Qingyuan Rowa Electronics Co. Ltd. v. Rowa Electrical & Trading Co. Ltd.

HCMP006501/1998

MP 6501/98

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

Miscellaneous Proceedings No. 6501 of 1998

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Coram: The Honourable Madam Justice Yuen in Court

Date of Hearing: 11 May 1999

Date of Delivery of Decision: 11 May 1999

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D E C I S I O N

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1. This is an application by motion for an order that the Register of Trademarks my be rectified by expunging therefrom the entry relating to Registered Trademark No. 0041 of 1980 being a mark for "樂華牌" which has been registered in the name of a company called Rowa Electrical & Trading Company Limited in Class 9 for televisions, cassette recorders, Hi-Fi equipment, electric washers, electric vacuum cleaners, electric flat irons, electric curlers, and electric kettles.

2. The present application is made under s.48(1) of the Trademarks Ordinance. Before I deal with the substance of the application, I should say that I was initially concerned about the issue of service on the Respondent Company.

3. However, I do take into account the fact that the proper documents were served on the registered office of the Company, so that that would be good service under s.356 of the Companies Ordinance. If the Company had complied with the Companies Ordinance requirement to keep up the registered office address, the Company would have notice of the present proceedings. Accordingly, insofar as it has changed its registered office but without notifying any changes by way of annual returns, the risk is on the Respondent Company insofar as it has decided to move its registered office without notifying the Companies Register. I should also note that the Applicant's solicitors have made efforts to trace the directors and the shareholders of the Respondent Company but they could not be located, because the addresses set out in the last annual returns in 1996 are no longer valid because they have already moved away from those addresses.

4. Turning then to the substance of the application, there are two matters. The first is whether the Applicant could be regarded as a "person aggrieved" for the purposes of s.48(1) which gives a general discretion to the Court to expunge a trademark if it is wrongly remaining on the register. In my view, it is clear that the Applicant would be a person aggrieved if the trademark is abandoned. That is clear from the case of Pink v. Sharwood [1913] 30 R.P.C. 725 at 740 which has been quoted in the more recent case of Image v. Eastman [1989] 1 Fleet Street Reports at p.357. So the true question is whether the trademark has been abandoned by the Respondent Company.

5. The issue of abandonment, it is clear, is independent of s.37 of the Trademarks Ordinance see: Second Sight v. Novell [1995] R.P.C. 423-437. The trademark here was registered in 1979. The evidence shows that it has not been used for apparently a substantial period of time. Evidence filed in the present motion shows that 66 retailers in the electrical appliances trade were interviewed. Of these 66 retailers, there was only one who has less than 5 years experience, 43 had 5 years experience, 12 had 7 years experience and 9 had more than 10 years experience in the trade.

6. The brand of "樂華" other than the brand used by the Applicant was known only to one of these retailers. I have looked at the questionnaire which has been filled in relation to this particular retailer, and it is clear that he is not too certain that the "樂華牌" appliance that he was referring to was the Applicant's or someone else's because at question no.4, he was asked "Are you aware of any product bearing the mark "樂華牌" in Hong Kong?" He was shown the picture of the Applicant's products and he said he was aware. And then he was asked (since they were by the Applicant company), whether there were any other goods that he had come across bearing that mark apart from those distributed by Greatwall Electronic Retail Ltd., (namely the Applicant's goods) and the answer he gave was: "I don't know but it seems that it was locally made". This was a reference that he repeated in question no.8 which was: "Do you know which company owns that brand or manufactured this product?" The answer he gave was: "I don't know, it seems a local company."

7. So it would appear from the bulk of the evidence at least that the Respondent's brand has not been used in connection with electrical appliances for a considerable period of time.

8. As far as the Respondent Company is concerned, i.e. the proprietor of the Registered Trademark, it filed its last annual return some 3 years ago. Its company secretary resigned 2 1/2 years ago for non-payment of fees. There is no business registration, there is no telephone listing, and neither director/shareholder could be located at the addresses shown in the annual returns.

9. From that, I would conclude that this company has not been in business for some time and therefore has not been using this trademark in connection with its goods for some time. As I said earlier, even if it had been in business say 3 years ago, the evidence still points to the fact that it has not been using the trademark in connection with electrical appliances for quite some time.

10. In all the circumstances, I am satisfied that I can give the order sought in paragraph no.1 of the Notice of Originating Motion.

Representation:

Ms. Lan Suet Ying, Gekko instructed by M/s Ruby Yeung & Co. for Applicant

Respondent absent

Registrar of Trade Marks not attending