cider; cooking wine; sake

Class 36:

Insurance; financial management; art valuation; real estate agency; brokerage; guarantee; raising charitable funds; escrow industry; entrusted management; pawn; insurance brokerage; fund investment; financial services; jewellery valuation; real estate rental; trust

Class 41:

School (education); tutoring (training); arranging and organizing seminars; mobile library; book publishing; online e-book and magazine publishing; video tape distribution; radio and television program production; entertainment; provision of sports facilities; operation of lottery; Education; Training; Organizing performances (performances)

75.The Opponent has registered the Opponent’s Mark in Class 33 for “wine, liqueur, alcoholic beverages containing fruits, spirits (except beer)”.  The goods applied for the registration of the Words Mark in Class 33 are nearly identical to those covered by the Opponent’s Mark in the same class.  In view of the similarity of the marks, there is serious likelihood of confusion and the registration for Class 33 should be disallowed.

76.Class 32 covers beer and other non-alcoholic beverages.  However, taking into account the likely consumers of the products, the respective trade channel through which the goods reach the market (probably through the same channels)  and the degree of competitiveness of these products, I am of the view that there is likelihood of confusion if the Applicant is allowed to register the Words Mark for goods in Class 32.  I therefore disallow such registration.

77.For Class 36, Ms Ma concedes that the services applied for in Class 36 are different from the other services covered by the registration of the Opponent’s Mark and there is no likelihood of confusion arising from the registration of the Words Mark.  Hence, subject to the other grounds which I will discuss below (i.e. ss 12(4)  and 12(5)  grounds), I allow the registration of the Words Mark for the services applied for in Class 36.

78.The registration of the Opponent’s Mark in Class 41 covers “training, entertainment, cultural activities, education, organising seminars and training sessions, video production and editing, photography and fitness training”.  In my judgment, these services are very similar if not identical to the services applied for the registration of the Words Mark.  In view of the similarity of the marks, confusion is likely to arise if registration is to be granted.  Hence the registration of the Words Mark for such class is disallowed.

OTHER GROUNDS TO CHALLENGE THE REGISTRATION OF THE WORDS MARK

79.That leaves only the challenge against the registration of the Words Mark based on the remaining grounds under ss 12(4)  and 12(5)  of the TMO.  Both sides have made little submissions on these issues, both in the hearing before the Hearing Officer and in these appeals.  Further, as the Hearing Officer refused the registration of the Subject Marks on other grounds, she had not made any decision on the opposition under these grounds.

80.I am given to understand that it is the practice in the Trade Marks Registry that, in the case the Registrar finds in favour of one of the multiple grounds, the Registrar will give reasons for that particular ground only without considering the other grounds.  As appeals from the Registrar are not strictly rehearings, it may be desirable, in some appropriate cases, for the Registrar to give brief reasons for the other grounds as well.  If no such reason is given, the court would then have to consider whether it should remit the case back to the Registrar for reconsideration or to consider these grounds afresh.  If the Registrar has heard oral evidence in the hearing below, then the appellate court may have no option but to remit the case back to the Registrar for reconsideration which may cause further delay.  Further, if what Ms Ma tells me about what happened in the hearing below is true, her argument on s 12(4)  ground was subsumed with her submission on the bad faith ground. Hence, it would provide more assistance to the appellate court if the Hearing Officer could provide her reasons for these other grounds as well.

81.I am not suggesting that the Registrar should give reasons on all grounds in all cases.  However, when oral evidence has been heard or both sides are legally represented, the hearing officer concerned should give some serious thought as to whether they should also consider the other grounds which have been argued before them.

82.In this particular case, Ms Ma has invited me to remit the case back to the Registrar for reconsideration of the opposition based on ss 12(4)  and 12(5)  grounds.  However, I agree with Mr Clark that there would be no point for the court in doing so, in particular when the parties have already or should have presented the evidence on all the grounds before the Hearing Officer and no oral evidence has been heard in the hearing below.  For this case, the court has all the sufficient materials to make the decision under ss 12(4)  and 12(5)  grounds and it would only cause further delay in remitting the case back to the Registrar for reconsideration.

83.As the court would only allow the registration of the Words Mark for services in Class 36 after considering the s 12(3)  ground, the question then is whether such registration (only for Class 36) would offend ss 12(4) or 12(5).

84.To succeed on the opposition under s 12(4)  ground, the opponent has to establish that:[38]

(i)  the earlier mark is entitled to protection under the Paris Convention as a well-known trade mark;

(ii)  the subject mark is identical or similar to the earlier trade mark and on a global appreciation taking into account all the factors relevant to the circumstances of the case, there is a link between the earlier mark and the subject mark in the minds of the relevant public; and

(iii)  the use of the subject mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

85.The claimant must adduce proof of the third requirement.  In order for advantage to be taken of the trade mark’s distinctive character or repute, it is necessary for there to be some change in the behaviour of the consumers of the earlier well-known mark as a result of the use of the allegedly infringing sign, or a serious likelihood of such a change.  Short of showing actual detriment, evidence may take the form of serious risk of such detriment, allowing the use of logical deductions, founded on an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as the other circumstances of the case.[39]

86.I agree with Mr Clark that there is nothing in the Opponent’s evidence to support such a change or any likelihood of change in economic behaviour. In particular, the Opponent’s Marks and the name “同仁堂” (Tong Ren Tang)  may only enjoy goodwill in the Chinese medicine sector and consumers outside such sector may not know the name at all.  Apart from my reservation as to whether the Opponent’s Marks fall within the meaning of well-known trade marks under the Paris Convention, there is no basis in the present case enabling the court to make a finding, whether by direct evidence or inference, that there is a likelihood of change of economic behaviour resulting from the registration of the Words Mark in Class 36.  Hence, the opposition based on s 12(4)  fails.

87.Likewise, there is insufficient basis for the court to find that the use of the Words Mark in the provision of services applied for in Class 36 would constitute passing off of the registered goods and services of the Opponent. First, the Opponent’s reputation is quite restricted to the supply of Chinese medicine.  Second, in her submissions on the s 12(3)  ground, Ms Ma agrees that there would be no likelihood of confusion for the use of the Words Mark for services in Class 36 due to the different nature of the services included in such Class.  In such case, it would be difficult for the Opponent to establish passing off for the use of the Words Mark in respect of services applied for in Class 36.  The opposition based on s 12(5)  also fails.

88.For these reasons, I allow the appeal in HCIP 63/2020 to the extent that the Applicant is allowed to register the Words Mark for services applied for in Class 36.

89.I also make an order nisi that there be no order as to costs for both appeals which shall be made absolute 14 days after the date of the handing down of this Judgment.

Mr Douglas Clark, of Douglas Clark LLP, for the Applicant/Appellant in both cases

Ms Ma On Ki, instructed by Benny Kong & Tsai, for the Opponent/Respondent in both cases