WONG TO YICK LOCK OINTMENT LTD v. KIN LAM MEDICINE CO LTD

HCMP 3566/2016/

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO 3566 OF 2016

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J U D G M E N T

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Introduction

1.  By an Originating Summons dated 22 December 2016, Wong To Yick Wood Lock Ointment Limited (the “Applicant”) applies for a declaration that Hong Kong Trade Mark Registration Nos 301505088 and 301844820 (the “Suit Marks”) registered in the name of Kin Lam Medicine Company Limited (the “Respondent”) are invalid.

2.  The Originating Summons, which is returnable before me today, together with its supporting affirmation were served at the registered address of the Respondent on 28 December 2016.  This is good service for the purpose of this application: see Qingyuan Rowa Electronics Co Ltd v Rowa Electrical & Trading Co Ltd [1999] 3 HKC 540.  In the covering letter enclosing these court documents, the Applicant’s solicitors made it clear that the Respondent would be required to attend today’s hearing, failing which the case may proceed in the Respondent’s absence.

3.  By a letter dated 19 January 2017, the Registrar of Trade Marks informed the Applicant’s solicitors that he would not attend the hearing unless so requested by the court.  This letter was also copied to the Respondent at the address for service given by it to the Trade Marks Registry.

4.  The Respondent is absent at the hearing. I am satisfied that these proceedings have been effectively served and brought to the attention of the Respondent.

Discussions

5.  The Applicant was incorporated in July 1988.  It is the Applicant’s case, which is supported by concrete evidence, that it was set up to take over the business and goodwill built up and owned by the clinic and the pharmaceutical manufacturing business operated and owned by Mr Wong To Yick (黃道益), and at all material times, the Applicant and its predecessors carry on the business of, inter alia, the manufacturing and marketing of medicated balm or oil under the name of “Wong To Yick Wood Lock Medicated Balm黃道益活絡油”.

6.  The Applicant’s evidence also shows that it and its predecessors have at all material times extensively used and advertised its medicated balm or oil by reference to the marks “黃道益” and “WONG TO YICK”.  The sales turnover of the Applicant’s products in Hong Kong was in the region of tens of millions of dollars in 1990s and hundreds of millions of dollars since 2005.

7.  In connection with its business, the Applicant registered the mark “黃道益” under Registration No 1995B09582 on 7 December 1991.  Later, it also registered the mark “WONG TO YICK” under Registration No 300057041 on 1 August 2003. On 14 September 2006, the Applicant further registered its packaging material bearing the names of both “黃道益” and “WONG TO YICK” as its trade mark under Registration No 300721764 (collectively, the “Applicant’s Registered Marks”).  The Applicant’s Registered Marks are registered in respect of a range of pharmaceutical or medicated products under Class 5.  

8.  Kin Lam Medicine Company Limited (the “Respondent”) is the registered owner of the Suit Marks (i.e. “Wong Do Lo Ye Brand 老人牌” and “Wong Do Lo Ye Brand Kin Lam Pharmaceutical Co Ltd老人牌 健臨製藥廠有限公司”), which were respectively registered at the Trade Mark Registry on 29 July 2011 and 21 December 2009 in respect of a range of pharmaceutical or medicated products under Class 5.

9.  In the Originating Summons, the Applicant seeks a declaration of invalidity under section 53(5) of the Trade Marks Ordinance (Cap 559) (“TMO”) on the grounds that the use of the Suit Marks is likely to cause confusion with the Applicant’s Registered Marks under TMO section 12(3) and/or their use constitutes actionable passing off under TMO section 12(5).

10.  At today’s hearing, Mr Shipp for the Applicant primarily relied on the passing off ground. 

11.  Mr Shipp drew my attention to the fact that in HCA 2585/2014, a judgment in default was entered on 16 September 2015 in favour of the Applicant against inter alia the Respondent which expressly restrained the Respondent from passing off products (in particular, Chinese medicinal balm or preparations, medicated oils or balms) as the products of or associated with the Applicant by using the mark of inter alia “Wong Do Lo Ye”. 

12.  Referring to the decision of Chelsea Man Plc v Chelsea Girl Ltd [1988] FSR 217 (at 228), Mr Shipp submitted that upon a true construction of the injunction granted in HCA 2585/2014, the use by the Respondent of the mark “Wong Do Lo Ye” is capable of constituting actionable passing off.

13.  I accept Mr Shipp’s submission.  In my judgment, the injunction granted in the judgment in HCA 2585/2014 gave rise to a res judicata as between the Applicant and the Respondent that any use by the Respondent of the mark “Wong Do Lo Ye” on products relating to medicated oils or balms would give rise to an actionable passing off.  It does not make any difference even though the judgment was one entered in default (see Spencer Bower and Handley: Res Judicata (4^th ed), para 2.22).  Given that “Wong Do Lo Ye” is a significant and distinctive element of the Suit Marks, this ground alone would be sufficient to support the Applicant’s application for declaration of invalidity.

14.  In any event, I am satisfied on the basis of the evidence presently available before me that any use of the Suit Marks would give rise to actionable passing off at the material dates (i.e. the respective dates of registration of the Suit Marks) in that such use would lead to such misrepresentation that would cause or be likely to cause damage to the Applicant’s goodwill.

Disposition

15.  As noted by Yuen J (as she was then) in Titan Ltd v Deng Zhishun (unreported, HCMP 4804/1999, 11 November 1999), the rules do allow originating summons to be dealt with at the first hearing in the absence of the defendants where the facts are sufficiently clear and liability is established.

16.  For the reasons explained above, I am satisfied that the Applicant has made out its case to invalidate the registration of the Suit Marks on the ground of passing off.

17.  Accordingly, I am satisfied that this Court should grant a declaration as per paragraph 1 of the Originating Summons. 

18.  I further make a costs order in favour of the Applicant as per paragraph 2 of the Originating Summons.

19.  I thank Mr Shipp for his succinct and to‑the‑point written and oral submissions.