E.I. Du Pont De Nemours and Co v. The Director of Intellectual Property

HCAL000132/2003

HCAL 107 & 132/2003

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

CONSTITUTIONAL AND ADMINISTRATIVE LAW LIST

NOS.107 & 132 OF 2003

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Coram: Hon Hartmann J in Court

Dates of Hearing: 5, 6 and 2 June 2004

Date of Handing Down Judgment: 17 June 2004

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J U D G M E N T

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Introduction

1.These two consolidated applications for judicial review arise out of proceedings in opposition to an application for the registration of a trade mark. The proceedings have been conducted in terms of the Trade Mark Ordinance, Cap.43 ('the Ordinance') and the Trade Mark Rules ('the Rules') made thereunder. The Ordinance and the Rules have now been replaced by a new statute, the Trade Mark Ordinance, Cap.559, which came into effect in April 2003. The consolidated applications are therefore to be determined under the old statutory regime and not the new.

2.What I will call the opposition proceedings arose out of an application by S.T. Dupont, a societe anonyme registered under and according to the laws of France, to register its trade mark 'S.T. Dupont' in respect of 'clothing for men' in class 25. In January 1997, after S.T. Dupont had advertised its application for registration of its trade mark in terms of s.14 of the Ordinance, the applicant filed a notice of opposition to that application. Opposition proceedings ensued. The applicant's two consolidated applications seek orders of certiorari to bring up and quash certain decisions of the respondent ('the Registrar') made in the course of those proceedings.

3.In the first application (HCAL 107), the decision challenged by the applicant is a decision of the Registrar dated 25 July 2003 declining to grant leave to the applicant to amend its grounds of opposition.

4.In the second application (HCAL 132), the decisions challenged are decisions of the Registrar dated 16 April and 26 September 2003 declining to receive into evidence the statutory declarations of certain witnesses.

5.The decisions which are challenged in these proceedings are interlocutory decisions made by the Registrar. In so far as those decisions were made by the Registrar in the exercise of his discretion, it is axiomatic that this court, in the exercise of its supervisory jurisdiction, may not usurp that discretion. Accordingly, whether this court may have come to a different determination on the merits is not to the point. This court may only move to quash the decisions challenged if the applicant is able to demonstrate that, in making those decisions, the Registrar in some way acted outside of his powers.

The parties in the opposition proceedings

6.The applicant in the opposition proceedings is S.T. Dupont. Its application to register its trade mark in respect of men's clothing was made on 20 June 1994. S.T. Dupont is a corporation which boasts an international reputation. The company was founded in France in 1872 by Simon Tissot-Dupont. It was originally a business specialising in the production of luxury leather goods. It later progressed to the manufacture of cigarette lighters. For many years it was best known for its luxury leather items, lighters, pens and the like. However in or about 1989, with the expansion of the international fashion trade, S.T. Dupont expanded its business into the field of men's fashion. Since about that time it has designed, made up and marketed a broad range of men's clothing. S.T. Dupont aims to meet demand at the higher end of the market.

7.When S.T. Dupont expanded into the field of men's fashion, it did so internationally. The evidence shows that, prior to its application made on 20 June 1994 for registration of its trade mark in Hong Kong, the applicant had already registered its mark in respect of men's clothing in a number of countries including its home country of France.

8.The applicant in these proceedings - the opponent in the opposition proceedings - is a corporation registered in Delaware in the United States of America. It was established in 1802 by a French immigrant, E.I. du Pont, a chemist. The applicant, which traces its history back over 200 years, is also a corporation of international reputation, much of it founded on its invention of synthetic fibres. One example is nylon, invented in 1938. A more recent example is lycra, a fibre which apparently, when woven into fabrics such as cotton or wool, imparts elasticity to those fabrics. Lycra (and similar artificial fabrics manufactured by the applicant) are, I am told, favoured in the design and making of men's fashionwear.

9.The applicant, however, does not itself design and make up men's fashionwear. As I understand it, the applicant enters into agreements internationally allowing its synthetic fibres to be woven into fabrics so that those fabrics can in turn be used in the design and making up of clothing. But, fabric being integral to the fashion industry, the applicant places its trade mark on clothing that is made of fabric containing its synthetic fibres. In the result, the applicant's trade mark will often appear on an item of clothing together with the trade mark of the fashion house which has designed the clothing. The applicant's trade mark is attached to such clothing either by the use of what have been called 'hang tags' or 'swing tickets'.

10.The applicant has been involved in the business of creating synthetic fibres for men's clothing for a good many years and it has over those years registered its 'Du Pont' (or 'DuPont') trade mark in respect of fabric and/or men's clothing in many countries as well as the United States of America.

11.On all the evidence, it is apparent that by June 1994, when S.T. Dupont applied for the registration of its trade mark, although S.T. Dupont could not claim a long tradition in the field of men's clothing, both it and the applicant had nevertheless acquired reputations in that field and had registered their trade marks in a number of jurisdictions outside of Hong Kong in order to protect their reputations.

Commencement of the opposition proceedings

12.It was on 2 January 1997, after S.T. Dupont had advertised its application for registration of its trade mark in terms of s.14 of the Ordinance, that the applicant filed its notice and grounds of opposition.

13.Although the applicant had not itself registered its trade mark in Hong Kong in respect of men's clothing, in its grounds of opposition it emphasised its long-term use of its trade mark in this jurisdiction and elsewhere, confirming that it had registered its trade mark 'world-wide'. The applicant went on to allege that -

" [S.T. Dupont's] trade mark is confusingly similar, both visually and phonetically, to the Opponent's 'Du Pont' trade mark and the goods covered by [S.T. Dupont's] application are goods of the same or similar description as the goods which form part of the Opponent's product range."

14.At that time, the central foundation of the applicant's opposition was therefore a likelihood or risk in the Hong Kong market of deception or confusion. In this regard, s.12(1) of the Ordinance reads :

" It shall not be lawful to register as a trade mark or part of a trade mark any matter the use of which would be likely to deceive or would be disentitled to protection in a court of justice or would be contrary to law or morality, or any scandalous design."

15.S.T. Dupont filed its counter-statement on 6 May 1997, denying that any similarity between its mark and that of the applicant would be likely to deceive. It too emphasised the long-term goodwill resting in its mark :

"The Applicant has used the Applicant's mark in Hong Kong since 1961 in respect of lighters and since 1989 in respect of clothing for men ('the applied for goods'). Substantial advertising expenses have been incurred for the promotion of the Applicant's mark worldwide including Hong Kong. Further, the Applicant's goods, including the applied for goods, under the Applicant's mark have been widely and substantially sold worldwide and in Hong Kong. As a result, substantial goodwill and reputation has been established in the Applicant's mark ..."

16.Negotiations between the parties slowed proceedings. However, between August 2000 and May 2001, in accordance with r.25 of the Rules, the applicant filed evidence in support of its opposition, that evidence being in the form of statutory declarations. In this regard, r.25 reads :

" Within 6 months from the date of receipt of the duplicate the opponent shall file such evidence by way of statutory declaration as he may desire to adduce in support of his opposition and shall send to the applicant a copy of that evidence."

17.S.T. Dupont responded by filing its evidence in February 2002 in terms of r.26 of the Rules. R.26 directs that if an opponent files evidence then -

" ... the applicant shall, within 6 months from the date of his receipt of the copy of the opponent's evidence provided for in rule 25, file such evidence by way of statutory declaration as he may desire to adduce in support of his application and shall send to the opponent a copy of that evidence."

The Registrar's refusal to allow an amendment pursuant to s.23

18.On 21 May 2003, some six years after it had filed its grounds of opposition, the applicant sought to amend those grounds. It did so on two bases. The first ground is not relevant to these proceedings.

19.In the second ground, however, the applicant sought to oppose S.T. Dupont's application on the basis that, although it had not yet registered its mark in Hong Kong, having regard to its existing world wide trade mark registrations (many of which were of considerable antiquity), if S.T. Dupont's trade mark was registered in Hong Kong, it would offend s.23(1) of the Ordinance.

20.S.23 is a legislative provision peculiar to Hong Kong. S.23(1) reads as follows :

" ... the Registrar may refuse to register any trade mark relating to goods in respect of any goods or description of goods if it is proved to his satisfaction by the person opposing the application for registration that such mark is identical with or nearly resembles a trade mark which is already registered in respect of -

(a) the same good;

(b) the same description of goods; or

(c) services or a description of services which are associated with those goods or goods of that description,

in a country or place from which such goods originate."

21.S.23 of the Ordinance has not been carried over, either in whole or in substance, into the new legislation. Accordingly, while it still governs applications made before the change in the law, it will soon be a matter of historical interest only.

22.The true meaning and intent of s.23(1) is not immediately clear. But, having said that, a body of local jurisprudence has emerged which, as I see it, has settled its meaning and intent. That jurisprudence is to the effect that, within the context of the statutory scheme as a whole, s.23 is intended to prevent the mischief of persons seeking out reputations that arose outside of Hong Kong but are recognised (or possibly about to be recognized) in Hong Kong and 'hi-jacking' those reputations by having the marks (which, of course, symbolise those reputations) registered in Hong Kong before the owners of those foreign marks can themselves have them registered here.

23.The jurisprudence which establishes this interpretation of the meaning of the section springs from a 1983 judgment of this court, that of Hong Kong Caterers Ltd v. Maxim's Ltd [1983] HKLR 287. In the Maxim's judgment, which came before the Court of First Instance on appeal from a decision of the Registrar, Hunter J (as he then was), a judge of considerable repute, described the purpose of s.23 by saying :

" For reasons which I shall develop hereafter, I think that s.23 enables the registered proprietor of a foreign mark to rely upon his registration and the inference of user arising therefrom, without specific proof of user even abroad. The section is a clear indication of legislative disapproval of the piracy of foreign marks. A mark is only a manifestation of goodwill. The section can therefore I think legitimately be regarded by the court as an encouragement to the protection of foreign goodwill or at least as a restraint upon the raising of technical objections to its protection." [my emphasis]

In this regard, Hunter J supported the findings of the Registrar :

" In the Assistant Registrar's view the intention of this section is to 'protect marks registered in their country of origin from being copied or imitated in Hong Kong'. A similar view was expressed in the 1911 edition of Wilkinson on Trade Marks ... The section can be paraphrased as: 'the Registrar may refuse to register a copied mark'. This is a valuable provision. It enables the Registrar to deal directly with a copy, because it is a copy."

24.Hunter J's interpretation, therefore, which I accept as being correct, was that s.23 was there to prevent the form of piracy or copying which I have attempted to describe in paragraph 22 of this judgment. As Hunter J expressed it : "The section can be paraphrased as : 'the Registrar may refuse to register a copied mark.' "

25.A mark, of course, is a manifestation of goodwill or reputation and accordingly, in permitting the Registrar to refuse to register a trade mark identical with or nearly resembling a trade mark already registered overseas, the Registrar is given the power, in terms of s.23(1) to protect the goodwill or reputation integral to that overseas registration.

26.Hunter J's interpretation of the meaning and intent of s.23, and its place in the scheme of the Ordinance, was cited in a series of later decisions by Registrars. For example, in a decision dated 3 September 1996 in the matter of an application for registration of the trade mark 'Stride' (application no.3192/86), the Registrar said the following :

" The Maxim's case establishes that section 23 of the Ordinance is basically a section protecting an overseas opponent from piracy of his registered mark. Hunter J said in the Maxim's case that the section can be paraphrased to read that the Registrar may refuse to register a copied mark. The Registrar's power to refuse registration is discretionary. Whether or not an opponent mark has been copied is therefore a crucial issue, a practical question to be decided in determining the exercise of the discretion under the section."

27.I return now to the present proceedings to record that, on 16 June 2003, adhering to the ratio of the Maxim's judgment, the Registrar made a preliminary decision (essentially a provisional determination) refusing to allow what I will call the 's.23' amendment. In this regard, the Registrar said the following :

" Section 23 is designed to prevent the registration in Hong Kong of a copy of a mark registered overseas. The applicant's mark is not copied from the opponent's mark."

28.It is, of course, common cause that there has been no copying of any kind in the present case. Both S.T. Dupont and the applicant have acquired their international reputations legitimately and have had their marks registered in various countries on the strength of those reputations.

29.On 25 July 2003, the Registrar made his final decision in respect of the application to amend, refusing that application and awarding costs to S.T. Dupont.

30.In making the final decision, the Registrar did not refer to his preliminary decision founded on the intent and purpose of s.23 of the Ordinance. It is accepted, however, that his final decision incorporated the reasons contained in his preliminary decision of 16 June 2003. It is that decision of the Registrar, the decision given on 16 June 2003, that the applicant (in terms of HCAL 107) has sought to have quashed as being wrong in law.

31.Mr Andrew Liao SC, leading counsel for the applicant, submitted that, on an unvarnished reading of the section, the Registrar is permitted to refuse to register any mark - whether copied or not - which happens to be identical with or 'nearly resembles' a foreign registered mark. Copying (or the lack of it) is merely one of the factors to be taken into account by the Registrar in the exercise of the discretion which he exercises under the section. In the present case, said Mr Liao, it is asserted that the trade mark of S.T. Dupont nearly resembles the applicant's mark. It is not disputed that the applicant's mark has been registered in a number of foreign jurisdictions. That being the case, the section comes into operation and the Registrar was wrong in law to hold that, absent an assertion of copying, the section was not applicable.

32.Mr Liao expanded on this argument by saying that, while the weight of authority certainly makes it clear that the principal or primary purpose of s.23 is to prevent an applicant from registering a copied mark, even absent an assertion of copying, the applicant was entitled to seek the protection of s.23(1) in order to protect its 'foreign goodwill'. In this regard, Mr Liao laid emphasis on the observations of Hunter J to which I have referred in paragraph 23 of this judgment :

"A mark is only a manifestation of goodwill. The section can therefore I think legitimately be regarded by the court as an encouragement to the protection of foreign goodwill or at least as a restraint upon the raising of technical objections to its protection."

33.Mr Liao put it this way. In order to substantiate an opposition under s.12(1) of the Ordinance (cited in paragraph 14 supra) the applicant would have to establish a reputation in Hong Kong before 1989 when S.T. Dupont moved into the field of clothing for men. The applicant would further be required to demonstrate that the use of its mark by S.T. Dupont in respect of men's clothing would be likely to cause confusion in the public arena of the Hong Kong market. But, while s.12(1) looked to the protection of the Hong Kong public, s.23 looked instead to the protection of the individual owners of foreign registered marks. Under s.23, he said, the Registrar would be permitted to take account of foreign goodwill which had not spilled over into Hong Kong, assessing the duration and extent of that foreign goodwill.

34.In my judgment, however, Mr Liao submissions do not correctly reflect the meaning and intent of s.23. They are not supported by authority, certainly not by the observations of Hunter J identified by Mr Liao which, in my opinion, must be read as complementing what is said before (and not read in isolation); namely, that s.23 is a clear indication of legislative disapproval of the piracy of foreign marks, the piracy of such marks incorporating, of course, the assumption of any goodwill contained within those marks.

35.Mr Liao submitted that the assertion of copying only goes to the exercise of discretion and not to the operation of the section itself. I am unable to agree. The Maxim's judgment is unambiguous as to the intent of the section itself. The exercise of the Registrar's discretion is not removed from that intent, it is exercised in accordance with it.

36.Mr Liao went on to argue that if copying was required, there had, in fact, been a form of copying by means of the 'unfair' extension of S.T. Dupont's mark from its traditional goods (leather, lighters, pens and the like) into the field of men's clothing, a field in which internationally the applicant has operated for far longer under the banner (and protection) of its own foreign registered marks. I find no substance in this argument. In my judgment, Mr John Yan SC, counsel for S.T. Dupont, was correct when he put the rhetorical question : 'how can it be suggested that S.T. Dupont has pirated or copied the applicant's mark when all it has done is to make use of its own long-established mark on products which are a natural extension of its product range?'

37.In my judgment, the Registrar was correct in law to refuse the applicant's 's.23' application to amend when that application was not in any way based on the assertion of any form of copying of its foreign registered trade mark.

38.But even if I have placed too restrictive an interpretation on s.23, I fail to see how the section can encompass a situation in which both the applicant and the opponent have foreign registered trade marks, those marks reflecting their foreign goodwill, and where both have reputations acquired over a period of years internationally and in Hong Kong. In such circumstances, I fail to see how s.23 can advance matters for either party or how s.23 can permit the Registrar to decide on the registration of a mark in Hong Kong by looking solely to the balance of competing (and entirely legitimate reputations) acquired outside of Hong Kong, even if, as invariably will be the case, one of those reputations boasts a longer history than the other.

39.In summary, I am satisfied that, on the facts as they were known to the Registrar, there was no basis in law for an amendment in terms of s.23 and, whether the Registrar should or should not have expressed himself more broadly, the decision itself remains unimpeachable.

The Registrar's refusal to accept the applicant's further evidence

40.After S.T. Dupont had filed its evidence in the opposition proceedings pursuant to r.26 of the Rules, the applicant sought to file evidence in reply in terms of r.27. In particular, the applicant sought to file the statutory declarations of two persons, Ms Winnie Ho and Ms Deanna Wong. The Registrar declined to accept either declaration into evidence.

41.Thereafter, the applicant sought to have the two declarations, together with a third declaration, that of Mr Wong Ping Fun, placed into evidence in terms of r.28 of the Rules, that rule giving a more general discretion to the Registrar to accept evidence of either an applicant or an opponent. Again, however, in terms of a decision dated 26 September 2003, the Registrar declined to accept the declarations into evidence.

42.It is these two decisions of the Registrar, dated 16 April and 26 September 2003, that the applicant (in terms of HCAL 132) has sought to have quashed as being wrong in law.

A consideration of r.27 and r.28

43.Within six months of an applicant filing its evidence pursuant to r.26 of the Rules (cited in paragraph 17 supra), an opponent is permitted, within limited circumstances, to file evidence in reply. This is pursuant to r.27 which reads :

" (1) Within 6 months from the date of receipt by the opponent of the copy of the applicant's evidence provided for in rule 26 the opponent may file evidence in reply by way of statutory declaration and shall send to the applicant a copy of that evidence.

(2) Evidence in reply shall be confined to matters strictly in reply to the applicant's evidence."

44.In addition to evidence filed pursuant to r.25 (in support of opposition), r.26 (in support of an application) and r.27 (in reply by an opponent), the Rules permit the Registrar, in the general exercise of his discretion, to receive further evidence from either an applicant or an opponent. In this regard, r.28 reads :

" No further evidence shall be filed by either side, but in any proceedings before the Registrar he may at any time, if he thinks fit, give leave to either the applicant or the opponent to file any evidence upon such terms as to costs or otherwise as the Registrar may think fit."

45.In my judgment, r.27, in so far as it restricts an opponent's evidence to 'matters strictly in reply to the applicant's evidence', looks to ensuring that evidence at this stage is restricted to what is necessary to resolve a conflict of fact that has arisen from the applicant's evidence filed under r.26 and thereby seeks to secure finality of the pre-hearing procedures. The rule does not act as an open gateway to allow an opponent to add extra strength to what has already been stated in its evidence filed pursuant to r.25 or to make good what should have been said when that evidence was filed.

46.In an appeal judgment in the case of Ernest Scragg & Sons Limited's Application (1972) RPC 679, in looking to Rule 43 of the Patent's Rule 1958 (which also allows for an opponent's evidence to be filed in reply provided it is confined to 'matters strictly in reply'), Graham J made a number of observations which I believe apply equally to opposition proceedings under the Rules and to the place of r.27 within those proceedings :

" It will be appreciated that in an opposition an opponent has the onus fairly and squarely upon him of making out his case against the application.

...

The general position in regard to onus ... is to be found clearly stated in Halsbury's Laws of England, volume 15, paragraph 495, which reads as follows :

' When the onus of proof on all issues is on one party, that party must ordinarily, when presenting his case, adduce all his evidence, and may not, after the close of his opponent's case, seek to adduce additional evidence to strengthen his own case'.

That seems to me to be a sound principle which applies to oppositions in the Patent Office just as it does to any other case; and there is no doubt that the onus in an opposition is upon the opponent to make out the various grounds upon which, or by reason of which, he says that the application should be refused or amended.

...

To my mind it is quite wrong in these cases that there should be any sort of skirmishing in regard to evidence, and if an opponent has a case he should straight away state what his case is and should put in declarations dealing with any evidence which he thinks may be relevant to that case. The applicant can then deal with the matter in the normal way, and a lot of time is saved, and the Office can get on with deciding the case. If the opponent does not do that and waits until he sees what the applicant says, then obvious difficulties will result and oppositions will inevitably be drawn out and never finished."

47.In a case such as the present one, therefore, it was for the applicant, in opposing S.T. Dupont's application to register its mark, to state its case in full at the outset; that is, pursuant to r.25 of the Rules (cited in paragraph 16 supra), and, in so doing, to ensure that it filed all relevant evidence. If it was to be permitted to file evidence in reply, the Registrar was obliged to ensure not only that it was evidence relevant to the issues in dispute but that it was evidence 'strictly' in reply.

48.While r.28 may give the Registrar a broader discretion, it is a discretion to be exercised in a manner which looks to the general integrity of the process of opposition as laid down by the Rules. It does not operate as a generous 'catch-all' provision to allow in evidence which should properly have been filed earlier in the process or which the party seeking to put it in considers to be of some sort of general benefit to its case : a form of final volley. What must be recognised is that r.28 begins with the phrase : "No further evidence shall be filed by either side ..." The presumption, therefore, is exactly that; namely, that no further evidence shall be filed and that if an application is made pursuant to r.28 to admit evidence it must be sufficiently meritorious to discharge that presumption.

The challenge in respect of r.27

49.On behalf of the applicant, Mr Liao submitted that the Registrar was wrong in law to refuse to accept two statutory declarations into evidence pursuant to r.27, those of Ms Winnie Ho and Ms Deanna Wong.

50.Ms Winnie Ho and Ms Deanna Wong were at the time of making their declarations employees of the applicant's solicitors. They declared (in almost identical terms) that they were instructed to purchase clothing bearing the marks of the applicant and S.T. Dupont in various retail outlets. This, they did, declaring that as 'ordinary consumers' they were and would be confused as to whether the marks and the items to which they were attached 'were connected or originated from the same source'.

51.Those declarations, said Mr Liao, were to counter the evidence of Mr William Christie, the President of S.T. Dupont. In paragraph 51 of his declaration, Mr Christie said the following :

" The applicant's mark enjoys well established reputation and the applicant's goods are only sold through very selective distribution channels and are well-known for their high quality."

He continued :

"... confusion between the applicant's mark and the opponent's mark is unlikely and indeed has never occurred over all these years in the past. The applicant's mark is 'S.T. Dupont'. It is well-known in Hong Kong and all over the world. The representation of the word 'Dupont' in the two marks are quite different. We never use 'DuPont' but 'S.T. Dupont' or 'S.T. DUPONT' while the opponent uses 'DuPont' which is an American way of writing, not possible in French grammar."

52.These assertions by Mr Christie, said Mr Liao, were matters going to the likelihood of confusion and if not met would leave the applicant open to criticism that it had no evidence to counter such assertions : hence the need for the declarations to be filed in reply.

53.As to whether the two declarations should have been filed earlier under r.25, Mr Liao said that until Mr Christie had disclosed all S.T. Dupont's outlets in Hong Kong it was not possible to look to the issue of confusion within particular areas.

54.The declarations of Ms Ho and Ms Wong, as I read them, demonstrate two things only :

(a) that goods bearing the marks of S.T. Dupont and the applicant, while they were not available for purchase in the same shop, were available for purchase in certain specified areas of Hong Kong in the same shopping mall or in different 'internal boutiques' in the same department store, and

(b) that they (that is, Ms Ho and Ms Wong) were confused by the similarity in the marks.

55.In his ruling of 16 April 2003, the Registrar declined to accept the two declarations into evidence as evidence in reply. The Registrar said, that, in so far as the declarations sought to counter Mr Christie's opinion that there was no risk of confusion, Mr Christie's 'opinion' did not constitute evidence and therefore required no rebuttal. The Registrar went on to make two observations :

" Firstly, that the question whether one mark so nearly resembles another as to be likely to deceive is a question for the tribunal and not a matter for a witness. Secondly, if the identically drawn paragraph in these two declarations ... as to their personal confusion purports to represent 'survey evidence' it is inherently unreliable, not representative and not independent. It has no weight."

56.In my judgment, the Registrar's exercise of discretion under r.27 cannot be faulted. I say so for the following reasons :

(i) The bald statements of the declarants that they were confused could not constitute any form of objective 'survey evidence' (which would be admissible), the more so as they were not independent. The statements did not constitute evidence, they constituted naked assertions of opinion and were entirely self-serving. As such, they had no evidential value and were therefore without relevance. I would add that the attempt to equate the assertions of the two declarants with the evidence provided by declarants in the case of Neutrogena Corporation v. Golden Limited and Another [1996] RPC 473 was, in my opinion, misplaced.

(ii) In any event, the assertions as to confusion were not made necessary by S.T. Dupont's evidence filed pursuant to r.26. They were assertions of a general nature which could as easily have been made before the filing of S.T. Dupont's evidence as after.

(iii) As to the evidence that items were purchased from particular locations, as Mr Yan said in the course of his submissions, when S.T. Dupont filed its evidence it never disputed the fact that goods bearing the S.T. Dupont mark and the applicant's mark could be purchased from the same shopping malls or departmental stores although not from the same shops. There was therefore, to this extent, no issue as to geographical location and therefore no need for any evidence in reply.

The challenge in respect of r.28

57.Following the Registrar's refusal to accept the declarations of Ms Winnie Ho and Ms Deanna Wong into evidence in terms of r.27, the applicant sought to have them admitted pursuant to the more general provisions of r.28. In addition, the applicant sought to have the declaration of a Mr Wong Ping Fun admitted into evidence pursuant to the same rule.

58.In his declaration, Mr Wong, a regional director of the applicant, said that from as early as 1988 he had had knowledge of the fact that men's clothing containing the applicant's fabrics, when displayed for sale in Hong Kong outlets, carried the applicant's mark in the form of 'hang tags' or 'swing tickets'. The evidence of Mr Wong was relevant, said Mr Liao, because it went to show the existence of the applicant's reputation (symbolised by its mark) in Hong Kong from as early as 1988; that is, before S.T. Dupont moved into the field of men's clothing.

59.In a ruling dated 26 September 2003 the Registrar refused leave to allow the three statutory declarations into evidence under r.28. In making his ruling, the Registrar said the following in respect of the three declarations :

(a) In respect of Ms Winnie Ho's declaration :

" I am unable to see the relevance of producing a Marks & Spencer shirt and an ST Dupont shirt bought from different shops albeit in the same shopping complex but in different parts of it. There is nothing in this Statutory Declaration which assists the tribunal and leave to adduce it as further evidence is refused. The declarant may be an 'ordinary customer' but, as pointed out in my letter of 16 April 2003 the question of confusion is for the tribunal not a witness and if her views purport to represent part of a survey, it (the survey) is inherently unreliable, not representative and not independent."

(b) In respect of Ms Deanna Wong's declaration :

" ... adds nothing to the evidence of Chow Siu Bo who also bought branded garments from Sogo Department Store and ST Dupont garment from a ST Dupont store in the basement of the Sogo Department Store Building. The rest of the Statutory Declaration suffers from the same defects as stated above."

(c) In respect of Mr Wong's declaration :

"Mr Wong says two things in his Statutory Declaration dated 15 November. Firstly, hang-tags containing the house brand Du Pont are issued by the opponent for attachment to finished garments which contain the opponent's fibres. Secondly, since 1988 he has noticed such hang-tags attached to finished garments for sale all over Hong Kong ...

The first point has already been made in far more detail in his Statutory Declaration dated 21 May 2001. It adds nothing. The second point should have been in the Rule 25 evidence." [my emphasis]

60.In respect of the declarations by Ms Ho and Ms Wong, Mr Liao said that, if they did not strictly constitute evidence in reply, they should nevertheless have been allowed into evidence under r.28. They were admissible, they were relevant and could be of assistance to the ultimate decision-maker. That, said Mr Liao, was sufficient. It was not for the Registrar to determine what weight should be given to the evidential value of the two declarations. That was a matter for the ultimate decision-maker. In looking to the issue of evidential weight, the Registrar acted outside of his powers.

61.But, as I have said in respect of these two declarations, the material contained in them as to the issue of confusion did not constitute evidence, it constituted naked assertions of opinion and, as such, had no evidential value. It was therefore of no relevance. It is fundamental in adversarial litigation that material which is not relevant is not admissible.

62.As to the evidence contained in the two declarations concerning the purchase of goods at particular locations, in my opinion the Registrar was entitled to find, without entering into any weighing exercise, that such evidence added nothing and was therefore not relevant.

63.Even if the two declarations could be said to contain some tenuous evidence of value, r.28, on my reading of it, is subject to the general caveat that no further evidence shall be filed by either side unless good cause is shown.

64.The application in respect of Mr Wong's evidence was rejected by the Registrar on the basis that it was evidence that was available to the applicant when it filed its evidence pursuant to r.25 and should therefore have been filed with that evidence. The abiding principle is that evidence must be produced at the outset and I am unable to find any basis for finding that the Registrar in this instance exercised his discretion unlawfully. There was nothing before the Registrar, for example, to suggest that for any pressing reason the evidence had earlier been unavailable or that events late in the day had required its submission when it had not been required before. In my opinion, the Registrar was entitled to view Mr Wong's declaration as an attempt by the applicant to use r.28 as a means by which it could add to or patch up its case. But the rule, as I have said earlier, is not intended to operate as a generous 'catch-all' provision.

Conclusion

65.For the reasons given in the body of this judgment I am satisfied that the consolidated applications for judicial review must be dismissed.

66.As to costs, I see no reason why costs should not follow the event and I will make an order nisi that the applicant should bear the costs of both the respondent and S.T. Dupont, that order to be made final within 21 days unless an application is earlier made to seek an order to different effect.

Representation:

Mr Andrew Liao, SC leading Mr Philips B.F. Wong, instructed by Messrs Sit, Fung, Kwong & Shum, for the Applicant

Mr Albert Xavier and Mr Gregory Payne, SGC of Department of Justice, for the Respondent

Mr John M.Y. Yan, SC leading Mr Colin Shipp, instructed by Messrs Wilkinson & Grist, for S.T. Dupont