Re Chung Fai Trading Co (A Firm)

HCMP000715/1977

Coram: Briggs, C.J.

Date of Judgment: 19th November, 1977.

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JUDGMENT

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1. This motion was brought under Order 100 rule 2 of the Rules of the Supreme Court, the Order which deals with applications made to the Court under the Trade Marks Ordinance (Cap.43). I dismissed the motion with costs on November 19th, 1977 for the reasons set out below.

2. The motion was an application by Chung Fai Trading Company, a firm, to register a trade mark, I was told that the history of this matter was as follows.

3. In 1965, a Miss Fung Oi, a partner in the applicant firm, together with one Yuen Hoi Shing were partners in a firm which imported perambulators from Japan. The perambulators bore a trade mark with which we are here concerned. That partnership was dissolved in 1974, in which year Miss Fung Oi began to trade as the present applicant in the same business, perambulators bearing the same trade mark being imported from Japan.

4. In July 1976 Yuen Hoi Shing began trading as Chup Shing and also imported perambulators bearing the same trade mark. In November 1976 Yuen Hoi Shing registered the said trade mark in Hong Kong. This was the first registration of that trade mark in Hong Kong. And that trade mark is still registered in the name of Chup Shing. On January 26th, 1977 Yuen Hoi Shing issued a writ against the applicant, and commenced an action for the infringement of the trade mark. On February 23rd, 1977, a defence was filed by the applicant. Infringement was denied and it was pleaded that the applicant had used the trade mark continually from the date of the registration. This defence was amended on November 4th or 5th, 1977, when a plea of honest concurrent use was added together with an averment that the defendant/applicant was entitled to have the trade mark registered in the firm's name by reason of honest concurrent use. Section 22 of the Trade Marks Ordinance being relied upon.

5. The motion is dated. October 26th, 1977. So it will be seen that the defence of honest concurrent use was only raised after this motion had been filed.

6. Section 22 of the Trade Marks Ordinance reads as follows:-

"22. In case of honest concurrent use, or of other special circumstances which in the opinion of the Court or of the Registrar make it proper to do so, the Court or the Registrar may permit the registration of trade marks that are identical or nearly resemble each other in respect of the same goods or description of goods by more than one proprietor subject to such conditions and limitations, if any, as the Court or the Registrar, as the case may be, may think it right to impose."

7. It is contended for the applicant that this section gives jurisdiction to the Court to permit the registration of a trade mark which is identical with a trade mark which is already on the register in certain circumstances. One such circumstance is where the applicant can prove "honest concurrent use" of the trade mark in question. It is further contended that in the present case the applicant must make an application to the Court by reason of section 80(a) of the Trade Marks Ordinance, since in the present case there is an action pending between the parties.

8. Section 80(a) of the Trade Marks Ordinance reads as follows:-

"80. Where under any of the provisions of this Ordinance an applicant has an option to make an application either to the Court or to the Registrar-

9. In my view, section 80 of the Ordinance does not apply in this case. I do not think that section 22 of the Ordinance confers original jurisdction on the Court: nor do I think that that section is one which gives an option to an applicant to make an application either to the Registrar or to the Court. The only sections of the Ordinance to which section 80 applies are sections 37, 48, 49, 57 and 68(2)(a). In all those sections it is clearly stated that an applicant has the option to apply to the Registrar or to apply to the Court. For example, section 37(1) of the Ordinance which deals with the removal of a trade mark from the Register, states that "a registered trade mark may be taken off the register ..... on application by any person aggrieved to the Court, or, at the option of the applicant ..... to the Registrar .....". Similar words are to be found in each of the sections of the Ordinance referred to above. No such words, however, are included in section22. That section is merely a statement of what the Court has power to do by way of relief when a case is properly before it, namely, when the matter comes before the Court on appeal from a decision of the Registrar.

10. This motion is an application to register a trade mark and section 13 of the Ordinance together with the following sections apply. The Ordinance lays down a particular procedure to be followed for applying for a trade mark to be registered. It imposes certain duties on the Registrar when such an application is made. And this part of the Ordinance applies to the registration of all trade marks. The Registrar is the official responsible for registration in the first place and not the Court. The Court only comes into the picture so far as registration is concerned when there is an appeal to the Court from a decision of the Registrar. It is then that section 22 comes into play. The Court may then in a proper case permit the registration of an identical trade mark. Section 22 does not enable an applicant to by-pass the procedure laid down in the Ordinance for the application to register a trade mark and for its registration.

11. My attention was drawn to the case of Electrolux Ltd. v. Electrix Ltd. and Another⁽¹⁾ in which it was suggested that section 12(2) of the Trade Marks Act which is in terms similar to section 22 of the Trade Marks Ordinance indicated an original jurisdiction in the Court in cases of honest concurrent user.

12. One of the points taken in that case was that the Court had no jurisdiction to deal with this point. This was rejected by Lloyd-Jacob, J. who "was of the opinion" that the section did indicate an original jurisdiction in the Court.

13. However, the Judge had this to say at line 49 on page 133 of the report:-

"It is to be noted that the power given to the Court or Registrar is permissive, and it would appear that, for its exercise, the normal pre-requisites for registration must be satisfied. For example by sec. 17, a proprietor of a trade mark who is desirous of registering it must apply to the Registrar in writing in the prescribed manner."

14. Again, on page 134, he has this to say:-

"The sub-section confers upon the Registrar, equally with the Court, the power to avoid the full consequences of Sec.12(1), and some substantive application for registration would plainly be necessary to invoke the Registrar's jurisdiction. Even if this sub-section does not by its terms require an applicant who invokes it to lodge a formal application for registration in the ordinary way as a necessary pre-requisite, I take the view that the Court, in its discretion, should not approve any registration which is not properly defined in a formal application. Not only would this ensure the normal scrutiny of the application by the Registrar and its consideration in the light of the general public interest, but it could also secure for the Court an initial ruling by the Registrar, whose experience in these matters is of such value."

15. This case is reported in several reports for it was carried to the House of Lords. The portions of the judgment by Lloyd-Jacob, J. which I have quoted above came from the report of the case at first instance. There were other points at issue between the parties but this point - that section 12(2) of the Act indicated an original jurisdiction in the Court - was the only part of the judgment which was not appealed.

16. In view of the way in which this point was dealt with I am not persuaded that I should follow the decision of Lloyd-Jacob, J. I do not share the opinion of the Judge in that case and I do not think that section 22 of the Ordinance confers an original jurisdiction on the Court.

17. In effect, section 80 of the Ordinance does not, as I have said above, have reference to section 22. Section 80 has reference to other sections of the Ordinance which refer to matters which arise between parties; for example between a person who is described in the Ordinance as an "aggrieved person" and the registered owner of a trade mark in certain circumstances. The registration of a trade mark is a matter which arises between the applicant for registration and the world at large.

18. Counsel for the applicant told the Court that all he was seeking was directions and suggested that the Court should order this motion to be consolidated with the action for infringement and that it stand as a counterclaim in that action. I declined to give such directions as I was of the opinion that I had no jurisdiction to entertain this motion.

19. The motion was therefore dismissed with costs.

Representation:

Jackson-Lipson, Q.C. & M. Kao (W.K. Poon & Co.) for applicant

Rogers (Lo & Lo) for respondent

Catlay for Registrar of Trade Marks

(1) (1953) 70 R.P.C. 127.