Chi Wing and Another t/a Singapore Headway Medicine Co v. Eng Kwan Lan t/a Kam Ying Trading Co

HCMP 730/2007

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO 730 OF 2007

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BETWEEN

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Before: Hon A Cheung J in Chambers

Date of Hearing: 6 September 2007

Date of Judgment: 6 September 2007

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J U D G M E N T

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1.This is the respondent’s application for leave to adduce further evidence for use at the hearing of the trademark registration appeal. 

2.The discretion of the Court to admit further evidence is not in dispute.

3.In deciding how the discretion should be exercised, I have taken into account, amongst other matters and considerations urged upon the Court by the parties in their submissions, the following matters.

4.First, there have been two unsuccessful attempts by the respondent to obtain leave from the Registrar of Trade Marks to adduce similar evidence.  The first one was made after the rule 27 evidence was filed and the second at the beginning of the substantive hearing before the Registrar.  There has not been any challenge against the two decisions to refuse leave by way of judicial review.  There has not been any material change in circumstances since the two decisions were made, save, I should note, that the application of the respondent (as applicant below) for the registration of its mark has been successful before the Registrar.  It is asserted generally that only recently were some customers persuaded to help by making affirmations in the respondent’s favour, which thus form part of the further evidence sought to be adduced.  But the evidence filed does not detail when these particular customers were first contacted for assistance, what their initial responses were, when or how they subsequently changed their minds, or (as the case may be) why they were not approached earlier.

5.Secondly, it is submitted that the intended evidence would “probably have an important influence” on the outcome of the appeal.  The intended evidence must be considered in the light of the Registrar’s reasons for his decision and the issues raised by the appellants in the appeal.  I am not convinced that counsel’s submission is correct.  In particular, the court hearing the appeal will know that in terms of filing evidence, the respondent has not had the last say and can only leave the criticisms made by the appellants in their rule 27 evidence unanswered.  That fact will no doubt be taken into account by the court in assessing the validity of those criticisms.

6.In any event, at least in relation to part of the intended evidence, the respondent has only itself to blame for its failure to include it in its rule 26 evidence.  A good example is the confusing 8-digit telephone and fax numbers appearing in some of the documents exhibited by the respondent in its rule 26 evidence.

7.The intention behind the rules is plainly that the parties should put in their respective evidence, including all supporting documents as well as explanations and clarifications that may be required regarding any reasonably foreseeable queries and doubts arising from the evidence and supporting documents so put in, in one go.

8.If time is required to gather all the relevant evidence, supporting documents, explanations and clarifications, an extension of time to file evidence should be sought.

9.The introduction of further evidence at this late stage would no doubt have the effect of increasing costs, delaying the hearing of the appeal and multiplying non-core issues, given the suggestion that the appellants should also have an opportunity to file evidence in reply.

10.As mentioned, I have not only considered the above matters, but also taken on board the other points made by counsel and the circumstances of this appeal.  Having looked at the matter in the round, I have reached the conclusion that the application should be refused.

[Submissions on costs]

11.The application is dismissed with costs to the appellants, to be taxed on a party and party basis if not agreed.

Mr Felix Pao instructed by Messrs Johnson, Stokes & Master, for the appellants (opponents)

Mr Gary Kwan instructed by Messrs Richards Butler, for the respondent (applicant)