Re Selleys Pty Ltd

HCMP 82/2006

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO. 82 OF 2006

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Before: Deputy High Court Judge Carlson in Chambers

Date of Hearing: 16 June 2006

Date of Judgment (Handed Down): 21 July 2006

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J U D G M E N T

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Introduction

1.This appeal raises an important matter as to whether a copy statutory declaration may be filed and admitted into evidence, rather than the original, in proceedings before the Trade Marks Registry on an application for revocation of a Trade Mark on the grounds of non-use.  The Hearing Officer decided that a copy could be used and this is an appeal from that decision.

The nature of the Appeal

2.This is an appeal to which Order 55 of the Rules of the High Court applies.  Under r.3 the appeal is by way of re-hearing.  The court’s powers are regulated by r.7.  Of particular relevance is r.7(7) which is in these terms:

“The Court shall not be bound to allow the appeal on the ground merely of misdirection or the improper admission or rejection of evidence, unless in the opinion of the Court substantial wrong or miscarriage has been thereby occasioned.”

The note to r.7(7) at page 838 is of assistance and merits recitation here:

“As to the exercise of the court’s discretion under r.7(7) see Botton v. Secretary of State for the Environment and the London Borought of Bromley [1992] C.O.D. 249 (Roch J.) and P.G. Vallance Ltd v. Secretary of State for the Environment (1992).  The Independent, November 19 (Henry J.).  Where the court concludes that a tribunal has misdirected itself in point of law, but would have reached the same decision had it not done so, the court may dismiss the appeal, under r.7(7), if satisfied that no substantial wrong or miscarriage has been occasioned (Knight v. Dorset C.C. [1997] C.O.D. 256 (Tucker J.),  Furthermore, there can be no substantial wrong or miscarriage arising from a procedural impropriety or misunderstanding unless the applicant has suffered substantial or material prejudice as a result thereof: H. v. Gloucestershire C.C. & Another, unreported, June 19, 2000, CA.  On this point, there is no difference in approach between a statutory appeal and an application for judicial review, where the court has power to refuse relief even though an error of law is made out: ibid, approving dicta of Laws J. in Catchpole v. Buckingham C.C. [1999] Ed. C.R. 430; [1998] E.L.R. 463; [1998] C.O.D. 279, QBD and Sullivan J. in Beddis v. Gloucestershire C.C. [1999] Ed. C.R..446.”

The facts and the hearing below

3.The matter concerns a product called “Liquid Nails” which has been produced for some time now by ICI plc (“ICI”) at its many factories around the world.  The product is also manufactured by an Australian manufacturer called Selleys Pty Limited (“Selleys”).  The product is an industrial strength adhesive which has its uses in the construction industry as well as for other applications.  Suffice it to observe that it has many applications and a wide user and customer base.  Because this appeal is procedural in nature I need not relate the facts in great detail.  What has happened is that Selleys has applied to the Trade Marks Registry of the Government Intellectual Property Department to revoke ICI’s Trade Mark Registration in respect of “Liquid Nails” because of non-use in Hong Kong.  In support of its application it has filed a Statutory Declaration from the general manager of a reputable private investigation company with supporting evidence to say that ICI’s Liquid Nails product is not being sold in Hong Kong.

4.Once that application, supported by the Statutory Declaration, was filed the procedure under the Trade Mark Rules (part of the Trade Mark Ordinance, Cap. 559 (“the Ordinance”)) engaged.  The application by Selleys is one made under Rule 36 which sets out how the application should be made.  Selleys’ solicitors have fully complied with Rule 36 with the consequence that nothing turns on this.  Rule 37 is of vital importance in resolving this appeal.  It is in these terms:

“37.  Counter-statement

(Form T7)

(1) Within 6 months after the date of receipt of the copy of the application, statement of grounds and evidence, the owner shall file a counter-statement on the specified form setting out —

(a) the grounds on which he relies in support of his registration;

(b) the facts alleged in the application that he admits;

(c) the facts alleged in the application that he denies and his reasons (and if he intends to put forward an alternative version of events at the hearing, his version of those events); and

(d) the facts alleged in the application that he is unable to admit or deny.

(2) The counter-statement shall be accompanied by —

(a) evidence of the use made of the trade mark; or

(b) a statement giving reasons for non-use.

(3) The owner shall, at the same time as he files the counter-statement, send a copy of the counter-statement and a copy of the evidence of use or statement giving reasons for non-use to the applicant.

(4) If the owner does not file a counter-statement and either evidence of use or a statement giving reasons for non-use within the period specified in subrule (1), the Registrar may treat the application for revocation as being unopposed by the owner. (L.N. 97 of 2003)”

5.The point to note is that ICI had six months to file its counter-notice (sub-rule 1).  Sub-rule 3 refers to the filing of “the counter-statement” and the sending of “a copy of the counter-statement … to the applicant.” [My emphasis].  It is said that this distinction between “the counter-statement” which much be filed with the Registry and “a copy of the counter-statement” which the owner must send to the applicant is crucial.  It serves to demonstrate that under the Rule the original counter-statement must be filed, which will have the effect of having it admitted into evidence and that a copy of it cannot be filed, in which case a copy cannot be admitted into evidence.  Presently, I will need to develop this argument further with regard to other parts of the Rules and other material to which I have been referred.

6.At this stage, it should be noted that the six months time limit in this case expired on 18 September 2005.  On 16 September, two days before the due date, ICI’s solicitors filed the original statutory Form T7 together with a copy of the Statutory Declaration of Caroline Ann Davies which set out ICI’s evidence of its use of the trademark in Hong Kong.  The original Statutory Declaration from Ms Davies came on 22 September, which was four days out of time.

7.Part 12 of the Rules provides inter alia for the extension of time limits where under Rule 94 generous provision is made.  Nevertheless, Rule 95 contains what are referred to as non-extendible time limits.  Rule 95(1)(k) says that Rule 37(1), which establishes the six months time limit for filing a counter-statement, is not extendible under Rule 94.

8.By a letter dated 18 October 2005, the Registrar wrote to ICI’s solicitors telling them that the original Statutory Declaration had been filed outside the six months limit and that consequent upon Rule 37(4) the application by Selleys would be treated as unopposed.

9.This being the Registrar’s position, ICI requested a hearing to contest that interpretation and the ruling that the matter would be treated as unopposed.  As a result of that hearing, in an admirably clear Decision the Hearing Officer, Ms Lavinia Cheng held that there had been compliance with Rule 37 in that the original counter-statement, which enclosed a copy of the Statutory Declaration, had been filed timeously.  She held that there was no requirement that the Statutory Declaration, needed to be the original as well and, consequently, ruled the Statutory Declaration properly admitted into evidence with the result that its contents will be considered by the Hearing Officer who will have to adjudicate on Selleys’ application to have the registration of ICI’s trademark revoked.  As a result, she set aside the ruling in the letter of 18 October 2005 that the application was to be treated as unopposed.  It is from this decision that Selleys now appeal.

The argument

10.I have been treated to very wide-ranging submissions by Mr Kwan for Selleys in support of the appeal and from Mr Campbell for ICI who seeks to uphold the Hearing Officer.

11.It seems to be that this matter can be resolved shortly.  Whilst proceedings before the Registrar of Trade Marks are closely regulated under the Ordinance and the Rules, it is plain from a broad reading of the Rules in particular, that the Hearing Officer has a very broad discretion as to how to conduct the hearing and as to the type of evidence that he is able to receive.  Rule 79 provides for the type of evidence that may be admitted in any proceedings before the Registrar.  The Rule says this:

“79. Evidence in proceedings before the Registrar

(1) Where under the Ordinance or these Rules evidence may be admitted by the Registrar in any proceedings before him, the evidence shall be filed by way of a statutory declaration or affidavit.

(2) The Registrar may in any particular case take oral evidence in addition to any evidence filed by way of a statutory declaration or affidavit.

(3) The Registrar may allow any witness to be cross-examination on his statutory declaration, affidavit or oral evidence.”

It is clear therefore that it is open to the Hearing Officer to also take oral evidence and to allow cross-examination.  Section 78 of the Ordinance is to this effect:

“Except as otherwise provided in (this) Ordinance, the Registrar is not bound by the rules of evidence in any proceedings before him under this ordinance and may inform himself of any matter that is before him in any way that he reasonably believes to be appropriate.”

Nevertheless, it should be observed that under Rule 80 certain formalities should be followed as to the preparation and attestation of Statutory Declarations and Affidavits:

“(1) For the purposes of any proceedings before the Registrar, a statutory declaration or affidavit may be made and subscribed as follows —

(a)   in Hong Kong, before any commissioner, notary or other person authorized by the law of Hong Kong to administer an oath for the purpose of any legal proceeding; and

(b)   in any place outside Hong Kong, before any court, judge, justice of the peace, notary, notary public, consul or other person authorized by law to administer an oath or to exercise notarial functions in that place for the purpose of any legal proceeding.

(2) A person signing a statutory declaration or affidavit shall state on it the capacity in which he makes the declaration or affidavit.

(3) Any document purporting to have affixed, impressed or subscribed to or on it the seal or signature of any person authorized by subrule (1) to take a statutory declaration or affidavit may be admitted by the Registrar without proof of the genuineness of the seal or signature, or of the official character of the person or his authority to take the declaration or affidavit.”

12.Mr Campbell submits, as he had before the Hearing Officer, that nowhere in the Rules does it say that the Statutory Declaration which is to be filed needs to be the original one.  Whilst it would be far better for the original to be filed and to accompany the counter-statement, a copy would be equally admissible.  He seeks assistance from the provisions of section 78 (supra.) which do not require the Registrar to follow the rules of evidence.  From this, he submits that it would be very curious indeed if the Registrar were to be excluded from having regard to a photocopy of the original Statutory Declaration, when being able to take oral evidence under Rule 79 he would unquestionably be able to receive hearsay evidence and assess its weight having regard to its nature and all the circumstances by which it has come into existence and been given before the tribunal.

13.Mr Kwan has, perfectly reasonably, pressed for orthodoxy in such matters.  He submits that it is inconceivable that anything other than the original of the Statutory Declaration should be filed.  He gets assistance from the fact that under Rule 37(3) the owner has to send a copy to the applicant.  By necessary implication he will therefore have filed the original with the Registrar.  In this regard, Mr Kwan also draws attention to Rule 81 which is concerned with photographs of exhibits, in which case the party filing the photograph instead of the exhibit itself may send a copy of the photograph to the other party. I am bound to say that I get no assistance from this rule at all in interpreting the effect of Rule 37.  All that Rule 81 does is to make sensible provision for the use of photographs of exhibits which may be bulky and which cannot be conveniently filed, on an undertaking to produce the exhibit itself at the hearing.

14.I have also been shown other materials such as the Registry’s Work Manual and in particular the section relating to “Processing of Pleadings and Evidence” part of which is in these terms:

“Form T7 (by which the process of filing a counter-statement is governed) can be accepted and deemed to be filed within time despite an irregularity in the form or the accompanying documents, other than a failure to file within the specified time … in such a case the irregularity should be brought to the attention of the filer with a suggestion that leave be sought to file and serve and amended-statement.”

From this, Mr Campbell submits that there is, in the Work Manual itself, a procedure to correct any error or irregularity provided the counter-statement has gone in timeously, which in this case it has.  This therefore would provide, he says, the Registrar with a means to correct irregularities, save for extensions of time which are specifically provided for under Rule 92.

Conclusion

15.For my part I am satisfied that Rule 37 undoubtedly contemplates the filing of the original Statutory Declaration.  This having been said the Rule does not have the exclusionary effect of prohibiting the use of and therefore making inadmissible in evidence a copy of the Declaration.  I cannot imagine that a regime which by virtue of section 78 of the Ordinance does not require the Registrar to follow the rules of evidence would exclude the use of and reception into evidence of a copy of a Statutory Declaration.  I am perfectly satisfied that, if required, the Hearing Officer could direct an oral hearing, if asked to by ICI [see Rule 79(2)] who could call Ms Davies, the maker of the Statutory Declaration, to identify the original which could then, no doubt, be exhibited as part of the evidence called in the hearing.  Whilst the Rules require formalities to be adhered to such as Rule 80 which sets out the requirements for the attestation of an Affidavit or a Statutory Declaration, Rule 37 cannot be read as preventing the filing of a copy of the Statutory Declaration to be filed as part of the counter-statement, which is what it is after all.

16.Mr Campbell feels drawn to say that as this is only a copy this would affect its weight but I am satisfied that under Rule 79(2) once the maker is called and has identified the original document that then would put an end to this particular issue.

17.I very much doubt that this legislation and the Rules made under it was intended to deprive the owner of a registered trademark from protecting its continued registration just because a copy of an important document, such as a Statutory Declaration, was filed instead of the original.  At the end of the day if the authenticity of the copy is being called into question then the party raising that issue will have every opportunity to challenge that through the oral process which permits cross-examination, as well as calling for the original itself.

18.I am satisfied, for all the reasons that I have referred to, that the Rule does not prohibit the filing of a copy Statutory Declaration.  In such circumstances, I would hope that at the substantive hearing, Selleys will feel able to accept that this is a true copy, they having been given the opportunity to inspect the original and that, in such circumstances, no point will be taken that because it is a copy less weight should be attached to it.  The Registry is there to adjudicate these matters on their true merits and should not have to trouble over technical points of this sort.  This is the essence of statutory bodies such as this, which are there to consider the cases before them largely untrammelled by strict adherence to the rules of evidence although, of course, regulated by well-defined rules which, in most instances, are flexible enough to allow for the inevitable errors in procedure that are bound to crop up from time to time.

19.Mr Kwan’s suggested resolution of this matter would, in my judgment, impose on users of the Registry even greater procedural and substantive hurdles than a superior court of record.  Whilst it is to be hoped and expected that the parties will follow the Rules in the way that they are intended to operate, a proper measure of common sense is to be applied in the construction of any particular rule under consideration.  Where there is no specific prohibition on the use of a copy, in this instance, it would be wrong to necessarily imply such a prohibition.  Accordingly, this appeal must stand dismissed.

20.I have found that the Hearing Officer was correct in her ruling, but even if she had in some way fallen into error it should be remembered that appeals of this sort, regulated as they are under Order 55                    of the Rules of the High Court, in particular r.7(7), appeals from a tribunal such as this are difficult to sustain having regard to the need for the appellant to show that a substantial wrong or miscarriage of justice has been done to it by virtue of the tribunal’s error.

Costs

21.I would have thought that costs should follow the event and that ICI should have its costs of the appeal.  This will be an order nisi in the usual way.

Gary Kwan, instructed by Messrs Johnson, Stokes & Master,  for the Appellant

James W Campbell, instructed by Messrs Baker & McKenzie,  for the Respondent