Re Ping an Securities Ltd

CACV 291/2006

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF APPEAL

CIVIL APPEAL NO. 291 OF 2006

(ON APPEAL FROM HCMP NO. 2788 OF 2004)

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Before: Hon Rogers VP, Le Pichon JA and Barma J in Court

Date of Hearing: 20 June 2008

Date of Judgment: 20 June 2008

Date of Handing Down Reasons for Judgment: 26 June 2008

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REASONS FOR JUDGMENT

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Hon Rogers VP:

1.This was an application for leave to appeal to the Court of Final Appeal from the judgment of this court given on 11 January 2008.  By that judgment the appeal to this court was allowed from the judgment below whereby a declaration had been granted that the registration of Hong Kong Trade Mark Nos. 300065196 for“PING AN”in class 36 and 300065213 for“平安”in class 36 in the name of the respondent in respect of“財務；金融事務”(financial affairs and monetary affairs) were invalid.  The judge had further ordered that the trade mark registrations and the Trade Marks Register in respect of those trade marks be amended by deletion of“財務；金融事務”(financial affairs and monetary affairs).  By this court’s judgment the judgment below had been set aside.  At the conclusion of the hearing of this application leave was refused with reasons to be given in writing.

2.The application for the rectification of the register had been made under the provisions of section 12(5)(a) of the Trade Marks Ordinance Cap. 559 (“the Ordinance”).  That section was set out in paragraph 31 of the judgment of this court and, as said there, that is a comparatively new provision.  The effect of that provision was considered in the decision in WILD CHILD Trade Mark [1990] RPC 455.  It was the unanimous decision of this court that there was not a sufficient likelihood that the use of the Trade Marks in Hong Kong was liable to be prevented by virtue of any rule of law protecting an unregistered trade mark used in the course of trade or business, in particular, by virtue of the law of passing off.  Hence the registration was not invalid.  In that respect this court pointed out in paragraph 39 of the judgment that it considered that the approach of the judge below had not been in accordance with the provisions of the Ordinance.

3.On this application Mr Yan SC, who appeared on behalf of the applicant on this application but not at the hearing of the substantive appeal, did not question the applicability of what had been said in the WILD CHILD case, namely that the matter to be decided in applying section 12(5)(a) was whether normal and fair use of the particular mark registered for the purpose of distinguishing, in this case services, from those of other undertakings was liable to be prevented at the date of application for registration by an action for passing off.  Rather he submitted that the questions in respect of which leave was sought were:

1. The proper approach to be taken in considering names which consist of distinctive and non-distinctive parts.

2. The extent to which courts should protect the goodwill of small businesses under the law of passing off.

4.It is fair to say that Mr Yan said in the course of his submissions that he did not place much emphasis on the second question.  Indeed, there is no dispute that small businesses as well as large should be protected.  The question in each case is whether there is likely to be passing off.

5.As regards the first question, that seeks to highlight one of the aspects that have to be considered as regards passing off.  In every case, in deciding whether there has been or is likely to be passing off the court has to consider all the aspects of the case and all relevant factors.  As Mr Shipp, who appeared on behalf of the respondent, pointed out, the question in determining whether there would be passing off is not the same as the question of the similarity or identity of Trade Marks or names.  The change in the law represented by the introduction of section 12(5)(a) requires that the court has to consider all the surrounding factors which would be relevant to passing off and not simply confine itself to the similarity or identity of the words or characters.  That is the exercise which this court undertook in paragraphs 31-39 of the judgment.

6.In my view, therefore, the first question relied upon seeks to dissect one aspect which the court has to consider, which was not an aspect which this court ignored, but fails to address the real question, which at the end of the day is a question of fact namely whether there is likely to be passing off.

Hon Le Pichon JA:

7.I agree.

Hon Barma J:

8.I agree.

Mr John M Y Yan SC, instructed by Messrs Baker & McKenzie, for the Applicant

Mr Colin Shipp, instructed by Messrs Dibb Lupton Alsop, for the Respondent