Re Yoshida & Co Ltd
Read the full judgment text of HCMP 4779/2003 on BabelCite. This High Court CFI judgment was delivered on 8 December 2003.
1. By a Notice of Motion ("the Notice") dated 30 October 2003 the Applicant sought a Declaration, pursuant to Trade Marks Ordinance (Cap. 559) ("TMO") s. 53, that Hong Kong Trade Mark Registration No. B3598 of 1995 of "Porter & Device" in Class 18 ("the Trade Mark") was invalid. The Notice was served on the Registrar of Trade Marks ("the Registrar") and on:-
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HCMP004779/2003 HCMP 4779/2003 IN THE HIGH COURT OF THE HONG KONG SPECIAL ADMINISTRATIVE REGION COURT OF FIRST INSTANCE MISCELLANEOUS PROCEEDINGS NO. 4779 OF 2003 ____________
____________ Coram: Hon Reyes J in Chambers Date of Hearing: 1 December 2003 Date of Decision: 8 December 2003 _______________ D E C I S I O N _______________ Background 1.By a Notice of Motion ("the Notice") dated 30 October 2003 the Applicant sought a Declaration, pursuant to Trade Marks Ordinance (Cap. 559) ("TMO") s. 53, that Hong Kong Trade Mark Registration No. B3598 of 1995 of "Porter & Device" in Class 18 ("the Trade Mark") was invalid. The Notice was served on the Registrar of Trade Marks ("the Registrar") and on:-
2.The Applicant claims to be the original proprietor of the Trade Mark. It says that the Trade Mark was misappropriated and wrongly registered by Gallant, an associate company of the Respondent. The Applicant contends that Gallant wrongfully assigned Gallant's purported rights in the Trade Mark to the Respondent by a Deed of Assignment ("the Assignment") dated 6 February 2002. The Applicant says that the Respondent obtained no rights to the Trade Mark by the Assignment. The Applicant served the Notice on the Solicitors because the particulars of the Trade Mark in the Trade Mark Registry ("the Registry") give the Solicitors's name and address as the Respondent's "address for service". 3.There are 2 other current High Court Actions ("the Actions") in respect of the Trade Mark. 4.By a Writ issued on 21 May 2003 in High Court Action No. 1815 of 2003, the Applicant as Plaintiff alleges that the Respondent:-
The Applicant also claims that the Respondent has unlawfully interfered with the contractual relationship between the Plaintiff and its Hong Kong distributor, Top & Top Limited ("Top & Top"). The Applicant seeks injunctions, an order for delivery up, assignment of all relevant Trade Mark registrations and applications, and damages. 5.By a Writ issued on 25 July 2003 in High Court Action No. 2762 of 2003 Sunlit Porter Holding Company Limited ("Sunlit") sues Top & Top and the Respondent. Sunlit claims that the Respondent gave it the exclusive license to use the Trade Mark in Hong Kong. Sunlit says that, in breach of contract, the Respondent has allowed Top & Top to sell products bearing the Trade Mark in Hong Kong. Sunlit seeks an injunction, an order for delivery up, and damages. 6.By letter dated 10 November 2003 to Messrs Wilkinson & Grist (the Applicants' Solicitors), the Solicitors challenged service of the Notice on them. The Solicitors say that they are only the Respondent's agents for service in connection with applications under the TMO and its ancillary Trade Mark Rules ("TMR") brought before the Registrar. Since the Notice concerns proceedings in the High Court, the Applicant must follow the procedures in the High Court Rules. Thus, the Respondent being outside Hong Kong, the Applicant must apply to the High Court under RHC Order 11 for leave to serve outside of the jurisdiction. Service of the Notice on the Solicitors cannot be deemed valid service on the Respondent. Neither the TMO nor the TMR authorises such service of the Notice. Discussion 7.Mr Tsang (appearing for the Applicant) submitted that the Notice was validly served on the Solicitors by reason of TMO ss. 53(1) and 77 and TMR rr. 46 and 112. Those provisions are as follows:-
8.Mr Tsang further said that the Applicants proceeded by motion as provided by RHC Order 100, Rule 2(2). That reads:-
The "said Ordinance" mentioned in Order 100, Rule 2(2) is not the TMO, but the TMO's repealed predecessor, the Trade Marks Ordinance (Cap. 43) ("the Old TMO"). Since enactment of the TMO, RHC Order 100 which contains rules for applications under the Old TMO has not been revised. This means that it is currently unclear to what extent (if at all) the rules in Order 100 remain applicable by analogy or otherwise to proceedings brought before the High Court pursuant to the TMO. 9.None of the provisions cited by Mr Tsang specifically empower a person applying for a declaration of invalidity to serve a Notice on the Hong Kong agents of a trade mark owner situate outside Hong Kong. 10.TMO s. 53 gives a person the option of seeking a declaration of invalidity from the Registrar or the Court. The section says nothing about the procedure to be employed before either forum. 11.TMO s. 77 restricts the Applicant's option to seek a declaration of invalidity before the Registrar. Because the Actions are pending before the Court and concern the Trade Mark, the Applicant must make his application to the Court. At first impression, if a person seeks relief from the High Court, he should follow the procedures set out in the High Court Rules when applying for such relief, in the absence of statutory provision permitting deviation from the High Court Rules. Nothing in TMO s. 77 authorises a deviation from the High Court Rules. 12.On its face TMR r. 46 appears to require use ("shall be filed") of a "specified form" for an application under TMO s. 53. That is not in fact the form used by the Applicant which has taken out the Notice on the strength of RHC Order 100, Rule 2(2) applied by analogy to the TMO. TMR r. 46 says nothing about service. 13.The expression "specified form" in TMR r. 46 is defined in TMR r. 2(1) as follows:-
14.TMO s. 74 states:-
IGCO s. 34 concerns the laying of subsidiary legislation before LegCo for vetting. 15.It is helpful also to look at TMR r. 2(2):-
16.What emerges from TMO s. 74 and TMR r. 2 read together, is that the forms specified in the TMR relate to proceedings under the TMO before the Registrar and not the High Court. So, for example, when TMR r. 46 refers to the filing of Form T6, it should be taken as a reference to the filing of Form T6 in the Registry for a proceeding before the Registrar. Indeed, it seems from TMO s. 74 and TMR r. 2 that TMR Part 16 on the filing and service of documents relates solely to the filing and service of documents in connection with matters or proceedings before the Registrar. The procedures in TMR Part 16 do not replace the procedures set out in the High Court Rules, insofar as applications authorised by the TMO to be brought before the High Court are concerned. 17.By way of a check on the foregoing conclusion, I have taken the opportunity to examine Form T6. Mr Tsang referred me to the Intellectual Property Department's website (www.info.gov.hk/ipd), from which I downloaded a copy of Form T6. It is evident from the form and (in particular) the Notes thereto, that Form T6 was solely intended to apply to proceedings before the Registrar. For example, at the bottom of the Notes is the following statement:-
Such statement would be both inapposite and surprising in documents intended to be filed in the High Court Registry for use in High Court proceedings. 18.TMR r. 112 permits service of a document by certain modes (for example, post) on a trade mark's owner's "address for service" filed in the Registry, but only where such document is required or authorised to be sent to the trade mark owner under the TMO or TMR. It follows that, if Mr Tsang is to rely on TMR r. 112, it is necessary for him to point to some other provision, either in the TMO or TMR, requiring or authorising the sending of the Notice to the trade mark owner. He has not been able to point me to any other such provision. 19.There is the added difficulty that TMR r. 112 is to be found in TMR Part 16, which I have concluded relates solely to matters or proceedings before the Registrar. 20.Mr Shipp (appearing for the Solicitors) drew my attention to TMR r. 105. That provides as follows:-
21.Mr Tsang disavowed reliance on TMR r. 105. This is not surprising. As Mr Shipp pointed out, TMR r. 105 would not assist Mr Tsang, as TMR r. 105(5) makes it clear that a trade mark owner's "address for service" filed with the Registry relates only to service in connection with proceedings before the Registrar. What TMR r. 105, read in conjunction with TMO s. 74 and TMR r. 2, makes plain is that the Solicitors' address was not a proper one for service for the purpose of High Court proceedings under the Notice. 22.There is no provision in the TMO or the TMR supplanting the application of the High Court Rules to the Applicant's Notice. No High Court Rule authorises service on the Solicitors as agent for the Respondent in the circumstances of the present case. Service on the Solicitors was therefore not valid service on the Respondent. 23.There was some debate whether the Applicant was right to commence High Court proceedings by the Notice. Strictly, RHC Order 100, Rule 2(2) is not applicable, since the latter expressly concerns the old TMO. I reach no firm conclusion on whether it was right to apply Order 100, Rule 2(2) to the present case by analogy. 24.There is no doubt that by TMO s. 77 the Applicant had to seek a declaration of invalidity in the High Court. The question is whether TMO s. 77(1) requires the Applicant to bring its application within one or other or both of the Actions, rather than commence fresh proceedings by the Notice. The former course might avoid a multiplicity of proceedings on the Trade Mark and obviate the risk of different findings on the true ownership of the Trade Mark by different courts. 25.In my view, a number of procedural courses may be open to the Applicant. Having reflected on the matter, I think that it would be wrong to give directions as to how the Applicant should now proceed. I do not wish to pre-empt the Applicant's options. For the moment, I am merely called upon to decide whether service of the Notice on the Solicitors was valid service on the Respondent. I have decided that it was not. That is all I have decided. The Notice remains extant and it is for the Applicant to determine how it wishes to proceed, whether by seeking leave to service the Notice outside of the jurisdiction or by taking some other course. Conclusion 26.The service on the Solicitors was not valid service of the Notice on the Respondent. Insofar as necessary, in the exercise of the Court's inherent jurisdiction to control its own procedures, I set aside the service on the Solicitors. I make an Order Nisi that the Solicitors are to have their costs of the hearing before me, such costs to be taxed if not agreed.
Representation: Mr Thomas Tsang, of Messrs Wilkinson & Grist, for the Applicant The Respondent, absent Mr Colin Shipp, instructed by Messrs Cheung & Choy, for Messrs Cheung & Choy 1 The TMO came into operation on 4 April 2003. Nonetheless, TMO Schedule 5 s. 17(2), which is referred to in the heading of the Notice, provides: "For the purposes of proceedings under section 53 of this Ordinance (declaration of invalidity of registration), as it applies in relation to an existing registered mark, this ordinance shall be deemed to have been in force at all material times." 2 TMR Part 16 (entitled "Filing and Service of Documents") comprises rr. 108-112. Remarks: | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
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