HAMMER CASTERS KABUSHIKI KAISHA v. YIP LING FOON

HCMP2239/2005

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO. 2239 OF 2005

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J U D G M E N T

1.  The applicant is a Japanese Corporation.  It has been manufacturing and selling metallic casters since 1958.  Since 1965, its casters have been sold worldwide under a mark that consists of the word “Hammer” and image of a hammer.  Its casters have been sold in Hong Kong by its sole distributor, Ziangkong Company Limited  (祥康貿易有限公司).

2.  Through substantial sales and marketing throughout the years, the applicant has acquired substantial goodwill and reputation in Hong Kong.  Its mark has come to denote its own casters.  Its local sales had exceeded 23 million from the year 2000 to September 2005.  It had also incurred over 1.5 million in local advertising since 2001 to August 2005.

3.  The mark in question (“the said mark”) was registered as a trademark on 3 February 2005 on the application of the respondent, 葉靈歡(Yip Ling Foon), who purported to be its owner.  It was registered in the respect of the goods in Class 6.  They include common metals and their alloys, metal building materials, ironmongery, small items of metal hardware and goods of common metal not included in other classes.

4.  This application was made pursuant to sections 11(5)(b), 12(5)(a) and 53 of the Trademarks Ordinance, Cap. 559 for a decoration that the said mark is invalid on the grounds that its registration was made in bad faith and it should not be registered by virtue of the law of passing off.  Sections 11(5)(b) and 12(5)(a) and the relevant parts of section 53 provide as follows:

“11.	(5)	A trade mark shall not be registered if, or to the extent that-
	(b)	the application for registration of the trade mark is made in bad faith.
12.	(5)	Subject to subsection (6), a trade mark shall not be registered if, or to the extent that, its use in Hong Kong is liable to be prevented-
	(a)	by virtue of any rule of law protecting an unregistered trade mark or other sign used in the course of trade or business (in particular, by virtue of the law of passing off);
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).
	(5)	Subject to subsections (6) and (7), the registration of a trade mark may also be declared invalid on the ground-
	(b)	that there is an earlier right in relation to which the condition set out in section 12(4) or (5) (relative grounds for refusal of registration) is satisfied.”

5.  The said mark is identical or confusingly similar to the applicant’s mark.  The respondent has not taken any steps to contest this application or filed any evidence to challenge the applicant’s evidence.  It has also not appear in this hearing.

6.  I am satisfied that by reason of the uncontested evidence filed by the applicant, the respondent must have been aware of the applicant’s casters and that they were the only casters sold under the applicant’s mark.  The respondent must also be aware of the goodwill and reputation that the applicant has acquired in the past 40 years. 

7.  Despite being aware of all these, the respondent still applied to register his mark which is so strikingly similar to that of the applicant’s.  It is obvious that the respondent’s intention in registering the mark was to confuse purchasers into believing that his goods are those of the applicant’s or that they are of similar quality to the applicant’s.  For these reasons I accept the application on the above-mentioned grounds.

8.  I therefore make an order in terms of paragraphs 1 and 2 of the originating motion, which includes an order that the respondent do pay the applicant the costs of this application.