Re Park Drive

HCMP000288/1987

1987 M.P. No. 288

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

MISCELLANEOUS PROCEEDINGS

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Coram: Hon. Liu, J. in Court

Dates of hearing: 14, 16 July 1988

Date of ruling: 16 July 1988

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RULING

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1. The Respondent has just been turned down on its first application. A different application is now being made.

2. The Court is invited to allow until the end of vacation for the Respondent to file a Points of Defence. Mr Rogers is right in drawing the Court's attention to the fundamentals i.e. it is for the Respondent to satisfy me that this is a proper application to make and that the order sought is a proper one to be granted.

3. The Points of Claim bears the date of the 22nd April 1988. It was served on or about that date. The Respondent had 28 days thereafter to file its Points of Defence.

4. Mr Liao, Counsel for the Respondent suggests that the Respondent has not been sitting idly but has proposed to amend its Grounds of Opposition to Reemtsma's application to register "PARK AVENUE". It has been inviting Reemtsma to accept certain proposals made in an open letter.

5. Amendments are being sought in a different set of proceedings whereby Reemtsma applies to register "PARK AVENUE & DEVICE". This motion prays for the Respondent's registered mark "PARK DRIVE" to be expunged. The proposed amendments, when effected, are said to render the instant motion wholly otiose. Substantive defences to the Points of Claim in this motion, if available, should have been set out in a Points of Defence. Pleadings were ordered. Oversight has not been suggested.

6. Mr Rogers complains that the Respondent is very much out of time and that it has been granted no less than two extentions, none of which was taken advantage of. Mr Liao's mitigation is that delay is not inordinate. Why should there be further delay at all with two extensions? I have not been assisted as to the reasons, if any, for such delay.

7. Mr Liao has made certain suggestions of possible defences, but these suggestions have yet to be verified by affidavit. I am told that those instructing the Respondent's solicitors are now out of town and that with the Respondent being an overseas organisation, instructions are not readily obtainable. As to why instructions have not been obtained earlier, I am left completely in the dark. Counsel is certainly not proceeding on the basis of an inadvertence.

8. Counsel for the Respondent has been frank and conceded that he can only speculate as to what possible matters could be canvassed in the intended Points of Defence. He has no instructions to enlighten the Court what those matters are and what lines of defence would ultimately be assumed in opposition to Reemtsma's instant motion. Mr Rogers reminds the Court that these proceedings have been pending for a considerable time.

9. For all these reasons, it cannot be said that a proper case for indulgence has been made out. I would not be, in the circumstances, prepared to grant indulgence to the Respondent. The application for extension of time to file a Points of Defence until the end of the vacation or beyond the time prescribed is therefore refused.

Representation:

Mr A. Rogers Q.C. and Mr Allan Poulter instructed by M/s. Fairbairn Catley Low & Wong for the Applicant.

Mr A. Liao and Mr Poon Shiu Chor instructed by M/s. Johnson, Stokes & Master for the Respondent.

1987 M.P. No. 288

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

MISCELLANEOUS PROCEEDINGS

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Coram: Hon. Liu, J. in Court

Dates of hearing: 14, 16 July 1988

Date of ruling: 16 July 1988

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RULING

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I ruled on Mr Liao's application to exclude paragraphs 3 and 5 of Mr Eccles' affidavit filed herein on the 13th July. I said in due course I would reduce it into writing with full reasons, which I now do.

To me, the matter seems crystal clear. I troubled Mr Rogers, Counsel for the Applicant no further. What was being contested is whether the applicant in the instant motion can rely on those two paragraphs.

In Application No. 5607 of 1986, Reemtsma Cigarettenfabriken GmbH (hereinafter called "Reemtsma") applies in Hong Kong for registration of its trade mark "PARK AVENUE 6 DEVICE" (hereinafter referred to as "PARK AVENUE") in Class 34. Philip Morris Incorporated, the Respondent in this motion, opposes Reemtsma's application to register "PARK AVENUE". At the inception, the Respondent relied, inter alia, on one of its own registered trade marks "PARK DRIVE".

The Respondent has since intimated that it would withdraw a ground of opposition based on "PARK DRIVE" in its resistence to Reemtsma's application to register "PARK AVENUE". The Respondent has further undertaken "(without prejudice to any other basis of claim (the Respondent) may have against (Reemtsma) in respect of (its) use of or application to register the Trade Mark "PARK AVENUE'") not to base any such claim upon the existence, or any alleged infingement, of ("PARK DRIVE")".

The intimation so to amend has been met with a neutral reply from Reemtsma in the sense that Reemtsma has neither consented to, nor opposed it. A hearing date has been set by the Registrar for the 28th July 1988 as regards the Respondent's proposed amendments to its Grounds of Opposition as the Opponent in Reemtsma's application to register "PARK AVENUE".

By this Originating Motion, Reemtsma applies for "PARK DRIVE" to be expunged from the Rigister of Trade Marks. Directions have been given for pleadings, but the instant motion is sought to be determined wholly on affidavit evidence.

Mr Liao, counsel for the Respondent, has invited this Court to examine paragraph 6 of the Points of Claim with care and circumspection.

Paragraph 6 reads :

"6. By reason of the presence upon the Register of Trade Marks of the said Registration No. 160 of 1931 amongst other grounds the Respondent has opposed the Applicant's application for its Trade Mark "PARK AVENUE" & device. Further, the Applicant's trade in goods in particular cigarettes marked with its aforesaid Trade Mark is likely to be hampered by the existence of the registration sought to be removed and the Applicant is being exposed to the risk of an allegation of infringement of the Respondent's Trade Nark registration in suit. "

For the purposes of the instant motion, paragrpah 6 of Reemtsma's Points of Claim raises, so Counsel for the Respondent submits, merely two topics : first, the Respondent as the Opponent in Reemtsma's application to register "PARK AVENUE" has opposed it on account of "PARK DRIVE". Secondly, in that application to register "PARK AVENUE", Reemtsma entertains fear of possible risk of being accused of infringing "PARK DRIVE". Mr Liao argues that the proposed amendments sought in Reemtsma's application to register "PARK AVENUE" would have the effect of removing both these topics from further consideration under the Points of Claim filed in the instant motion for the removal of "PARK DRIVE" from the Register. Mr Liao, therefore, concludes that paragraphs 3 and 5 of Mr Eccles' said affidavit are part of an attempt to introduce fresh grounds outside paragraph 6 of the Points of Claim.

Paragraphs 3 and 5 in Mr Eccles' said affidavit are set out below :

"3. Should the Registrar permit amendment of the Notice of Opposition in the manner sought by the Respondent herein, the Applicant herein still considers that it is a person aggrieved by the continuance of the registration in suit upon the Register. In particular the Applicant wishes to maintain the fullest ability to use its Trade Mark "PARK AVENUE" and the component words in any manner it may seem fit and to protect its Trade Mark from the use by others of similar marks. To this end it will be noted that the allegations in particular in paragraphs 1, 2, 7 and 8 of the Grounds of Opposition were made and the validity of them remains extant notwithstanding the undertakings offered by the Respondent. "

"5. Should the Registrar of Trade Marks permit the amendment of the Grounds of Opposition as sought by the Respondent herein it is the Applicant's intention to seek amendment of the Points of Claim on the following lines :-Paragraph 6 of the Points of Claim :- "By reason of the presence upon the Register of Trade Marks of the said Registration No. 160 of 1931 amongst other grounds the Respondent launched opposition to the Applicant's application for its Trade Mark "PARK AVENUE" and device. Further, the Applicant's trade in goods in particular cigarettes marked with its aforesaid Trade Mark is likely to be hampered by the existence of the registration sought to be removed and, further, the Applicant is desirous of preventing use of words which may be or may be said to be confusingly simialr with the Applicant's Trade Mark "PARK AVENUE" and the component parts thereof as they may legitimately be used by the Applican

I take the view that paragraph 6 of the Points of Claim raises not just two limbs. A fair reading of paragraph 6 shows that three contentions are convassed. I need not repeat contentions 1st and the last, but the 2nd contention is obviously that the existing registration of "PARK DRIVE" would hamper Reemtsma's trade in goods marked with "PARK AVENUE".

Insofar as Reemtsma seeks to rely on the Respondent's present unamended opposition based on "PARK DRIVE" in the other set of proceedings in which Reemtsma applies to register "PARK AVENUE", the 2nd contention is a statement of Reemtsma's future intention to take certain stance in response to the Respondent's proposed amendments. Reemtsma is free to demonstrate that the Respondent's proposed amendments in its capacity of an Opponent to Reemtsma's application to register "PARK AVENUE" would be counter-balanced by, inter alia, its own proposed corresponding amendments; hence Reemtsma's locus standi as an aggrieved party would not be, in any way, prejudiced.

Further, the essence of the 2nd contention in paragraph 6 of Reemtsma's Points of Claim is that Reemtsma's trade in goods marked "PARK AVENUE" is likely to be hampered by the current registration of "PARK DRIVE". Some of the adverse consequences legitimately flowing from the core complaint in this 2nd contention i.e. from the existence of "PARK DRIVE" in the Register are or may be that Reemtsma "cannot maintain the fullest ability to" act in terms of paragraphs 3 and 5 of Mr Eccles' said affidavit : Reemtsma "cannot maintain (its) fullest ability to use 'PARK AVENUE' and the component words in any manner it may seem fit"; Reemtsma "cannot maintain (its) fullest ability to protect its Trade Mark (and component parts) from the use by others of similar marks". Put another way : the existence of the registration of "PARK DRIVE' in the Register would or may give rise to these consequences which in turn would of may hamper Reemtsma's trade in goods marked with "PARK AVENUE". Thus, these consequences are said to affect, limit or dilute or to be capable of affecting, limiting or diluting, Reemtsma's said trade in goods. Reemtsma's motion came on for hearing before me on affidavit evidence, and no notice was given for cross-examination. Matters raised in Mr Eccles' said affidavit fall within the ambit of and are supporting evidence for the assertion made in the 2nd contention in paragraph 6 of the Points of Claim. They can be read and relied upon by Mi Rogers.

Lastly, the 2nd contention in paragraph 6 of Reemtsma's Points of Claim is couched in very broad terms. The propriety of allowing "PARK DRIVE" to remain in the Register is being challenged. Lord Pearce observed in The Daiguiri Rum Trade Mark, [1969] RPC 600 at p. 615, lines 19-21 : "It is ...... a great advantage to a trader to have his mark registered under the Acts. That advantage to him is to some extent a corresponding disadvantage to his rivals". As it stands, paragraph 6 is wide enough to include arguments sought to be raised on these passages in Mr Eccles' said affidavit.

Consequently the application of Mr Liao made on behalf of the Respondent cannot be acceded to and the same is denied.

Representation:

Mr A. Rogers Q.C. and Mr Allan Poulter instructed by M/s. Fairbairn Catley Low S Wong for the Applicant.

Mr A. Liao and Mr Poon Shiu Chor instructed by M/s. Johnson, Stokes & Master for the Respondent.