Arabella Pte Ltd v. 茂廣記集團有限公司 and Another

HCMP 1308/2013

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO 1308 OF 2013

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BETWEEN

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J U D G M E N T

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1.By the amended originating summons, the plaintiff seeks a declaration that Hong Kong Trade Mark Registration No 300099162 for the Trade Mark “” in the stylised form in Class 18 is invalid pursuant to section 53 of the Trade Marks Ordinance, Cap 559.

2.The said trade mark was registered in the name of the 1^st defendant, with the filing date 23 October 2003, in Class 18 for goods namely, trunks and cases for luggage, leather goods, hand-bags and suitcases made of leather, imitations of leather, umbrellas, all included in Class 18. 

3.According to the evidence of Mr Paolo Bodo, the director of the plaintiff, the plaintiff has by assignment acquired rights in a number of “Miss Sixty” formative trade marks.  In Hong Kong, the plaintiff is the owner of the trade marks as set out in the affirmation of Mr Paolo Bodo, which includes a trade mark in the stylised form “” registered on 23 December 1996 for clothing, footwear and headgear.  This is the Registration No 2000B03844.  Apart from that trade mark, the plaintiff is also the owner of a number of other trade marks in Hong Kong and elsewhere in the world as set out in the evidence. 

4.The evidence also shows that the plaintiff has acquired substantial reputation in the trade marks with sales of products bearing those trade marks.  The plaintiff has acquired all these trade marks in Hong Kong by an assignment, dated 23 November 2011, as set out in the evidence. 

5.The 2^nd defendant has been joined as the 2^nd defendant as the 1^st defendant is now a company which is dissolved.  Any property of the 1^st defendant would be bona vacantia and hence the joinder of the Registrar of Companies as the 2^nd defendant. The correspondence that I have been shown shows that neither the Registrar of Trade Mark nor the Registrar of Companies have any objection to the application of the plaintiff provided that there is no order as to costs against them. 

6.By section 53 (3), the registration of a trade mark may be declared invalid on the ground that the trade mark was registered in contravention of section 11 (absolute grounds for refusal of registration). Section 11 of the Ordinance set out the absolute grounds for refusal of registration.  By section 11 (4)(b), a trade mark shall not be registered if it is likely to deceive the public.  By section 11 (5)(b), a trade mark shall also not be registered if the application for registration of the trade mark is made in bad faith. 

7.I am satisfied on the evidence that the trade mark of the 1^st defendant is likely to deceive the public and it should not have been registered.  I am also satisfied that the application for registration of the 1^st defendant’s trade mark was made in bad faith and for that reason also it should not have been registered.

8.I am satisfied that the plaintiff is entitled to the relief sought.  I grant the declaration sought that the Hong Kong Trade Mark Registration No 300099162 “” in the stylised form in Class 18 is invalid pursuant to section 53 of the Trade Marks Ordinance, Cap 559. 

9.I also make no order as to costs against the Registrar of Trade Mark and the Registrar of Companies.  The declaration is granted with no order as to costs.

Ms Nana WT Lui, instructed by Reed Smith Richards Butler, for the plaintiff

The 1^st defendant was not represented and did not appear

The 2^nd defendant and the Registrar of Trade Marks did not appear