Hong Kong Factory Owners Association Ltd v. Registrar of Co
Read the full judgment text of HCMP 1553/1982 on BabelCite. This High Court CFI judgment was delivered on 17 March 1983.
1. The plaintiff is a limited company incorporated on the 21st September 1981. These proceedings arose as a result of a directed change of its Chinese title. Stripped of the last four Chinese characters denoting "limited company", the name at issue encompasses seven characters which read "Hong Kong Chong Sheung Luen Hop Hui".
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HCMP001553/1982 Headnote Companies Ordinance, s.20(1)(a) and s.22(2) - Opinion of Registrar of Companies that company's name so nearly resembles name of existing company as to be calculated to deceive - Registrar directing change of name - Duty of Registrar to act fairly by giving opportunity to make representations before forming his opinion ____________ On 22nd September 1981, the Applicant company (the new company) was incorporated with a Chinese name which translates as "The Hong Kong Manufacturers Association Limited". After receiving a letter of complaint dated 16th June 1982 from an existing company with a Chinese name which translates as "The Hong Kong Chinese Manufacturers Association", (the old company), the Registrar of Companies formed the opinion on 23rd June 1982 that the new company's Chinese name too nearly resembled the old company's Chinese name. Before forming that opinion, the Registrar had not sought the views of the new company. On 29th June 1982 the Registrar wrote to the new company informing it that its Chinese name so nearly resembled the Chinese name of the old company as to be calculated to deceive in contravention of s.20(1) (a) of the Companies Ordinance, and gave the new company 14 days to change its name. The new company failed to change its name within the time specified, whereupon, on 3rd August 1982, the Registrar wrote to it in purported exercise of his powers under s.22(2) of the Companies Ordinance directing it to change its name within 6 weeks on pain of a fine of $500 per day in default. The new company sought a judicial review of his decision. Held:
IN THE HIGH COURT OF JUSTICE HONG KONG MISCELLANEOUS PROCEEDING
________ BETWEEN
________ Coram: Hon. LIU, RHIND and MAYO JJ. in Full Bench Date: 17 March 1983 __________ JUDGMENT __________ LIU J. 1. The plaintiff is a limited company incorporated on the 21st September 1981. These proceedings arose as a result of a directed change of its Chinese title. Stripped of the last four Chinese characters denoting "limited company", the name at issue encompasses seven characters which read "Hong Kong Chong Sheung Luen Hop Hui". 2. As at the date of the plaintiff's incorporation, there existed an association formed in March 1960 by the Chinese name of "Hong Kong Chung Hwa Chong Sheung Luen Hop Hui". "Hong Kong" is self-explanatory. "Chung Hwa " means Chinese. "Chong Sheung" refers to manufacturers or factory owners and "Luen Hop Hui" stands for association. 3. Under section 22(2) of the Companies Ordinance, on the 3rd August 1982 the Registrar required the plaintiff company to change its name within a period of 6 weeks by reason that the plaintiff's Chinese name was, in the opinion of the Registrar, so nearly resembling the name of the other association as to be calculated to deceive. Section 22(2) reads as follows:
4. The fact are few: After the incorporation of the plaintiff company, the Registrar received a letter from Messrs. Lo & Lo dated the 16th June 1982 on behalf of the other association notifying the Registrar of "the close resemblance of the Chinese name" of the plaintiff with a plea for action to be taken under section 22(2). Thereupon, the Registrar considered whether the plaintiff should have been permitted to register its Chinese title. In his deliberation as assisted by Chinese officers but quite independent of the assertion in the notification of Messrs. Lo & Lo, the Registrar concluded on the 23rd June 1982 that the Chinese name of the plaintiff company so nearly resembled the Chinese name of that other association as to be calculated to deceive within the meaning of section 20(1)(a) of the Companies Ordinance. By a letter dated the 29th June 1982, the Registrar of Companies informed the plaintiff of his view and advised that its Chinese title should not have been approved. The Registrar further enquired as to whether the plaintiff would be willing to alter its Chinese name voluntarily within 14 days and intimated that he would otherwise invoke section 22(2) to compel a change. On the 9th July 1982, being still within that period of 14 days, solicitors for the plaintiff disclosed that counsel opinion was being sought. No extension of time was requested, but the plaintiff's said solicitors stated that they would communicate with the Registrar "again shortly". This reply of the 9th July was not brought to the attention of the Registrar, and some 35 days after the Registrar's initial letter to the plaintiff, on the 3rd August 1982 the Registrar directed a change of name to be effected within 6 weeks on pain of a default fine of $500 a day. The plaintiff company had by August 1982 been promoting its Chinese corporate name for nearly a year and had solicited the support of some 200 members. 5. It is reasonably clear that the Registrar had formed an opinion even before he enquired of the plaintiff's attitude as to the suggested voluntary change of name. He had not extended to the plaintiff any invitation to put forward materials for consideration. That the plaintiff had never been consulted before the Registrar reached his decision was conceded. The Registrar commented on the sad reality that within the context and capacity of his administration of the Names Registry, it would be unworkable to attempt to entertain representations. 6. Pursuant to leave granted, the plaintiff moved the full bench for judicial review with a prayer for the following relief:
7. The threshold complaint was that the Registrar failed to act fairly in primarily not affording to the plaintiff any opportunity of making representations. The decision of the Registrar was itself criticized as having paid no regard to public use or vigilance of these two names and other similar names. It was further submitted that the other company was not shown to have and had not acquired any exclusive right to use in its title these Chinese characters which are common generic words of description and that the opinion of the Registrar was in any case erroneous by reason of the conspicuous presence or absence of the two allegedly distinguishing Chinese characters "Chung Hwa". 8. On these complains of the plaintiffs additional evidence was sought to be adduced in support of the allegations that the plaintiff had been deprived of an opportunity to submit relevant materials and that the Registrar had inadequately addressed himself to concurrent public user of the names of these two associations or similar names. By consent, such additional evidence was received de bene esse. The defendant through counsel expressly waived any right to reply in the event of this court leaning in favour of admission. In my view, additional evidence may be legitimately introduced for the two stated purposes. It was well said by Browne L.J. in Eckersley v. The Secretary of State for the Environment and another, (1): "The investigation of a possibility that there has been a breach of natural justice must nearly always :involve receiving evidence outside" the materials which had been placed before the Registrar. The English Court of Appeal in Eckersley did not indorse this approach as a general rule for an investigating tribunal to order additional evidence at will, but it is really little more than sheer common sense that in the pursuit of an order of certiorari an applicant should not be barred from introducing evidence for demonstrating that given an opportunity there were indeed material considerations ready for presentation and that what was alleged to have been omitted were matters fit and proper for inclusion. In another words, he "had to be able to show what the error of law was said to be". See also page 242 de Smith, Judicial Review of Administrative Law, 4th edition. R. v. Knightsbridge Crown, Ex parte The Aspinall Curzon Ltd. (2) is another example. The practice is well settled and my decision turns on a different aspect. It would seem, therefore, that no useful purpose will be served by inviting further submissions. 9. The conclusion I have finally reached does not rest on the admissibility of this de bene esse evidence; nor will it call for any adjudication on the alleged breach of natural justice or the alleged neglect on the part of the Registrar to take into account the habitual and discerning user by the public. However, these matters may be conveniently examined first: For registration of company names, the Registrar is no different from any other statutory investigating body. In R. v. Race Rleations Board, Ex parte Selvarajan, (3) Lord Denning M.R. said of an investigating body in these terms:
10. Shorn of all irregularities, there exists a small parameter within which a ministerial decision may be interfered with. Swift J. in Burgesses of Sheffield v. Minister of Health, (4) observed:
It need be constantly remembered that this Full Bench is constituted primarily for probing into the decision making process and not the subjective decision itself. 11. Speaking of procedure in a local government body endowed with even a judicial duty of imposing obligations on individuals for the common good, Viscount Haldane L.C. had this to say in Local Government Board v. Arlidge (5) :
A fortiori, it would be more onerous for those who are tempted to query the procedure followed for the exercise of an executive discretion. 12. Indeed, counsel in the case of Rex. v. Registrar of Companies, (6) made great play of the fact that there "does not seem to be any case in which, a mandamus to the Registrar of Companies has been granted" to compel him to retain and register a company name. I must therefore register my dissent to the contention that it was inferentially decided by the silent majority in Rex. v. Registrar of Companies (6) that the exercise of the Registrar's discretion was freely revisable. Within its own sphere, the Registrar's discretion is wide, though not absolute nor unfettered in view of the guidelines prescribed in section 20(1) of the Companies Ordinance, and the courts may only review decisions which no reasonable man acting as Registrar could have reached. The observation of Swift J. was echoed as recently as in R. v. Boundary Commission for England Ex parte Gateshead Borough Council & Others; R. v. Boundary Commission for England Ex parte Foot & Others (7) by Sir John Donaldson, M.R. who, giving the judgment of the English Court of Appeal, reiterated the irrefragable rule:
13. It is quite unnecessary to embark on any lengthy discussion. Suffice it for me to say that the duty to act fairly including the obligation to permit representations has not been expressly or by implication excluded or otherwise dispended with for known causes. However, "fairness" has its practical limits. The purpose sought to be achieved by giving to the Registrar a discretion to prevent deception would be stultified if its exercise were to be clogged by endless investigation in quest of every possible distinctiveness or similarity. It would seem that generally the Registrar is enjoined to avail himself only of information within his reach and materials submitted by the parties affected, but give he must a fair opportunity to the plaintiff for making representations. 14. The Registrar had reached an opinion without any submissions from the plaintiff. In addition, the Registrar had taken no account of public user or reaction to the use of these or other names. But here we are faced with identical seven Chinese characters, the same words, the same number of words, arranged in the same sequence with the same beginning and ending and without the slightest visual or phonetic variation. The two associations comprise a very similar if not, in fact, the same group of businessmen running a very similar if not, in fact, the same type of business. 15. Lindley M.R. in Manchester Brewed Company Case, (8) commented:
In the instant case, the whole Chinese title of another was adopted with the exception of the third and the fourth Chinese characters "Chung Hwa". Without more, particularly in the absence of the surrounding circumstances or any evidence of secondary meaning, mere concurrent user in the other examples cannot be too relevant. 16. What appeals to the eye and ear must indeed be also important as in the case of The Society of Motor Manufacturers and Traders, Limited v. Motor Manufacturers and Traders Mutual Insurance Company, Limited. (9) 17. Finally, it needs to be repeated once more that we know not the contents of the said letter of Messrs. Lo & Lo and that the Registrar arrived at his own conclusion from an independent judgment. 18. Powerful language has time and again been used to uphold the sanctity of the rules of natural justice such as:
19. The right to "fairness" should not lightly be abrogated or abridged, but despite these and other staunch judicial sentiments, there is no escape from the bare fact that virtually the whole of the Chinese title of another association has been taken. Moreover, the encroachment stands out in such striking resemblance that it may very well prove to be a useless formality to order any reconsideration, particularly when the plaintiff has now had the advantage of being represented by Mr. Chang before us in a fairly exhaustive and penetrating analysis. I was much drawn to the view, on which I need express no concluded opinion, that the plaintiff had suffered no substantial prejudice in that there could be no likelihood that the ultimate decision would have been different. Against a background of justifiable criticisms, nevertheless it would seem that no amount of procedural propriety would have affected the outcome. 20. Next I turn to what I would regard as the crucial question that lies at the heart of these proceedings. In Rex. v. Registrar of Companies, (6) Avory J. stated the obvious that the Registrar must not exercise his discretion upon some wrong principle of law. In essence, this application resolves itself into a consideration of this fundamental concept. What then is the legal principle on which the Registrar should approach name registration? 21. Our section 20(1)(a) is an exact replica of section 17(1)(a) of the Companies Act, 1929 which in turn descended from section 20 of the Companies Act, 1862 and section 8(1) of the Companies (Consolidation) Act,1908. Identical language has throughout been preserved except for the word "signifies" which appeared as "testifies" in the 1862 Act, but we are unconcerned with that diversity. At page 30 of Buckley on the Companies Act, 11th edition (i.e. the 1929 Act), it is specially noted that "as soon as the new company is registered, the section has ..... ceased to be applicable; the old registered company cannot upon the section claim an injunction to restrain the newly registered company from trading in the name." "And the fact that the Registrar has registered a company under a name will not prevent the plaintiff from obtaining an injunction restraining the company from carrying on under that name a business of the same kind as that of the plaintiff, where it is shown that the name is calculated to deceive or cause confusion." 22. There would seem to be no less than four avenues through which the proposed name or name of a new or newly formed company may be reviewed:
23. Whenever the Registrar is called upon to show cause as to why he should not retain and register pursuant to section 15 the memorandum and articles of association delivered to him, the matter relevant to our present discussion for investigation is whether the proposed name does so nearly resemble the name of a company on the register as to be calculated, though not necessarily intended to deceive. The same principle is to be applied when signatories to a memorandum and articles of association are sought to be restrained from registering a company in a name so nearly resembling the name of an existing registered company as to be calculated to deceive within the meaning of section 20(1) (a). When an injunction is prayed in aid under the general law after the registration of a new company, the court would be "perfectly right in trying" it "by the test of the statute, although it" is "not necessary to invoke the statute at all." per Earl of Halsbury L.C. in the Manchester Brewery Company case. (8) 24. In the last category under section 22(2) of the Companies Ordinance, the Registrar's power to compel a change of a company name is exercisable only when, in the opinion of the Registrar, the name contravenes, inter alia, section 20(1) (a), that is to say, when it so nearly resembles a company name on the register as to be calculated to deceive. Thus, the same thread of reasoning (viz. whether the alleged offending name so nearly resembles the name of the complaining company on the register as to be calculated to deceive) runs through all these cases. It would be absurd to suggest, therefore, that as contrasted with the other cases the Registrar's power under section 22 can be exercised upon some other test differently formulated. 25. Likewise the authorities cited leave no room for argument that in considering the question whether a name is calculated to deceive, the general principles applicable are "extremely analogous" to those for passing off. (17) For invented words or a conjunction of words conveying an individual identity, the position is relatively unobscure. An existing company as the author of such fancy words or phrases can readily be taken as having acquired an exclusive right to their use in its title and what follows next is a discerning comparison of confusing similarities in the newly introduced name with such a personalised title of a company already on the register. It is, however, decidedly different for a title comprising merely generic words or terms of a descriptive character in ordinary use, denoting or connoting a locality, a class or a common group but not referable to any source or affiliation. In those cases, comparatively small differences in the alleged offending trade name may be accepted as sufficient to avert confusion if the complainant's title of descriptive generic terms has not become exclusively associated with himself. So slight need the variation be for differentiating two similar descriptive names of no secondary meaning that it can virtually be said that a trader "must show that the name which prima facie refers to a number of persons or articles is in fact identified solely with (himself) before (he) can satisfy the Court that its use as part of another company's name is calculated to deceive." per Farwell J. in the Aerators case. (18) That case dealt with the use of one word "Aerators", but the use of more than a single descriptive word or term should warrant no departure from the settled principle. Naturally, it stands to reason that the more complex or unusual the conjunction or combination of descriptive words or terms in a title is, the less onerous it will be to establish a secondary or subsidiary meaning for linking that title exclusively to its user. 26. It is common ground that the Chinese characters in the described configuration are ordinary descriptive terms and that the two names do contain some slight variation in the two characters "Chung Hwa". Counsel for the defendant contended that it was not necessary for the Registrar to ascertain whether the other association already on the register had acquired an exclusively right to use its title. It was, as a matter of fact, conceded that the Registrar did not so consider the question of exclusive user, even though in reality no great effort need be made to satisfy himself of a proprietary right to the title of an association active for some 22 years. It is evident that the Registrar had never sought to differentiate the varying guidelines for comparison in cases of trade names comprising only generic descriptive words, whether or not a secondary meaning had been acquired. Without any established exclusive right of user by the other association, its title may not be so readily found to be deceptive by reason of the small difference in the omission of "Chung Hwa" from the plaintiff's name. On the other hand, with a secondary meaning, for the reasons given it would be difficult to imagine how the Registrar's decision could have been affected by procedural properiety. It would be wrong, in my view, to apply the same criterion indiscriminately. The Registrar thus misdirected himself in his approach to the plaintiff's case and his decision cannot on that score be upheld. I would not wish anything said in this judgment to be thought to be critical of the Registrar. The extent and scope of his discretion in the case of generic terms of ordinary description and its exercise generally are part of a vexed question, and one in regard to which clear principle is difficult to discern. 27. In the light of my decision, only the order of certiorari prayed for in (i) of the notice of motion need be granted with the result that the decision of the Registrar of Companies as embodied in the letter dated the 3rd August 1982 requiring the applicant to effect a change of name within 6 weeks is removed into this court and quashed. I would so accede to the plaintiffs', application with costs. RHIND J. Introduction 28. This case raises the issue whether the Registrar of Companies has exercised his powers correctly under s.22(2) of the Companies Ordinance (Cap. 32) in requiring the Applicant company (hereafter referred to as "the new company") to change its Chinese name on the ground that it so nearly resembles the Chinese name of an existing company as to be calculated to deceive. 29. S.22(2) of the Companies Ordinance incorporates a reference to s.20 of the same Ordinance. The only part of s.20 which is relevant for present purposes is sub-section (1) (a). I now set out s.20(1) (a) and s.22(2).
The New Company Chooses Its Name 30. The new company is a non-profit making organization which has the object of promoting the interests of Hong Kong manufacturers who are eligible to become its members. For more than a year prior to incorporation, which occurred on the 22nd September 1981, the incorporation had sought a name for the new company which would be descriptive of its function. They sought to reserve various names such as, for example, 香港工商業聯合會有限公司(Hong Kong Industry and Commerce Association Limited), but these were all rejected by the Registrar of Companies on the ground of too close resemblance to the name of existing companies. Finally, on the 16th day of June 1981 the Registrar agreed to reserve the Chinese name with which the new company in due course became incorporated. I now set out that Chinese name, together with the transliteration of the characters shown underneath:- 香港廠商聯合會有限公司 Hong Kong Chong Sheung Luen Hop Hui 31. The last four characters simply stand for "LIMITED", and have no significance for present purposes. 32. Various English translations of the new company's Chinese name appear in the material before the court. The one relied on by the Registrar of Companies was "A Union of Factory Manufacturers in Hong Kong Limited". That particular translation could hardly be described as standard English. In English, one would never speak of "Factory Manufacturers", but, rather, "Manufacturers", or "Factory Owners". A more satisfactory translation of the new company's name in English is "A Union of Manufacturers in Hong Kong Limited" or "A Union of Factory Owners in Hong Kong Limited". Perhaps better still is the translation "Hong Kong Manufacturers Association Limited" or "Hong Kong Factory Owners Association Limited". 33. I would not cavil at the English translation adopted by the Registrar, were it not for the possibility that the rather quaint translation "Factory Manufacturers" for 廠商 (Chong Sheung) might easily have led the Registrar into the error of believing that he was dealing with "fancy" words, rather than ordinary words in the Chinese language. The significance of "fancy" words in the context of company names will become apparent in due course. 34. In selecting the Chinese name which has been translated for the Registrar as "A Union of Factory Manufacturers in Hong Kong Limited", the incorporators clearly were aware there was already in existence a company registered with the Chinese name 香港中華廠商聯合會 Hong Kong Chung Hwa Chong Sheung Luen Hop Hui That was translated into English for the Registrar as "A Union of Chinese Factory Manufacturers in Hong Kong" (hereafter referred to as "the old company"). A more natural English translation for the old company's name is "The Hong Kong Chinese Manufacturers Association". Why I say the incorporatios of the new company were aware of the existence of the old is that Mr. Hwang Jen, the moving force in the incorporation of the new company, was a member of the old company. 35. Thus, it came to pass that, from the 22nd September 1981, there existed on the Companies Register in Hong Kong the old company registered with a Chinese name, the most natural translation of which is "The Hong Kong Chinese Manufacturers Association" and the new company registered with a Chinese name, the most natural translation of which is "The Hong Kong Manufacturers Association Limited". The New Company Commences Operations 36. The new company, through Mr. Hwang Jen, the Permanent Honorary Secretary of its Executive Committee, has sought to make its presence felt in this community by publicly expressing views on matters of concern to manufacturers in Hong Kong. By the lst September 1982, more than two hundred manufacturers had already become members of the new company. The Old Company Complains to the Registrar 37. On 16th June 1982 the old company wrote to the Registrar of Companies, complaining that the Chinese name of the new company closely resembled the Chinese name of the old company and requesting the Registrar to consider taking action against the new company under s.22(2) of the Companies Ordinance. There has never been any complaint direct from the old company to, the new company. 38. The new company has never been shown a copy of the old company's letter of the 16th June 1982, and only knows of its existence because Mr. Booth, who is in charge of the section responsible for registering new names in the Companies Registry, referred to it in his affidavit dated 12th November 1982 which was prepared for the purpose of the present proceedings. The Registrar Forms An Opinion 39. Without in any way asking the new company whether it might have anything to say on the matter, the Registrar, through the medium of Mr. Booth, came to the conclusion on the 23rd June 1982 that the Chinese name of the new company so nearly resembled the Chinese name of the old company that it contravened s.20 of the Companies Ordinance. The first sentence of paragraph 12 of Mr. Booth's affidavit states that in terms. 40. Having formed his conclusion on the 23rd June 1982, Mr. Booth wrote to the new company on 29th June 1982: -
41. That letter from the Registrar then enquired whether the new company would be prepared voluntarily to change its Chinese name, but then went on to point out that the Registrar had powers under s.22(2) to require such a change. The new company was asked to let the Registrar know within 14 days whether it was prepared to make the change voluntarily. 42. The 14 day period having expired without the new company agreeing to change its name, the Registrar wrote to it again on 3rd August 1982, giving it six weeks notice to effect a change of name, and asserting that failure to comply within the time stipulated would render it liable to a' fine of $500 for each day the default continued. The New Company Challenges The Registrar's Opinon 43. Before the six weeks stipulated in the Registrar's letter of 3rd August 1982 had expired, the new company launched the present proceedings for judicial review of the Registrar's decision. For a start, it went before a Judge in Chambers who preserved the status quo by staying the Registrar's directive until further order. Now the new company moves the Full Court that, inter alia, the Registrar's decision should be quashed, and seeks a declaration that he erred in law and in fact in requiring the change of name. Various grounds were set out by the new company in its statement under R.S.C. Order 53 rule 3(2)(a) as to why the court should adopt the course it urges. I think the court need only concern itself with the new company's grounds (4), (5) and (6), which were to the effect that there were no reasonable grounds to conclude and the Registrar was wrong to conclude that the Chinese name of the new company so closely resembled the name of the old company as to be calculated to deceive, that the Registrar failed to act fairly and/or judicially in coming to his conclusion and that the Registrar failed to give a fair opportunity to the new company to be heard prior to his conclusion. The Test The Registrar Should Have Adopted To Arrive At His Opinion 44. Whether a company name so closely resembles the name of an existing company as to be calculated to deceive is a question of fact (see Aerators Limited v. Tollitt (1a) at 322 and British Vacuum Cleaner Company, Limited v. New Vacuum Cleaner Company, Limited (2a) at 329). By using the formula "in the opinion of the Registrar", s.22(2) of the Companies Ordinance has left it to the Registrar to determine such question of fact. 45. The test which has to be applied to determine whether a company name so closely resembles the name of an existing company as to be calculated to deceive requires a consideration of two elements, namely, (1) whether there is close resemblance between the names and (2) whether there is the likelihood of deception. 46. The element of close resemblance can be determined simply by comparing the names of the two companies. In the language of the cases, this can be done "on the view" (OUVAH CEYLON ESTATES LTD. v. UVA CEYLON RUBBER ESTATES LTD. (3) referred to in counsel for the respondent's submissions in The King v. The Registrar of Companies (4) at 27), or "by an appeal to the eye and ear" (The Society of Motor Manufacturers and Traders, Limited v. Motor Manufacturers and Traders Mutual Insurance Company Limited (5) at 685 in the judgment of Lawrence J. which was expressly accepted by Pollock M.R. and Warrington L.J. in the Court of Appeal (idem at 690 and 691) and the third Lord Justice of Appeal, Sargant L.J. in his turn agreed with his two brethren (idem at 692)). 47. The element of likelihood of deception is determined by a consideration of all the surrounding circumstances. In the language of Parker J. in British Vacuum Cleaner Company Limited v. New Vacuum Cleaner Company Limited (2) at 320:-
The same point is made by Lawrence J. in The Society of Motor Manufacturers and Traders Ltd. (5) (at 685):-
48. Amongst the surrounding circumstances which can be considered for the purpose of determining the likelihood of deception, I will mention some which have featured in the cases. The list is not meant to be exhaustive; it is merely illustrative of the type of surrounding circumstances which should be taken into account when considering the element of likelihood of deception. A. What business has been or is intended to be carried on by the existing company and by the newcomer? (Aerators Limited v. Tollitt(1) at 322; The Society of Motor Manufacturers and Traders Ltd. (5) at 685) B. What sort of name was adopted by the existing company? If the name comprises ordinary words which aptly describe the function of the company, the existing company will be hard put to retain the exclusive right to use those words unless it can show those ordinary words have now acquired a secondary meaning in the sense that they have now become associated in the public mind exclusively with the existing company. For example, if an existing company has ordinary words like "Aerator" (Aerators Ltd. v. Tollitt (1)) or "Vacuum Cleaner" (British Vacuum Cleaner Company Limited v. New Vacuum Cleaner Company Limited (2) or "Motor Manufacturers and Traders" (The Society of Motor Manufacturers and Traders Limited v. Motor Manufacturers and Traders Mutual Insurance Company Limited (5) ) in its title, it will not be entitled to stop another company from being registered with a name which includes those words unless those words have acquired a secondary meaning. 49. The law is decidedly unsympathetic to companies which choose ordinary descriptive words for their name, its attitude being that such words should not, in effect, be removed from the language for newcomers who want to use them. Any company using ordinary descriptive words for its name has only itself to blame if a newcomer chooses to adopt a similar name incorporating the same words. 50. The remedy for any company which wants to secure a monopoly on the words in its name is to choose a fancy name, like, for example "OUVAH", "CROWLEY MILLINGTON", or "EUREKA". With a fancy name, the courts have no hesitation in conferring exclusivity. 51. Having chosen a name for itself with ordinary Chinese descriptive words like 香港中華廠商聯合會 (transliteration: Hong Kong Chung Hwa Chong Sheung Luen Hop Hui), which translates into ordinary English as "The Hong Kong Chinese Manufacturers Association", the old company has arguably exposed itself to the risk that others will also be allowed to use the words in its name, unless the words have acquired a secondary meaning in the sense that when the public sees the characters in issue, namely, 香港廠商聯合會 (transliteration: Hong Kong Chong Sheung Luen Hop Hui), i.e. "The Hong Kong Manufacturers Association", it associates them exclusively with the old company. C. Usage 52. This includes features such as whether the existing company is generally known by an abbreviated version of its name, for example, perhaps the first word or two of its name. According to counsel for the respondent registrar in The King v. The Registrar of Companies (4) at p 26, the registrar took the view that the first two words of the names of the two companies in that case were too much alike, and that, considering the well-known habit of the public in England to abbreviate names, the two companies were likely to be confused. 53. Mr. Dennis Chang, Q.C., for the new company, contends that the usage of the Chinese community in Hong Kong is to abbreviate the Chinese name of the old company to "The Chinese Manufacturers Association", dropping the words "Hon g Kong". The emphasis the Chinese public in Hong Kong puts on the old company's Chinese name, according to Mr. Chang, is on the Chinese connection. As Mr. Chang would have it, there is no real likelihood of the Chinese public in Hong Kong confusing the new company with the old because they know the old company in Chinese as "The Chinese Manufacturers Association" which he says is distinctly different from the new company's name of "The Hong Kong Manufacturers Association Limited". 54. Whether Mr. Chang is right about this particular instance of Chinese public usage does not fall for this court to consider, and I mention it solely as a concrete example of the type of surrounding circumstance that should be considered when determining the likelihood of deception. D. Whether There Has Actually Been Confusion 55. For anyone charged with the burden of having to determine the likelihood of deception, what greater source of assistance could be found than information on whether in actual practice the newcomer had been taken for the existing company? If there have been instances of the public in fact mistaking the newcomer for the existing company, that will point towards the likelihood of deception. Conversely, information which shows that in practice the public does not mix up the newcomer with the existing company will point to the opposite conclusion. 56. Ex hypothesi, this sort of information can only be forthcoming where the company which is a newcomer has been able to commence operations under the disputed name. 57. In other words, this type of evidence will only get the opportunity to come into existence in post-registration cases. 58. Where steps are taken to forestall a newcomer at the pre-registration stage, the Registrar of Companies will inevitably be forced to make do without the benefit of material which tends to show whether there has actually been deception in practice. 59. For example, in The King v. The Registrar of Companies (4) a pre-registration case, there was simply no scope for the newcomer "The Water Softening Materials Company (Sofnol) Limited" to show that it had not been confused with the existing company "Water Softeners Limited", because the newcomer's proposed name was snuffed out before it was ever allowed to see the light of day. 60. Examples of post-registration cases where the courts evinced a willingness to look at whether there had been confusion in practice as an aid to determining the likelihood of deception were Manchester Brewer Company Limited v. North Cheshire And Manchester Brewer Company Limited;(6b) ; The British Vacuum Cleaner Company, Ltd. case; (2)The Society of Motor Manufacturers and Traders Limited case.(5) 61. What significance should be attached to any actual instances of confusion must, of course, depend on all the circumstances in any given case. In approaching the question of whether there is a likelihood of deception, I think it well to bear in mind the well-known passage from the speech of Lord James in Dunlop Pneumatic Tyre Co. v. Dunlop Motor Co. (7a) at 438, cited, with approval by Pollock M.R. in The Society of Motor Manufacturers And Traders Limited at 691:-
The Test The Registrar In Fact Adopted To Arrive At His Opinion 62. In determining whether he thought there had been a contravention of s.20 of the Companies Ordinance, the Registrar only concerned himself with the first limb of the test, namely, close resemblance. 63. Whilst close resemblance is a necessary condition for contravention of s.20, it is not, by itself, a sufficient condition. For contravention of s.20 to be established, both limbs of the test have to be satisfied: the Registrar needs to be satisfied not only that there is close resemblance between the names but also that there is the likelihood of deception. 64. How the Registrar, through the medium of Mr. Booth, confined himself to the element of close resemblance is made manifest by Mr. Booth's affidavit of 12th November 1982. 65. There is, firstly, his paragraph which recounts the complaint the Registrar received from the old company of close resemblance. Next of materiality there is paragraph 10, as follows:
66. Then comes paragraph 11 which concerns itself exclusively with the transliterations and translations of the Chinese names of the old company and the new company. That is the paragraph which yields the translations: "A Union of Chinese Factory Manufacturers in Hong Kong" and "A Union of Factory Manufacturers in Hong Kong Limited". 67. Following paragraph 11, concerned as it was solely with the translations and transliterations of the names, there comes the following statement in paragraph 12:-
68. Nowhere is there any reference to the Registrar having directed his mind to the element of the likelihood of deception, nor is there any material from which it might be inferred he perhaps bore that element in mind. In fact, the unavoidable inference is that the Registrar wholly overlooked whether the likelihood of deception might be present. 69. Clearly, in arriving at his opinion that the new company's Chinese name contravened s.20, the Registrar never applied the correct legal test. On that ground alone, the opinion formed by the Registrar was a nullity, in my view. 70. No doubt, in The King v. The Registrar of Companies (4) - a case on which the Crown placed much reliance in the proceedings before us - the Divisional Court there would have interfered with the registrar's decision if he had applied the wrong test in law. One of the three judges - Avory J. - stated explicitly that the court would be justified in interfering if the registrar had exercised his discretion upon some wrong principle of law. Neither of the other two judges dissented from that proposition, and I am sure they would have in fact agreed with such a self-evident point had the issue actually arisen in the case, but as there was no suggestion that the registrar had got any principle of law wrong in that case they presumably saw no need to join Avery J. in sating the obvious. 71. Besides being a pre-registration case, another feature of The King v. The Registrar of Companies (4) which distinguishes it from the present case is that in the former the registrar did not suddenly surprise the newcomer with an unannounced thunderbolt, but rather engaged in a dialogue with the newcomer about its proposed name before deciding that the name the newcomer wanted had such a close resemblance to the name of an existing company that it was likely to deceive. That there were such exchanges between the representatives of the newcomer and the registrar over the proposed name can be gathered from pages 24 and 25 of the law report. 72. Contrasting the exchanges which occurred between the registrar and the newcomer in The King v. The Registrar of Companies (4) with the unilateral action of the Registrar in the present case leads into a consideration of whether the Registrar was under any duty to act fairly when exercising his powers under s.22(2). Was The Registrar Under A Duty To Act Fairly In Forming His Opinion? 73. The power reposed by s.22(2) in the Registrar to require a company to change its name is distinguished by the following three characteristics:-
74. I regard it as inconceivable that the legislature could ever have intended that, for time without limit after its incorporation, a company should stand silently by, while, on pain of a penal sanction, it is forced to surrender something of economic value, like a name. 75. It must, in my view, have been intended by the legislature that, before the Registrar visited a company with the requirement of a change of name, he should give it an opportunity to influence the opinion he might form. For the Registrar to ask a company whether it has anything to say as to why he should not form the opinion that it should stop using its name or else be punished by paying a fine of $500 per day is no more than fair play. 76. Unless there is good reason to suppose to the contrary, the courts assume that the legislature must have intended that Government officials will observe the principles of fair play when exercising powers conferred on then by legislation. If a Government official in such circumstances has fallen short of what the court considers a minimum standard of fair play, the court can declare that his purported exercise of his powers was a nullity. 77. There is certainly nothing in the Companies Ordinance which would even remotely suggest that the legislature intended that fair play should be excluded when the Registrar came to exercise his powers under s.22(2). The fact of the matter is that legislation affecting private property rights has traditionally cried out for the principles of fair play to be observed. 78. That the Registrar himself recognizes that he should give companies a fair chance of being heard before he makes decisions about their names is implicit from the system he has instituted to enable companies to appeal against the refusal by his officials of the reservation of a name. That system is explained in great detail in paragraph 5 of Mr. Booth's Affidavit. That elaborate system, with a whole hierarchy of administrative appeals, is designed to deal with what is necessarily a pre-registration situation. No company offered such a system could be heard to say that it got less than a fair deal in its pre-registration dealings with the Registrar. How much more important is it that companies should feel that they were treated fairly in their post-registration dealings by when they will have acquired a valuable name they wish to preserve! It makes no sense to me, to operate a patently fair pre-registration system alongside an arbitrary post-registration system. In the same way that there is obviously no policy reason which inhibits the Registrar from listening to what a company has to say about its name at the pre-registration stage, neither is any discernible at the post registration stage. 79. By the combined effect of s.20(1) (a) and s.22(2) of the Companies Ordinance, the legislature has required the Registrar, who is invariably a lawyer to apply a legal test for the purpose of arriving at an opinion. Can it seriously be doubted that when entrusting a lawyer to apply a legal test the legislature expects him to conduct himself in a lawyerly way, namely listening to the views of interested parties before reaching a conclusion? 80. I was more than a little surprised when the Crown thought it could see a parallel between the position of the Registrar forming an opinion for the purposes of Hong Kong's Companies Ordinance and between the position of the government administrator in ROSS-CLUNIS v. PAPADOPOULIOS (8b) carrying out a duty to "satisfy himself" whether the municipality of Limassol should be collectively punished under emergency legislation during the E.O.K.A. terrorism in Cyprus. A point worth noting about that case, too, is that, even amidst the clash of arms, where the law tends to be silent, the residents were at least given the opportunity to say their piece before they were punished. 81. The court is not unmindful of the fact that the Names Registry of the Registrar General's Department has a heavy work-load. An out-line of that work-load is given in paragraph 14 of Mr. Booth's affidavit. Despite that heavy work-load, the Registrar seems to have no problem operating the administrative appeals procedure he has instituted at the pre-registration stage in respect of new names. 82. The number of occasions on which the Registrar is called to consider exercising his post-registration powers under s.22(2) is, I would hope, small indeed. 83. Requiring the Registrar to entertain representations before forming an opinion under s.22 is in practice hardly likely to result in more than an infinitesimal increase in his work-load, I would have thought. 84. Fair play in the present case demanded that the new company was given the opportunity of expressing its views to the Registrar against his forming the opinion that its name so closely resembled the old company's as to be likely to deceive. By failing to afford the new company such an opportunity, a pre-requisite of the valid formation of the Registrar's opinion was not observed, in my view. 85. Mutatis mutandis, the following passage, delivered in a joint judgment by a particularly strong High Court of Australia in Delta Properties Pty Ltd v. Brisbane City Council (9a) at 18, admirably expresses what I have been trying to say:-
86. That passage embodies concepts which basically are as true today as when it was written over twenty-five years ago. The only difference is that the law on natural justice has evolved a long way since then. "Natural Justice" conjures up the idea of a rather formalistic doctrine. Nowadays we tend to talk in terms of more flexible concepts like "fair play in action" or "the requirements of procedural fairness". These more modern approaches all stem from the notion of "Natural Justice", but have the merit of avoiding sterile attempts to define the content of "Natural Justice". 87. In the present case, the new company is not for one moment suggesting that the Registrar should have conducted himself like a judge presiding over a trial. Mr. Chang led me to understand that the new company does not necessarily even expect to be given the opportunity to make oral representations to the Registrar for the purpose of helping him reach his opinion. All that the new company wants is an opportunity to get its views across to the Registrar in one form or another. 88. I do not think it would be helpful for me to define a procedure for the Registrar to follow as I see no benefit in hamstringing his flexibility. So long as he acts fairly, no court will seek to interfere with his discretion. Did The Registrar Act Fairly In Forming His Opinion? 89. Clearly, I have to answer this with an emphatic "No". 90. Even on the element of close resemblance, I think that the new company should have been allowed its say before the Registrar formed any opinion. There are limits to how far the opportunity of being heard on this element can benefit a newcomer because the Registrar's opinion here must to a large extent be a matter of impression gathered "on the view". In the present case, though, not only might justice have been seen to have been done if the new company's views had been sought by the Registrar on whether its Chinese name bore a close resemblance to the old company's, but there was also a greater prospect that justice would in fact have been done because the new company could have warned the Registrar against possibly being misled by the weird translation "A Union of Chinese Factory Manufacturers in Hong Kong" into believing that he might be dealing with a fancy name. In a bi-lingual society like Hong Kong, the opportunity to make representations on a translation can be of importance, because it can make a difference to what the official who deals with this matter on the Registrar's behalf sees "on the view". Sometimes, as in the present case, the official who has to make the decision on a Chinese name will be a native English speaker. In another case, it could be a native Chinese speaker who had to make a decision on an English name. In either case, the company to be affected by the decision should ideally have the opportunity of ensuring that the official concerned is working from a decent translation. The newcomer should thus be given the chance to check that ordinary Chinese has been translated into ordinary English, or vice versa. 91. Failing to give the new company an opportunity to explain itself on the limb of close resemblance perhaps is not a matter of such great moment; denying it an opportunity to make such explanations on the likelihood of deception certainly is. 92. There was much the new company would have liked to tell the Registrar in the hope of leading him to the opinion that there was no likelihood of deception. Much of what the new company would have liked the Registrar to know about is in the affidavits of Mr. Hwang Jen which have been prepared for the present proceedings. 93. Two different Crown Counsel have appeared for the Registrar on the hearing of the present proceedings which took place on three different dates spread over more than a month. Both of them seemed genuinely scandalised at Mr. Chang's request to the court to consider the contents of Mr. Hwang Jen's affidavits. According to the Crown, no one is entitled to challenge the Registrar's opinion. For my part, I can see no reason why the new company should, in the circumstances in which it finds itself, adopt a posture of unquestioning submission. 94. Of course the court has to look at Mr. Hwang Jen's affidavits. Otherwise, the court has no means of knowing whether there was anything material the new company would want to say, had the Registrar afforded it the opportunity to say its piece, as he should have done. 95. The purpose of the court looking at the affidavits in the present proceedings is not to consider whether their contents are true, but whether they disclose the existence of material the Registrar should have considered before forming an opinion on whether the likelihood of deception existed. 96. Already I have touched upon some of the material from those affidavits earlier in this judgment in relation to the element of the likelihood of deception under s.20. Most of this material centres on usage and on whether the rival companies have been confused in practice. 97. On usage, for example, the Registrar should have listened to what the new company wanted to say about the old company's Chinese name being abbreviated so that it is in practice known among the Chinese-speaking community as "The Chinese Manufacturers Association" - a name which the new company contends is not likely to be confused with "The Hong Kong Manufacturers Association". Whether the Registrar would have agreed with what the new company said on that and related matters is up to him, but he has to listen if his opinion is to be upheld. 98. Likewise he should have listened to what the new company would like to say about how Chinese people in this community are well accustomed to distinguishing organizations according to whether the word "Chinese" is or is not present in the title. 99. Having learned to live with, for example, the pairs of names I am about to list, the Chinese community should have no difficulty differentiating between 香港中華廠商聯合會 (transliteration "Hong Kong Chung Hwa Chung Sheung Luen Hop Hui", translation "The Hong Kong Chinese Manufacturers Association") and 香港中華廠商聯合會有限公司(transliteration: "Hong Kong Chong Sheung Luen Hop Hui Limited", translation: "The Hong Kong Manufacturers Association Limited"), so Mr. Chang maintains.
100. On whether there has been confusion in fact, the new company has culled a considerable quantity of material from the press. What weight the Registrar might choose to give to any of it is up to him, but he has to be receptive to what those who stand to be affected by his decision might want to say. 101. Another inferential source of information on the likelihood of confusion could be the two hundred odd members who have now joined the new company. Any of those who belong to both the old company and the new company obviously do not confuse the two. 102. Interestingly, the Registrar recognizes the value of evidence on actual confusion. No doubt to provide some ex post facto bolstering for his opinion, the Registrar, through the medium of Mr. Booth, states in paragraph 15 of the latter's affidavit:-
103. Whether these particular instances of confusion are the result of the sort of unwarrantable conclusion to which "a thoughtless )person" might jump (see Lord James in the Dunlop Pneumatic Tyre Co. case (7) at 438 in a passage I have already cited), or whether they are of the more reasonable variety, is the sort of consideration the Registrar would need to bear in mind when he came to consider all the material before him. The Registrar's Decision Cannot Stand 104. Either the ground that the Registrar applied the wrong test in law in forming his opinion or the ground that he did not act fairly is sufficient to render his decision a nullity. It therefore follows that I join my brethren in ordering that the Registrar's decision embodied in his letter of 3rd August 1982 requiring the new company to effect a change of its Chinese name be quashed. What Need The Registrar Do Next? 105. I deliberately refrain from directing the Registrar to reconsider his decision. If he chooses to, of course he can, so long as he observes the requirements of procedural fairness and applies the correct test. 106. On the other hand, the Registrar could not be criticized for taking the view that he is not prepared to be drawn into what is essentially a private dispute between two rival companies, each of which is, no doubt, well capable of looking after its own interests. If the old company continues to feel aggrieved at the new company operating with its present Chinese name the courts stand ready to rule on the dispute through the ordinary processes of civil litigation. MAYO J. 107. The applicants are seeking the judicial review of a decision made by the Registrar General in his capacity as the Registrar of Companies The Registrar) which was communicated to them by a letter dated the 3rd of August 1982. In the correspondence the Registrar informed the applicants that the Chinese' name of their company so closely resembled that of another company that he required them by virtue of section 22(2) of the Companies Ordinance Cap. 32 to change their name failing which they would lay themselves open to criminal sanctions. 108. The English name of the company referred to by the Registrar is "The Chinese Manufacturers Association of Hong Kong." This company had been using this name since 1960. One of the problems which arises in this application is that the functions of the applicant and the Chinese Manufacturers Association of Hong Kong which I will be referring to as the Chinese Manufacturers Association are very similar. Indeed the permanent honorary president of the Executive Committee of the applicant, Mr. Hwang Jen is also an office bearer in the Chinese Manufacturers Association. 109. The applicant was incorporated in September. Prior to its incorporation the solicitors incorporating it availed themselves of the facilities laid down in section 20(A) of the Companies Ordinance Cap. 32. The provisions contained in this section enable parties forming companies to obtain prior approval to the use of English and Chinese names for companies which it is proposed will be registered. It is common ground between the parties that the Registrar did approve both the English and the Chinese names of the applicant and the company was formed with the desired names. Mr. Booth, a legally qualified officer in the Registrar Generals Department, in his affidavit in reply stated quite frankly that an error has occurred in his office and that approval should never have been given to the use of the Chinese name. When the matter had been drawn to his attention he had written to the applicant invoking the provisions contained in section 22 of the Ordinance. He had first written to the applicants on the 29th of June 1982 informing them of his opinion concerning the close resemblance of the names and the fact that such resemblance was calculated to deceive within the meaning of section 20(1)(a) of the Ordinance. This being the case the applicants were requested to consider voluntarily changing their name within 14 days failing which he would have to take such action as may be necessary under section 22. The solicitors for the applicant sent an acknowledgement to the Registrar of Companies dated the 9th of July stating that they were obtaining counsels opinion and that they would be writing further in due course. On the 3rd of August, as no further letter was forthcoming, the Registrar wrote to the applicants informing them that they had 6 weeks notice to effect a change of name. If they did not change the name within this time, they would be deemed to be in default of the request which was being made and would be liable to a fine of $500 a day while the default continued. It was subsequent to this letter that the applicants applied for and obtained leave for this review. 110. Mr. Denis Chang who was representing the applicants argued that it was manifest on the face of the papers that the Registrar could not have applied the correct legal principles in reaching the conclusion he did. When dealing with words of generic description it is not possible on the basis of the words themselves for them to constitute a "deceptive resemblance" within the meaning of the words in section 20 of the Ordinance. There must be some evidence to show that the words have obtained a secondary meaning. Mr. Chang placed considerable reliance upon two cases in support of the propositions he advanced. The first was the case of British Vacuum Cleaner Company, Limited v. New Vacuum Cleaner Company, Limited (1b). In that case a company which had obtained a patent in respect of vacuum cleaning equipment set up in competition to the plaintiffs. Parker J. held that in considering the provisions of section 20 of the Companies Act 1862, which is similar to our section 20, the principles which should be applied in deciding whether a name was calculated to deceive were similar to the considerations which had to be borne in mind in relation to passing off cases. Also a distinction had to be drawn between words which had an ordinary common meaning and words which could be described as being "fancy" words which related to the product. The other case upon which Mr. Chang placed reliance was Aerators, Limited v. Tollitt (2b). Parker J. in British Vacuum Cleaner Company, Limited (1) considered this case in some detail and adopted the principles which were established. At page 323 of the report Farwell J. said:
111. Mr. Chang went on to argue that the principles enunciated in those cases were of great assistance to him. He referred to Mr. Hwang Jen's affidavit and to the newspaper cuttings which had been exhibited thereto. These cuttings indicated that the local press adopted a common sense approach to the name of the Chinese Manufacturers Association and did not use its full name "The Chinese Manufacturers Association of Hong Kong" but referred to it in the shorthand version of "The Chinese Manufacturers Association". The important point to note is the limitation that by and large the members of the Association were Chinese. In the Chinese translations of the name characters romanised as "Jung Wah" were nearly always referred to. He submitted that it was most unlikely that there would be confusion with the applicant's name as there was no reference to "Chinese" or "Jung Wah" in the name. 112. The Crown has not seen fit to challenge the evidence given by Mr. Hwang Jen concerning the usage of the Chinese Manufacturers Association's name. It was apparent from a perusal of Mr. Booth's affidavit that the first intimation he received of the alleged similarity between the applicant's Chinese name and the Chinese name of the Chinese Manufacturers Association was a letter he received from Messrs. Lo and Lo solicitors dated the 16th of June 1982. After receiving this letter Mr. Booth had formed the opinion which he did and had not provided the applicants with any opportunity of placing before him any representations concerning the usage of the name or whether it constituted any deceptive resemblance to the Chinese name of the Chinese Manufacturers Association. It was significant to note that Mr. Booth reached the conclusion he did prior to writing the letter to the applicants on the 29th of June. It was also clear from the terms of that letter that Mr. Booth's formed opinion was a fait accompli. In this connection it is relevant to observe that no time limit is laid down in section 22 or any other provisions for the review of the Registrar's decision or any appeal against it. This being the case it is not difficult to envisage situations where grave injustice could be occasioned to a company which may over the years have built up substantial good will and then be arbitrarily required to change its name and be afforded no opportunity of placing before the Registrar any representations. Mr. Chang went on to argue that the provisions contained in our section 20 were different to the equivalent provisions in England. In Hong Kong there was no power similar to the English power for the Registrar to object to a name on the grounds that it was undesirable or similar to the name of another company. The English power in this connection could apply to a situation such as the one which arose in the present case where it was evident to the Registrar of Companies that a name was similar thus leading to a possibility of confusion. For this power to be invoked in England it was necessary for the requirement for the change of name to be made within a period of 6 months. Such a limitation of time would obviate the sort of possible abuses outlined by Mr. Chang. 113. It was clear from Mr. Chang's submission that it was incumbent upon the Registrar to weigh and consider a number of factors before coming to the conclusion that it was appropriate for him to invoke the powers vested in him by section 22 aforesaid. The wording of section 20 of the Ordinance leads one inevitably to the conclusion that the Registrar would have to consider whether the proposed use of its name "so nearly resembles that name as to be calculated to deceive" to adopt the wording of section 20(1) (a). As has already been pointed out in the British Vacuum Cleaner case (1), it would be necessary for the Registrar to consider this in the context of the considerations normally applicable to passing off actions. In view of the fact that the name had already been registered by him it was particularly important for him to ensure that all relevant matters were duly considered particularly having regard to the fact that no time limits were set out in section 22 and accordingly a company was on risk to lose good will established in its name indefinitely. In considering the concept of passing off it would be essential for the Registrar General to direct his mind to the way in which the disputed name had been used in the past. It is obvious that the staff in the Registrar's office would have information available to them to the effect that the Chinese Manufacturers Association had been in existence since 1960. However, the usage of the name would not be necessarily self evident to the Registrar. The applicants had placed before the Court a considerable body of evidence in the form of press cuttings and affidavits which tended to indicate that the way in which the public and the press in particular had come to regard the Chinese Manufacturers association was such that it was unlikely that confusion would arise if the plaintiffs were allowed to continue using their present name. 114. Mr. Chang then went on to consider the principles of natural justice. He argued that the discretion which was being exercised by the Registrar was essentially of a judicial or quasi judicial nature. It could not be said to be of an administrative nature with a high policy content. He referred to the recent case of K.O.Y. Investment Company Limited and Others (3b) where a Full Bench had distinguished the difference between authorities exercising administrative and judicial functions. On the basis of the criteria referred to in that case it was clear that the Registrar was exercising a quasi-judicial function. The result of this was that the rules of natural justice must be adhered to. Even if he was wrong in this contention and the discretion was more of an administrative nature it was still nonetheless necessary for the Registrar to act with fairness. At the very least fairness required that in a post registration situation a company must be afforded an opportunity of making representations to the person exercising the discretion before he had made his decision. It was clear from the correspondence which had been exhibited to the court that no such opportunity had been given to the plaintiffs and accordingly they were entitled to the relief which they were seeking. In further support of this proposition Mr. Chang cited Delta Proprietary Limited v. Brisbane City Council (4b) a case which had been decided by the High Court of Australia. It can be seen from the headnote of this case, which accurately reflects the text of the Court's judgment, that "the validity of the Council's opinion must depend upon a full and fair opportunity having been afforded to any person whose property was under consideration of placing before the Council his case against such opinion being formed". 115. Mr. Graham who was representing the Crown submitted that section 22 of the Ordinance was clearly drafted so as to provide the Registrar with a means of rectifying any errors which may have arisen in registering a name pursuant to the provisions contained in section 20 and should be regarded in the same way as a slip rule. It was also clear from section 22(2) that a wide discretion was reposed in the Registrar and this could be seen by the words which had been adopted in the section to the effect that the relevant consideration was the opinion of the Registrar. In exercising that discretion all that was necessary was for the Registrar to consider both of the names and then decide whether in his opinion the name of the new company "so nearly resembles that name as to be calculated to deceive". He did not accept that there was any necessity for the Registrar to consider any matters such as the possibility of passing off or the way in which the Chinese Manufacturers Association had used it s name or was known to the public. At the time when Mr. Booth had made his determination of the matter he had been in possession of all of the information he needed for the exercise of his discretion. He argued that his view of the matter was borne out by the case of Rex v. The Registrar of Companies (5). This was a similar type of case to the present one where there was a dispute concerning the proposed use of a similar type of name. At page 32 of the report of the case Lord Alverstone C.J. said:
It was significant to note that Lord Alverstone did not call for evidence concerning the usage of the name. Nor did he concern himself with any question of passing off. 116. Mr. Graham did not accept that the rules of natural justice had any application to this case. In view of the wide discretionary powers enjoyed by the Registrar it was not necessary for him to provide the plaintiffs with an opportunity of placing before him representations or of giving him an opportunity to be heard. Nothing useful was likely to be achieved in having a hearing. There was really nothing to argue about. It was self evident that the Chinese name of the plaintiff closely resembled that of the Chinese Manufacturers Association and nothing which could reasonably be said by the plaintiff was likely to effect the Registrar's decision. The decision was on the face of it a reasonable and sensible decision and the Court should not interfere in any way. 117. Having considered these submissions carefully, a number of points emerge. In the first place there is considerable merit in the arguments advanced by Mr. Chang to the effect that it was necessary for the Registrar to bear in mind the principles applicable to the law of passing off in deciding whether the plaintiff's name was so similar to that of the Chinese Manufacturers Association as to be calculated to deceive. This would necessarily require the Registrar to consider evidence concerning the usage of the name. The second point to emerge is whether it is possible on the basis of the plaintiff's name for it to constitute a deceptive resemblance. The words complained of were merely descriptive of the plaintiff's operations and it is by no means clear that the Chinese Manufacturers Association could by their use of the words acquire an exclusive use of them. This is particularly well illustrated by Sargant L.J. at page 692 The Society of Motor Manufacturers and Traders Ltd. v. Motor Manufacturers and Traders Mutual Insurance Company, Limited (6c). He said:
118. In my judgment there is considerable merit in the arguments which have been advanced by Mr. Chang. I do not agree with Mr. Graham's submissions that it was open to the Registrar to disregard these considerations. These are matters which should have been considered by the Registrar and were not considered by him. 119. I do not consider that it is necessary for me to make a determination upon these issues. I consider that the most important matter which has been raised by Mr. Chang is the issue of natural justice. I am satisfied that he was correct in arguing that the Registrar was basically exercising a judicial or quasi-judicial function. This being the case it was incumbent upon him not only to be fair but to also observe the rules of natural justice. Clearly the plaintiffs were entitled at the very least to make representations to Mr. Booth before he decided to exercise his discretion under section 22. In addition to this the plaintiffs were entitled to any relevant information which was available to Mr. Booth in making his determination. This would include furnishing the plaintiffs with a copy of the letter Mr. Booth received from Messrs. Lo & lo, the solicitors apparently acting for the Chinese Manufacturers Association. I am satisfied that the failure of the Registrar to comply with the rules of natural justice inevitably leads me to a conclusion that this application must succeed. I have been concerned whether any useful purpose is likely to be achieved in requiring the Registrar to consider this matter further. The answer to this seems to lie in the words of McGarry J. in John v. Rees (7b) when he said at page 402:
The plaintiff is entitled to the right to make representations to the Registrar even if at the present time it does not seem to be very likely that he would exercise his discretion in a different way if a further a application is to be made to him. 120. I accept that it would not be right for us to attempt to place ourselves in the shoes of the Registrar and attempt ourselves to determine this issue. I consider that itis sufficient that we should make an order of certiorari to quash the decision of the Registrar contained in his said letter of the 3rd of August 1982. 1 am in agreement with my learned brothers.
(1) [1977] 34 P. & C.R. 124 at p. 130 (2) Times Law Report December 16, 1982 (3) [1975] 1 W.L.R. 1686 at p. 1694 (4) [1935] 154 L.T. 183 at p. 135 (5) [1915] A.C. 120 at p. 132 (6) [1912] 3 K.B. 23 at p.26 (7) Times Law Report January 26, 1983. (8) [1898] 1 Ch. 539 at p.546; See also Aerators, Ltd. v. Tullitt [1902] 2 Ch. 319 at p.323 (9) [1925] 1 Ch. 675 at p.685 per Lawrence J. (10) [1960] 1 W.L.R. 669 at p.684 per Hodson L.J. (11) de Smith on Judicial Review of Administrative Action, 4th ed. p.245 (12) [1943] A.C. 627 at pp. 644 & 645 per Lord Wright. (13) [1961] A.C. 945 at p. 956 per Lord Denning delivering judgment of the Judicial Committee. (14) [1970] Ch. 345 at p.402C per Megarry J. (6a) [1912] 3 K.B. 23 at p.34 (15) [1902] 2 Ch. 319 (16) [1907] 2 Ch. 312 (8a) [1899] A.C. 83 at p. 86 (17) per Parker J. in British Vacuum Cleaner Company's case at 321 (18) At p.325 see also Office Cleaning Services Ltd. v. Westminster Window and General Cleaners, Ltd., [1946] 63 R.P.C. 39 at p.41 (line 45) To p.42 (line 19) (1a) (1902) 2 Ch. 319 (2a) [1907] 2 Ch. 312 (3a) (1910) 27 Rep. Pat. Cas 753 (4a) [1912] 3 K.B. 23 (5a) [1925] 1 Ch. 675 (6b) [1898] 1 Ch. 539 (C of A) and (1899) AC 83 (H of L) (7a) [1907] A.C. 430 (8b) [1958] 2 All E.R. 23 (9a) [1956] 95 C.L.R. 11 (1b) (1907) 2 Ch. 312. (2b) (1902) 2 Ch. 319. (3b) Miscellaneous proceedings No. 1452 of 1982. (4b) (1956) 95 C.L.R. (5b) (1912) 3 K.B. 19. (6c) (1925) 1 Ch. 675. (7b) (1970) Ch., 345. Representation: Mr. Denis Chang, Q.C. with Mr. Y.C. Mok instructed by Messrs. Iu, Lai & Li for the Applicant. Mr. Peter Graham with Mr. John Cheung, Crown Solicitors for the Respondent. | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||