Yoshida & Co Ltd v. Porter International Co Ltd

FAMV No. 18 of 2004

IN THE COURT OF FINAL APPEAL OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

miscellaneous proceedings NO. 18 OF 2004 (civil)

(ON application for leave to APPEAL FROM
CACV No. 399 of 2003)

_______________________

Between:

_______________________

Appeal Committee: Mr Justice Bokhary PJ, Mr Justice Chan PJ and Mr Justice Ribeiro PJ

Date of Hearing and Decision: 13 December 2004

Handing Down Reasons: 17 December 2004

_______________________

D E T E R M I N A T I O N

_______________________ 

Mr Justice Ribeiro PJ:

1.At the hearing on 13 December 2004, we dismissed this application for leave to appeal stating that we would give reasons later.  Our reasons are as follows.

2.In 1993, Porter International Co Ltd (“Porter”), a Taiwan corporation, registered a particular trademark in Hong Kong.  Yoshida Co Ltd (“Yoshida”), a Japanese corporation, seeks a declaration that such registration is invalid.  The details of the claim are not presently material.  What has been in dispute is the proper mode of service of proceedings for such a declaration.

3.By s 53 of the Trade Mark Ordinance, Cap 559 (“TMO”), a person who seeks such a declaration can generally bring the claim either before the Registrar of Trade Marks (“the registrar”) or before the court.  However, TMO s 77 provides that the application must be made before the court where proceedings concerning the trade mark in question are already pending in court.  That is the position here.  Yoshida had previously issued, but not yet sought to serve, a relevant Writ against Porter.

4.When Porter applied for registration of the trade mark, it filed a Hong Kong address for service, as required by r 105(1)(a) and r 105(2) of the Trade Mark Rules, Cap 559 (“TMR”).  It was the address of a Hong Kong firm of solicitors and was entered on the public register.  However, TMR r 105(1)(a) does not specify what proceedings may be served at that address.  It is accepted by both parties that proceedings for a declaration of invalidity brought before the registrar may properly be served at that address.  And it is accepted that this would be so even where the respondent is a foreign corporation.  However, Porter argues that court proceedings may not be served there.  Order 100 of the Rules of the High Court, which concerns trade mark proceedings in court, provides that such an application should be commenced by originating motion.  But it says nothing about service.  The question which divides the parties and divided the courts below is as to whether service of the originating motion to commence court proceedings could validly be effected at the abovementioned address for service.

5.Reyes J (HCMP 4779/2003, 8.12.03) held that the answer was “No”.  He held that on their true construction, various provisions of the TMO and the TMR, particularly TMO s 74, TMR r 2 and TMR Part 16, including TMR rr 105 and 112, related solely to the filing and service of documents in connection with proceedings before the registrar and had no application to court proceedings.   He noted Porter’s contention, without himself so directing, that proceedings before the court had to be commenced in accordance with the Rules of the High Court, Cap 4, and, where the respondent was a foreign corporation, in accordance with Order 11.

6.It has not been suggested before the Appeal Committee that any of the O 11 r 1(1) categories covers declarations of invalidity of registration of a trade mark, but it is common ground that such an application falls within O 11 r 1(2) so that the originating motion may be served out of the jurisdiction without first obtaining the court’s leave.  This is on the footing that such a claim is one “which by virtue of any written law the Court of First Instance has power to hear and determine notwithstanding that the person against whom the claim is made is not within the jurisdiction of the Court ......”

7.Rogers VP, with whom Le Pichon JA agreed, reversed the decision of Reyes J.  He concluded, as a matter of construction, and with the help of an historical survey of English and Hong Kong legislation and case-law concerning service in the present context, that the address for service provided for by TMR r 105(1)(a) is also available for service of process in the Court of First Instance. 

8.Mr Paul Shieh SC, appearing for the applicant, seeks leave to appeal on the ground that the dispute described above gives rise to a question of  law of great general or public importance.  If given leave, he would seek to uphold the judgment at first instance.  In arguing that use of the registered address for service must be confined to proceedings before the registrar, he lays particular emphasis on TMR r 105(7) which states:

“Subject to any filing to the contrary under this rule or rule 106, on the registration of a trade mark, the address for service of the applicant for registration shall be treated as the address for service of the owner of the registered trade mark for the purposes of all proceedings before the Registrar concerning that registered trade mark.”

9.The point touches upon an area of some uncertainty.  However, in our opinion, the better view is plainly in favour of the result arrived at in the Court of Appeal.  

10.That most of the rules in the TMR are designed, in many cases expressly, for regulating matters to be placed before the registrar is not in question.  Such rules are essential since the registrar’s powers under the TMO require a procedural framework.  TMR r 105(7) is one such example.  It provides that service at the relevant address is deemed service on the owner of the registered trade mark “for the purposes of all proceedings before the registrar”.  But these are not words of restriction.  They elucidate the position where proceedings are in fact taken before the registrar.  They do not exclude possible application of relevant rules to court proceedings.  In other words, it does not follow that the relevant rules are solely capable of applying to proceedings before the registrar.  Properly construed, some may be intended to apply equally to court proceedings. 

11.The important rule for present purposes is TMR r 105(1)(a) which requires a person wishing to apply for registration to provide an “address for service”.  It was made pursuant to a rule-making power (TMO s 91(2)(g)) regarding the service of documents which is itself unrestricted by reference to any particular tribunal or class of proceedings.  There is nothing on the face of the rule to suggest that the address for service is available only for proceedings before the registrar, to the exclusion of court proceedings.  Indeed, such an exclusion is implausible since the Ordinance confers concurrent jurisdiction on the court and the registrar to deal with precisely the sorts of applications that might eventually require service to be effected on the applicant for registration.  For example, concurrent jurisdiction is given under TMO s 52 for applications to revoke registration, under s 53 for a declaration of invalidity of the registration, and under s 54 for variation of a registration.  The natural construction of TMR r 105(1)(a), viewed in its context, would involve regarding the address for service as one available for the purposes of all such potential proceedings before either the court or the registrar.

12.A purposive construction of the service provisions supports this view.  It has correctly been accepted that an application for a declaration of invalidity of registration, even if made against a foreign proprietor of the registered trade mark, may validly be served at the statutory address for service in Hong Kong.  If such service founds jurisdiction for the registrar why should it not equally do so for the court?    What statutory purpose would be served by drawing a distinction between the two?  Mr Shieh, who argued this application with much ability and realism, frankly accepted that he could offer no rationale for such a distinction.

13.TMO s 77(1)(b) poses a similar problem for the applicant’s argument.  It provides that the registrar before whom an application has been brought may at any time refer that application to the court for determination.  Again, it is accepted that this applies whether or not the case involves a foreign party.  In such cases, the application would initially have been served at the address for service filed pursuant to TMR r 105(1)(a).  Upon the registrar’s reference to the court, the statute plainly confers jurisdiction on the court to deal with the matter without any need for proceedings to be served afresh on the respondent abroad: see by analogy on transfers to a court: Dataprep (HK) Limited v Kuo Chi-yung Peter [1974] HKLR 383.  The Ordinance therefore clearly accepts that the court may properly assume jurisdiction on the basis of the original service in Hong Kong and without any foreign service of process in such cases.  It is difficult to conceive of any rational basis for discovering a statutory intent to the effect that service on the statutory address is acceptable where such service leads indirectlyto the court, but invalid if such service is intended to lead directly to the court.  Again, Mr Shieh was unable to suggest any rationale for such a result.

14.One may note that in the statutory scheme, the court is certainly not intended to have powers which are in any way more restricted than those conferred on the registrar.  TMO s 85 provides:

“The court may, for the purpose of determining any question in the exercise of its original or appellate jurisdiction under this Ordinance, make any order or exercise any other power which the Registrar could have made or  exercised for the purpose of determining that question.”

15.Furthermore, it is not easy to see what purpose would be served by requiring service on a foreign respondent abroad pursuant to O 11 in the present context.  If the area of law involved was such as to require safeguards against a possibly exorbitant assertion of jurisdiction, sound reasons might exist for requiring a would-be plaintiff to go through the leave processes of O 11.  However, that is certainly not the present case.  Questions relating to the validity of registration of a Hong Kong trade mark are quintessentially domestic matters to be determined within the jurisdiction of the Hong Kong court.  There is no principle in the conflicts of laws or of international comity which requires such jurisdiction to be established by service on the respondent abroad.  Assumption of jurisdiction based on service on the Hong Kong address for present purposes plainly could not be said to be in any sense exorbitant.  Indeed, the parties have accepted that even if O 11 has to be resorted to, the leave of the court would not be required by virtue of O 11 r 1(2).  

16.Accordingly, in our view, both as a matter of language and of the statutory intent viewed purposively, TMR r 105(1)(a) calls for an inclusiveconstruction.  No case of any substance has been made out for the restrictive construction contended for by the applicant.  There is accordingly no basis for the grant of leave to appeal in the present case and the application must be dismissed with costs.   

Mr Paul Shieh SC (instructed by Messrs Cheung & Choy) for the applicant

Mr Felix H Pao (instructed by Messrs Wilkinson & Grist) for the respondent