CHIKARANOMOTO COMPANY CO LTD v. A-1 BAKERY CO (HK) LTD

HCMP 354/2011
HCA 364/2011

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO. 354 OF 2011

ACTION NO. 364 OF 2011

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BETWEEN

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(Consolidated by the Order of the Honourable Mr. Justice Au
dated the 23^rd day of March 2011)

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J U D G M E N T

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1.  This is an application by the plaintiff for an order under O. 27; r. 3 RHC for judgment on admissions of fact made by the defendant in its consolidated statement of amended defence (“the defence”).

2.  By a summons dated 13 June 2011 the plaintiff asks for an order that it be at liberty to enter judgment against the defendant on its claim for a declaration that Trade Mark No. 300757323 in respect of “Japanese restaurant services, provision of Japanese food and drink; all included in Class 43” (“the defendant’s trade mark”) is invalid in its entirety as regards all such services and that the defendant’s trade mark be removed from the Register of Trade Marks accordingly.

3.  The plaintiff’s claims against the defendant are for injunctive relief, damages and consequential orders in respect of its claims for infringement of copyright and passing off as fully pleaded and particularised in the consolidated statement of claim (“the statement of claim”).  The plaintiff also claims a declaration that the defendant’s trade mark is invalid and an order that the defendant’s trade mark be removed from the Register of Trade Marks.

4.  The plaintiff’s summons for judgment on admissions is in respect of its claim for a declaration that the defendant’s trade mark is invalid and an order that the defendant’s trade mark be removed from the Register.  The plaintiff relies on admissions made by the defendant in the defence at paragraph 24(f) where the defendant pleads :

“ The Defendant’s Trade Mark was and is not being used as an indicator of source or origin but merely as a trading name.”

5.  As the function of a trade mark is to indicate origin, Mr. Shipp submits that the defendant’s trade mark should not have been registered and that the Court should grant the declaration sought and an order that the trade mark be removed from the Register.

6.  As I pointed out to Mr. Shipp in the course of his arguments, the Court can only give judgment to a party on its pleaded case.  It was never the plaintiff’s pleaded claim in the statement of claim that the defendant’s trade mark failed to satisfy the meaning of a trade mark under section 3(1) of the Trade Marks Ordinance (Cap. 559) (‘the Ordinance’) which provides that a “trade mark” means any sign which is capable of distinguishing the goods or services of one undertaking from those of other undertakings and which is capable of being represented graphically.

7.  The defendant’s trade mark was registered in about 2006.  The registration of the defendant as the owner of the defendant’s trade mark is prima facie evidence of the validity of the registration (section 80 of the Ordinance).  It is for the plaintiff to show that the registration is invalid. 

8.  In the statement of claim the only pleaded grounds for invalidity of the defendant’s trade mark relied on by the plaintiff are to be found in paragraphs 24 to 27 of the statement of claim. 

9.  Paragraph 24 relies on the matters pleaded in paragraphs 5 and 19 and asserts that the defendant’s trade mark should not have been registered because the application for registration was made in bad faith within the meaning of section 11(5)(b) of the Ordinance.

10.  The particulars of bad faith are given in paragraphs 5 and 19 of the statement of claim.  These are matters in dispute which can only be resolved at trial. 

11.  Paragraph 25 relies on the matters pleaded in paragraphs 6 to 20 and asserts that the registration of the defendant’s trade mark was granted contrary to section 12(5)(a) of the Ordinance.

12.  The plaintiff relies on its earlier use since 1986 of the plaintiff’s marks and the acts of passing off by the defendant as pleaded and particularised in paragraphs 6 to 20 of the statement of claim.  These are also matters in dispute which can only be resolved at trial.

13.  Paragraph 26 relies on the matters pleaded in paragraphs 3 to 5 and asserts that the registration of the defendant’s trade mark was granted contrary to section 12(5)(b) of the Ordinance. The plaintiff relies on its ownership of the copyright in the artistic work and infringement of the plaintiff’s copyright as pleaded and particularised in paragraphs 3 to 5.  These are also matters in dispute which can only be resolved at trial. 

14.  The above are the only grounds relied on by the plaintiff for its plea in paragraph 27 that the defendant’s trade mark is and has always been invalid and is liable to be removed from the Register.

15.  As I have said, the plaintiff did not claim relief in the statement of claim on the ground that the defendant’s trade mark failed to satisfy section 3(1) of the Ordinance. In the exercise of my discretion I dismiss the plaintiff’s application.