RE YOSHIDA & CO LTD

CACV 399/2003

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF APPEAL

CIVIL APPEAL NO. 399 OF 2003

(ON APPEAL FROM HCMP NO. 4779 OF 2003)

_________________________

_________________________

_________________________

REASONS FOR JUDGMENT

_________________________

Hon Rogers VP:

1. This is an application for leave to appeal to the Court of Final Appeal on the ground that the question sought to be raised is one which by reason of its great general or public importance ought to be submitted to that Court. At the conclusion of the hearing the application was refused with reasons to be given in writing.

2. The background to this matter is contained in the judgment of this court dated 20 May 2004. The matter sought to be raised in the Court of Final Appeal is that this court erred in law in arriving at its decision that the service of the Notice of Originating Motion at the address for service constituted a good service on the applicant. It is said:

"in particular, the Applicant contends that the Court of Appeal overlooked and/or failed to have regard to the express wording of Rule 105(7) of the Trade Marks Rules which provided that an address for service filed pursuant to Rule 105(1) 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 but does not provide that such address for service shall be treated as address for service of the owner of the registered trade mark for the purposes of proceedings before the court."

3. By letter sent the day before the hearing the applicant revised the question involved in the appeal as follows:-

"whether or not service at an 'address for service', filed pursuant to rule 105(1) of the Trade Mark Rules, of documents for proceedings other than proceedings before the Registrar of Trade Marks constitutes good service on the registered proprietor of the trade mark who filed such an address for service."

4. In the judgment this court referred specifically to the whole of Rule 105 and the sub-rules including (5) and (6). It is quite clear that this court had regard to the whole of Rule 105. Importantly this court said:

"The Rules cannot, of course, alter the effect of the Ordinance, but, in any event, the fact that some of the Rules provide for matters occurring before the Registrar does not in any way prevent the address for service being effective in relation to all matters including court proceedings."

5. In brief, therefore, this court did not overlook nor did it fail to have regard to the express wording of Rule 105.

6. Mr Shieh attempted to distinguish the decision in Johnson & Johnson's Application [1991] RPC 1 where Mummery J (as he then was) said at page 7 lines 45-49:

"Those rules include Rule 13 which, unlike many of the other rules, is not limited either by its wording of its context or its content to proceedings before the Registrar. On its ordinary and natural meaning, Rule 13 also applies to the service of documents on an applicant in other proceedings under the 1938 Act, such as an appeal to the High Court under section 18(7)."

7. However Rule 13 of the Trade Marks and Service Marks Rules 1996 to which Mummery J had reference was markedly similar, although in different form, to Rule 105 of the Trade Marks Rules. Rule 13(1) was the general provision which was similar in effect to Rule 105(1)(a) of the Hong Kong Rules. However later provisions in Rule 13 of the United Kingdom 1986 Rules went on to contain specific provisions which related to the Registrar. When the later provisions of Rule 13 were drawn to counsel's attention, Mr Shieh did not seek to argue that the format of Rule 13 was not similar to Rule 105. On the face it there is, therefore, nothing in this point now raised by Mr Shieh.

8. In an endeavour to make use of an observation of Aldous J (as he then was) in the case of Symbol Technologies Inc v Opticon Sensors Europe BV (No. 1) [1993] RPC 211, Mr Shieh has also drawn this court's attention to yet another authority which supports the proposition that an address for service in relation to trade marks can be treated as an address for service of a notice of motion. The case involved a notice of motion to rectify the register of patents on the grounds of invalidity. The notice of motion had been served at the address for service. However there was a marked distinction in that case. Section 123(1) of the Patents Act 1977 gave the Secretary of State power to make rules in respect of the business of the Patent Office and in respect of those matters under the direction or control of the comptroller. There was no provision which empowered the making of rules relating to an address for service.

9. Interestingly Aldous J went on to say at page 214 line 49:

"It is odd that an address for service in the register of patents is not the appropriate address upon which to serve a petition for revocation, whereas an address entered in the Register of Trade Marks has been held to be a proper address for service: Johnson & Johnson's Application [1991] RPC 1. The reason is historical and I believe that the appropriate course is amendment of Order 104 of the Rules of the Supreme Court rather than an attempt by me to bend the rules as they now stand."

10. It is quite clear therefore, that those judges, who incidentally had both been distinguished practitioners and Treasury juniors in the field of intellectual property, were of the view that an address for service on the register of Trade Marks was a valid address for service in respect of High Court proceedings. There is no valid distinction between the statutory provisions and rules which were then applicable in the United Kingdom and the statutory provisions and rules which are applicable in Hong Kong.

11. The first observation is that the question sought to be argued only relates to one of the grounds upon which this court held that it was appropriate that the matter should proceed to a hearing of the motion without the need for any further service on the respondent.

12. In any event the question of great general or public importance has to be viewed against the background of the matters set out in paragraph 11 of this court's judgment. It is unnecessary to repeat those matters here. It suffices to refer to that paragraph and to say that there can be no question but that an application to rectify a Hong Kong trade mark must be permitted to proceed unless there are good grounds, for example it can be shown that the application is vexatious or otherwise an abuse of the process of the court. Indeed, Mr Shieh adopted the same stance taken, belatedly, by his predecessor when this matter was relisted for hearing after the conclusion of argument, that it was not necessary for the applicant to obtain leave to serve the notice of motion out of the jurisdiction. Mr Shieh said that all that was required was personal service on the respondent in Taiwan. He indicated that there would be no difficulty in effecting such service although he was not prepared to commit the respondent to any degree of cooperation. If Mr Shieh is correct that service can be easily effected, the net effect of a successful appeal to the Court of Final Appeal will be simply to delay the inevitable hearing of the notice of motion.

13. If there were any doubt about the matter, I would add that this application has the appearance, at least, of obstructionism whilst attempting to give the appearance of altruism in the public interest. Not only is there some history behind this litigation but, as pointed out in paragraph 10 of this court's judgment, the arguments on behalf of the respondent in this case have not been consistent and that is hardly a good basis upon which a matter of great general or public importance should be approached.

Hon Le Pichon JA:

14. I agree.