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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J U D G M E N T

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Hon Rogers VP:

1.  This was an appeal from a judgment of Deputy High Court Judge Gill given on 3 August 2006.  By the judgment, it was declared that the registration of Hong Kong Trade Mark Numbers 300065196 “PING AN” in class 36 and 300065213 “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 and the judge 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).

2.  The respondent to that application appealed that judgment.  At the conclusion of the hearing of this appeal judgment was reserved which we now give.

Background

3.  The respondent was established in March 1988.  There were various changes of the company name and in January 2003 it adopted its present name “中國平安保險(集團)股份有限公司” (Ping An Insurance (Group) Company of China, Ltd.  The evidence shows that as of 2002 it was the second largest insurance company in the Mainland.  It had over 31 million customers, 70 Branch offices, 3600 sub-branch offices and in addition to the 8000 employee it had 180,000 sales agents.  Mr Yao Jun, the Chief Legal Officer and Joint Company Secretary, gave evidence that the respondent offered multiple financial, insurance and trusts services under the same roof.  It has a trust company, China Ping An Trust and Investment Company Ltd, which, apparently is commonly known as Ping An Trust (中國平安信託投資有限責任公司).   It also has a securities business, Ping An Securities Company Ltd, known as Ping An Securities (平安證券有限責任公司).  As of December 2003 it was one of 55 trust companies authorised by the Peoples Bank of China, the central bank of the People’s Republic, to operate trust business in the Mainland.  Although Ping An Securities is based in the Mainland, it operates an internet financial portal which is referred to as PA-18.  Even as long ago as 20 August 2003 it had 300 customers who were Hong Kong residents.  Those customers could trade in B shares listed on the Shanghai and Shenzhen stock exchanges.  By August 2003, the value of stocks held by Ping An Securities on behalf of its Hong Kong customers was some HK$138,523,781.30.  In addition there was a small amount in US dollars.

13.  Baron Capital was not known to this court, despite the fact that the judge below referred to it as an “established” company.  Furthermore, reference to the daily quotes of shares showed that Sungreen International Holdings Ltd seemed to be a very sparsely traded share.  When this matter first came before this court, two years after the IPO, its share price was listed at standing at 193 P/E and no dividend was recorded.  The fact that a private placement was underwritten reflected very little on the underwriter.  It seemed curious that the applicant might claim any specific reputation as a result of underwriting placements particularly in view of the fact that in the case of Sungreen International Limited only $50 million less expenses had been raised.  In this respect in March 2003 the “Report by the Expert Group to Review the Operation of the Securities and Futures Market Regulatory Structure” had referred to listings of that size as indicating poor and inferior quality: see Chapter 2 of the Report.  Finally, GR Investments International Ltd had changed its name to Prosperity Investment Holdings Ltd but had made losses in 2004 and 2005 and had only made a profit by 2006.  The most recent quote still shows that the shares of this company as having no yield but the P/E is now down to a more respectable 16.2.

14.  In order to understand the significance of the applicant being owned by the Baron Group, this court of its own motion undertook a brief internet search.  The result of the search forms exhibit STP-11 to the fourth affirmation of Michael Sze.  The contents of that exhibit, namely copies of articles which had appeared on the “Webb Page” would appear to show dealings that put the Baron Group in an unflattering light, to say the least.  This court, therefore, considered it appropriate to draw to the parties’ attention what had come to the court’s attention as a result of attempting to understand the applicant’s own evidence in relying on its connection with the Baron Group.

15.  Naturally, an adjournment was sought.  The parties were given an opportunity to file further evidence.  Mr Michael Sze filed a further affirmation in which amongst other things he sought to criticise the writer of and proprietor of the Webb Page.  The subject matter of that criticism would appear to be irrelevant as regards the articles in question or their import and somewhat tendentious in view of the newspaper article upon which the criticism was based.

16.  In contrast to his first affirmation, Mr Michael Sze sought in paragraph 11 of his fourth affirmation to distance the applicant and himself from the Baron Group.  He explains how the Baron Group was wholly owned by Mr Joseph Wan and he says that the management of the Baron Group and of the applicant was “entirely separate”.  He says that “neither Mr Joseph Wan nor any other companies or officers of Baron have influenced or interfered, directly or indirectly, with the management and operation of the Respondent (the applicant)”.

17.  Mr Michael Sze also said in his fourth affirmation that he had not been involved in nor had any personal knowledge of the transactions referred to in the Webb Page articles.  This is, perhaps, the most surprising statement of all, not least, because in paragraph 5 of his first affirmation Mr Michael Sze had said that he became the managing director of the applicant on 7 April 2003 and was responsible for the overall operation of the applicant.  The notice of the proposed share consolidation and the open offer to qualifying shareholders on the basis of a three shares for one consolidated share dated 26 May 2003 and the prospectus which was issued on 25 June 2003 relate to matters which are referred to under the heading “GRI makes an open offer” in the article entitled “The Baron Network” dated 14 April 2004.  The applicant apparently received a fee of 1.5%.  The discount was said to be some 72% to the 10-day average price of GR Investment International Ltd.  The article severely criticised this as being a deep discount which would not have been allowed under the Listing Rules in the United Kingdom but was not contrary to the rules in Hong Kong   One of the points of the article was that it was suggested that the Listing Rules should be altered to prohibit such deep discounts.

18.  Mr Sze’s proclaimed ignorance of and non-involvement in the transactions referred to in the article is also surprising given the fact that another of the matters referred to in that article relate to the private placement of the 43 million warrants in Kenfair International (Holdings) Ltd.  That was the subject of the notice dated 25 November 2003 exhibited to Mr Michael Chan’s affirmation.  That placement was underwritten by the applicant and Hantec International Finance Group Limited for a fee of 3% of the placing price.  The net effect of that placement was that the combined purchase and exercise price of the warrants was $1.27 which was said to be an 18% discount to the market price.  The shares underlying the warrants were equivalent to 20% of the then existing issued shares.  The Baron Group took up 49.31% of that issue.  Again the article points out that there appeared to be a lacuna which required attention in the Listing Rules.

19.  Mr Sze states that he had contacted Mr Joseph Wan and had been told that he had clarified the issues raised in the Webb Page articles with the Securities and Futures Commission and that that body was satisfied with Mr Wan’s “clarifications” and decided to take no action against the Baron Group.  However, when the Webb Page articles are read with a modicum of care it can be seen that it is not surprising that no action was taken because, as the articles point out, although it would appear that in both these transactions the Baron Group profited considerably in a manner which was quite arguably to the considerable disadvantage, if not abuse, of the minority shareholders, the article portrayed this as being a lacuna in the Listing Rules.

20.  One thing, however, did emerge from the further evidence namely that Mr Joseph Wan, who is the owner of Baron Capital which in turn owns the 50.1% stake in the applicant, had been found guilty in 1996 of failing “to meet the standards of commercial conduct and behaviour that the SFC, through the Takeovers Code, seeks to achieve and considers acceptable for advisers in takeover transactions.”  Specifically, the SFC found that Mr Wan failed to ensure the accuracy of announcements made in connection with a proposed acquisition and general offer.  As a result Mr Wan’s registration as an investment adviser was suspended for a period of 12 months effective from 6 March 1998.

21.  It had also previously been known that amongst others Mr Michael Chan and Ping On Securities Ltd had been prosecuted in the Western Magistracy on 24 June 1998 in relation on three summonses in relation to aiding and abetting three employees of Ping On Securities Ltd who were not registered with the SFC to perform functions of dealers representatives.  They were fined $3000 each and ordered to pay $30,000 costs.  They were both fined by the Disciplinary Committee of the Stock Exchange, the applicant in the sum of $40,000 and Mr Chan in the sum of $10,000.  Both were publicly reprimanded by the SFC.

22.  In my view Mr Sze’s evidence in relation to the change of name by the applicant on 26 May 2003 has to be considered with some scepticism if not outright disbelief.  Mr Michael Chan in his affirmation referred to that change on 6 May 2003 being made by the new management of the applicant to reflect the Mandarin translation and the nationality of the new management.  In his first affirmation Mr Michael Sze went further.  He said:

“

Being a Shanghainese, I felt that the English name of the Applicant, “Ping On”, is pronounced too Cantonese and thereby decided to change it to “Ping An” to reflect the Mandarin transliteration and the new management.  Indeed, the Chinese transliteration or translation for “Ping On” and “Ping An”, i.e. 平安 are the same and identical and that there can be no other interpretations.”

23.  In his the second affirmation Mr Michael Sze went so far as to say that he did not even know of the existence of the respondent until its listing on the stock exchange in June 2004.  This is repeated in paragraph 19 of his fourth affirmation.  One can only conclude that Mr Sze’s professed desire to demonstrate a connection with Mandarin and the Mainland was not accompanied by any knowledge of what was taking place in the Mainland nor on the financial markets there.  Indeed his knowledge of investments in Hong Kong securities could not have extended to any knowledge that one of the largest companies quoted on the Hong Kong stock exchange had invested more than 5 billion RMB in a major Mainland company.  Such professed ignorance is more likely incredible since, if it were true, it would reflect what would be little short of rank incompetence of any stock broker.

24.  It was made clear in the course of the hearing that such statements of professed ignorance on the part of Mr Sze would likely be received with outright incredulity.  Mr Shipp, who appeared on behalf of the respondent, was unwilling to argue that Mr Sze should not be believed, because there had been no cross-examination of Mr Sze in the court below.  In my view cross-examination of Mr Sze, in the context, would really have been a formality.  What is evident is that the major shareholder of the applicant, namely Mr Wan, whose own reputation in the financial field, particularly as to the honesty of statements made to the market for which he has been held responsible, is by no means fragrant, has given no evidence.  Mr Michael Chan, whose reputation is also not without blemish, merely sought to give evidence on behalf of Mr Michael Sze.  A change of a company name requires a special resolution.  It would thus not have been possible for any change of the company name of the applicant to have taken place without the concurrence of both those persons as well as Mr Michael Sze.  Mr Joseph Wan has provided no evidence.

25.  In the court below the judge accepted the reasons given by the applicant for the change of name from Ping On to Ping An.  Given the fact that there was no evidence from the major shareholders of the applicant in relation to that and given the nature of the evidence at the time it was before the judge, I do not consider that that finding was one that was sound.  Given the further evidence which has now emerged, that is a finding to which the applicant is clearly not entitled.  The fact is that Ping An and Ping On are different.  The only possible conclusion is that at the time the name was changed those in control of Ping On Securities Ltd knew full well about the respondent, knew that HSBC had made a major investment in it and was content that if there were to be confusion between its new name and that of the respondent that that should happen.

The decision below

26.  The judge below accepted the applicant’s broad claim to reputation without any true analysis of the evidence that was put forward.  In particular, the judge was prepared to accept that “Ping An” was the same as “Ping On” and that reputation in “Ping On” was carried forward to the new name.  As already referred to, the figures quoted by the applicant for turnover are by no means impressive in the way that the judge apparently considered them to be.  In accepting the bald statement that the applicant was, for example, involved in organising IPO’s the judge clearly did not give careful consideration to the implication to be derived from the exhibits referred to above.

27.  The judge correctly considered that the question in this case turned upon whether the applicant established its case of passing off in accordance with section 12(5)(a) of the Trade Marks Ordinance Cap. 559 (“the Ordinance”).  In doing that he went on to say:

“	If such reputation is thus established, the effect is that the claimant acquires a quasi–proprietory right to the exclusive use of the mark in relation to goods or services of that kind.  Thus the use by another of that mark or one deceptively similar becomes an invasion of that right, for it is likely to induce customers to buy from him and divert prospective business from the claimant.
	41.	The important test in an action mounted is whether or not the claimant has built up a goodwill to the extent that significant damage will be caused by such misappropriation.”

28.  The judge appears to have concentrated on the question of whether there was an exclusive right.  In paragraph 55 of the judgment the judge said:

“	And further, the respondent as registered owner of the marks will be able to stop the applicant from brokering under its own name, as has been carried on by it and its predecessor for more than 30 years.”

29.  In saying that the judge could clearly not have had in mind section 19(3)(a) of the Ordinance which provides that the use by a person of his own name does not constitute an infringement of the trade mark.

30.  In paragraph 56 of the judgment the judge said that the applicant was

“	...entitled to the protection it now seeks, which is to enjoy exclusive use of its marks in Hong Kong.”

This Appeal

The grounds for rectification

31.  The grounds upon which rectification of the respondent’s trade marks is sought is under section 12(5)(a) of the Ordinance.  That reads:

“	(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); or
		(b)	by virtue of an earlier right other than those referred to in paragraph (a) or in subsections (1) to (4) (in particular, by virtue of the law of copyright all registered designs),
		and a person thus entitled to prevent the use of a trade mark is referred to in this Ordinance as the owner of an “earlier right” in relation to the trade mark.”

32.  This provision is a comparatively new provision.  The new provision follows a similar change in the United Kingdom legislation namely under the Trade Marks Act 1994.  It replaces provisions which did not determine validity of a mark in terms of passing off.  The essence of a passing off action is that one trader must prove that he has acquired goodwill or reputation attached to goods or services in the mind of the purchasing public by association with an identifying get-up (whether it be a brand name or whatever) such that the public recognise that get-up as distinctive specifically of his goods or services, there must be a misrepresentation by another trader which is likely to lead to the public to the belief that the goods or services offered by him are those of the other and there must be damage.  See the analysis by Lord Oliver in Reckitt & Colman Products Ltd. v Borden Inc [1990] RPC 341 at 406.

33.  This court’s attention was drawn to the decision of Geoffrey Hobbs  QC, sitting as the Appointed Person, in the case of WILD CHILD Trade Mark [1998] RPC 455.  As was pointed out in that decision the question raised is whether normal and fair use of the particular mark registered for the purpose of distinguishing the goods, or in this case the services, from those of other undertakings was liable to be prevented at the date of application for registration by an action for passing off.  For that purpose it is necessary to consider the law of passing off.  Mr Hobbs did so by referring to Halsbury’s Laws.  The equivalent sections of Halsbury’s Laws of Hong Kong can be usefully quoted:

“	[225.001]	Elements of the action for passing off
	The House of Lords has restated the necessary elements which a plaintiff has to establish in an action for passing off:
		(1)	the plaintiff’s goods or services have acquired a goodwill or reputation in the market and are known by some distinguishing feature;
		(2)	there is a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the plaintiff; and
		(3)	the plaintiff has suffered or is likely to suffer damage by reason of the erroneous belief engendered by the defendant’s misrepresentation.
	The restatement of the elements of passing off in the form of this classical trinity has been preferred as providing greater assistance in analysis and decision than the formulation of the elements of the action previously expressed by the House of Lords.  However, like the previous statement of the House of Lords, this latest statement should not be treated as akin to a statutory definition or as if the words used by the House of Lords constitute an exhaustive, literal definition of ‘passing off’, and in particular should not be used to exclude from the ambit of the tort recognised forms of the action for passing off which were not under consideration on the facts before the House of Lords.”

34.  In that passage the cases of Reckitt & Colman Products Ltd. v Borden Inc and Erven Warnink BV v J Townend & Sons (Hull) Ltd. [1979] AC 731 were cited.  Further down is to be found the following:

“	[225.020]	Establishing deception or confusion
	To establish a likelihood of deception or confusion in an action for passing off where there has been no direct misrepresentation generally requires the presence of two factual elements:
		(1)	that a name, mark or other distinctive feature used by the plaintiff has acquired a reputation among a relevant class of persons; and
		(2)	that members of that class will mistakenly infer from the defendant’s use of a name, mark or other feature which is the same or sufficiently similar that the defendant’s goods or business are from the same source or are connected.
	While it is helpful to think of these two factual elements as two successive hurdles which the plaintiff must surmount, consideration of these two aspects cannot be completely separated from each other, as whether deception or confusion is likely is ultimately a single question of fact.
	In arriving at the conclusion of fact as to whether deception or confusion is likely, the court will have regard to:
		(a)	the nature and extent of the reputation relied upon;
		(b)	the closeness or otherwise of the respective fields of activity in which the plaintiff and the defendant carry on business;
		(c)	the similarity of the mark, name etc used by the defendant to that of the plaintiff;
		(d)	the manner in which the defendant makes use of the name, mark etc complained of and collateral factors; and
		(e)	the manner in which the particular trade is carried on, the class of persons who it is alleged is likely to be deceived and all other surrounding circumstances.
	In assessing whether confusion or deception is likely, the court attaches importance to the question whether the defendant can be shown to have acted with a fraudulent intent, although a fraudulent intent is not a necessary part of the cause of action.
	The evidence which is admissible on the question of likelihood of deception or confusion, and the way in which the court assesses it, including the significance to be attached to the presence or absence of actual instances of confusion, are discussed later in relation to both passing off and infringement of trade marks.”

35.  The judgment in the WILD CHILD Trade Mark case has been cited with approval in other cases including in particular in the judgment of Pumfrey J (as he then was) in REEF Trade Mark [2002] RPC 397 and by Laddie J in Dixy Fried Chickens (Euro) Ltd v Dixy Fried Chicken (Stratford) Ltd [2003] EWHC 2902 (Ch).

36.  If one considers, therefore, the manner in which the applicant has traded in the past, the first matter which is apparent is that the name Ping On and Ping An and the characters平安have been used almost exclusively, if not always, as part of the name of the firm and the name of the company.  Despite the fact that massive documentation was exhibited in this case, it does not appear that there has been any, or giving the applicant the benefit of any doubt, any significant use of the words Ping On and Ping An and the characters平安on their own: they have always been used as part of the names of the firm and the company.  Furthermore, there has been no advertising as the regulations relating to the stockbroking industry do not permit it.  As Mr Shipp pointed out the applicant has also always used the words and characters in conjunction with its own logo and, very frequently, in conjunction with reference to the Baron Group.

37.  Mr Shipp stressed in argument that whatever reputation the applicant had, it extended very little further than the 3,000 clients it had had over the years.  In my view his assessment has the ring of reality about it.  The applicant is a small stock broker with a very limited client base.  Its reputation clearly extends little beyond that.

38.  In my view the scope for an action for passing off by the applicant by reason of the use of Ping An or the characters平安by the respondent as of the date of the application for the trade marks was not sufficient to render the trade marks unregisterable.  If the trade marks were used by the respondent in a normal and fair way in respect of the services for which they were registered, I do not consider that there would be confusion between the respondent’s business and the applicant’s business.  Apart from the extent of the applicant’s reputation, clearly the manner in which the securities trade is carried on and the manner in which the respondent as well as applicant traded would militate against any confusion.  In my view there is no scope for those in respect of whom the applicant has a reputation being deceived by a normal and fair use by the respondent of its marks.  The distinction between the businesses would at once be obvious even to the proverbial “moron in a hurry”.  Whether or not any potential clients of the applicant might make enquiries as to whether the applicant were connected with the respondent, which would be a reverse type of passing off, would be a different question but again, I do not consider that there would be a sufficient likelihood that the businesses would be confused.  In this respect, it is not impertinent to point out that the applicant changed its name some months before the date of the application for the trade marks.  In my view, particularly in the light of the further evidence which has emerged, there has not been a proper explanation for that change by those who had majority control of the applicant and the antecedents of the majority shareholder of the applicant is one of permitting deception of the market.

39.  It also has to be noted that the judge below approached the matter on the basis that there was some form of proprietary rights in the words Ping On and Ping An and the characters平安.  In doing so he was coming close to confusing an action in passing off with an action for infringement of trade mark.  An action for passing off does not give rise to an exclusive right in any get-up as such.  Hence, in many instances the words “without clearly distinguishing the defendant’s goods (or services) from the plaintiff’s” is inserted as part of a final injunction.  The judge also appears to have taken into account, wrongly, the consideration that the applicant would be prevented from using its own name.

40.  I would therefore allow this appeal, set aside the judgment below and make an order nisi of costs in favour of the respondent.

Hon Le Pichon JA:

41.  I agree with the judgment of Rogers VP.

Hon Barma J:

42.  I agree that this appeal should be allowed for the reasons set out in paragraphs 31 to 39 of the Vice President’s judgment and with the costs order nisi proposed by him.  I would also add that while I share the Vice President’s concerns about the quality of the evidence filed by the appellant, I would have come to the same conclusion as to the outcome of this appeal regardless of those concerns.

Hon Rogers VP:

43.  There will therefore be an order in terms of paragraph 40.