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)

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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 decision and order of Reyes J given on 8 December 2003. In that decision the judge held that the service of the notice of originating motion in this action on the solicitors, which was the address for service as recorded in the register of trade marks, was not valid service on the respondent. The order made was that the service of the notice of originating motion be set aside and that the costs should be paid by the applicant. At the conclusion of the hearing of this appeal this court reserved its judgment which we now give.

Background

2. The applicant in this matter seeks rectification of the register of trade marks on the ground that Hong Kong trade mark registration no. B3598 of 1995 "PORTER and Device" in Class 18 ("the said trade mark") is invalid. For the purposes of this judgment, it is unnecessary to give a detailed account of the background to this case. It suffices to say that it is the applicant's case that it was the original owner of the trade mark "PORTER and device" and that Porter International Co. Ltd ("Porter"), a Taiwanese company, has wrongfully registered that mark in circumstances where it was well aware that it was not entitled to claim to be the proprietor. Although a writ was issued by the applicant against Porter International Co. Ltd in May 2003, that writ, seeking relief in respect of passing off and an order for transfer of the said trade mark, has not been served.

3. There has also been an action which has been brought against the applicant's authorised distributor in Hong Kong, Top and Top Limited. Those proceedings have been brought by Sunlit Porter Holding Company Ltd which is registered as the exclusive licensee in respect of the said trade mark in Hong Kong. It brought the proceedings as exclusive licensee naming Porter as the 2nd defendant. Whatever other steps have been taken in that action Porter has not entered an appearance.

4. The applicant now wishes to bring proceedings to rectify the register by removal of the registration of the said trade mark. Under section 53 of the Trade Marks Ordinance, Cap. 559 ("the Ordinance"), proceedings for a declaration of invalidity may be brought either before the Registrar or the court. However, under section 77, if there are any proceedings concerning the registered trade mark, such an application has to be made to the court. It might be mentioned, at this stage, that one of the matters which appears to have been misunderstood in the court below was that Order 100 of the Rules of the High Court does apply to the Ordinance. Although the current version of the Laws of Hong Kong indicates against sections 98-99 of the Ordinance and in respect of Schedule 6 that those items have been "Omitted as spent", when the earlier versions of the Ordinance are considered it is clear that section 98 provided that:

"The enactments specified in Schedule 6 are amended in accordance with that Schedule."

and Schedule 6 paragraph 2 provided that Order 100 rule 2 of the Rules of the High Court had been amended to refer to the Ordinance in lieu of the previous Trade Marks Ordinance, Cap. 43. The net effect is not disputed, namely that rectification proceedings in respect of the said trade mark must, at present, be brought by notice of originating motion before the High Court.

5. The difficulty in this matter has arisen because the notice of originating motion was served on Porter at the address for service given in respect of the said trade mark, namely "Cheung & Choy, room 612, Wing On Centre, 111, Connaught Road, Central, Hong Kong.".

6. Porter has not appeared in these proceedings. However the solicitors, Cheung & Choy, instructed counsel in the court below and in this court to appear and argue that the service of the notice of originating motion was invalid and should be set aside. In doing so it has been readily conceded that Porter is well aware of these proceedings. As a result of the application by the solicitors, the order was made in the court below.

7. In this court Mr Pao, who appears on behalf of the applicant, argued that the service of the notice of originating motion at the address for service was valid service and that the order below was wrongly made. In my view his contention is correct. Even if it were not correct, the court below should have proceeded to give directions in the matter and ultimately to hear the notice of originating motion.

Service of the notice of originating motion at the address for service

8. Although there are no specific provisions which require the proprietor of a trade mark to be served with a notice of originating motion seeking rectification of that trade mark, it is accepted by both parties in these proceedings that that is appropriate. I leave it open for decision on another occasion as to whether that is in fact requisite. The cases to which reference will be made below were decided on earlier legislation. They proceeded on the basis that a proprietor does not need to be made a respondent to a notice of originating motion but that it is sufficient if he is given notice of the proposed application. Indeed, in the first case a direction was given to amend the notice of originating motion by removing reference to the proprietor as being a respondent.

9. The relevant provisions, so far as have been brought to the attention of this court are contained in Order 100 rule 2 of the Rules of the High Court. Sub-rule (2) provides that all applications to the court must be made by originating motion and sub-rule (3) provides that the notice of originating motion must be served on the Registrar of Trade Marks. There is nothing either in the Rules of the High Court or the Ordinance which requires that a proprietor should be made a respondent to a notice of originating motion to rectify the register in respect of a trade mark but, assuming that the notice of originating motion must name the proprietor as a respondent, the question then arises as to how service should be effected.

10. In relation to service of the notices of originating motion in general reference can be made to Order 10 rule 5(2) of the Rules of the High Court which provides that the same rules apply in relation to those notices as apply in relation to a writ. The question of service outside the jurisdiction is dealt with, of course, under Order 11. In many instances leave is required for service of proceedings outside the jurisdiction. However, Order 11 rule 1(2)(b) provides that there may be service outside the jurisdiction without leave where a claim "... which by virtue of any written law the Court of First Instance has power to hear and determine notwithstanding that the person against whom the claim is made is not within the jurisdiction of the Court....". When this provision was first referred to during this appeal, Mr Shipp, who appeared on behalf of the solicitors, argued that it was not applicable to notices of originating motion for rectification of trade marks. However, after some time for reflection on the matter, in a further written submission on behalf of the solicitors and in the course of the resumed hearing of this matter, Mr Shipp confirmed that his submission was that Order 11 rule 1(2)(b) did indeed cover notices of originating motion of the type with which this case is concerned.

11. It might be added that if leave to serve notice of the proceedings outside the jurisdiction were required, it would be an almost foregone conclusion that such leave would be granted. This application relates to a Hong Kong trade mark. The only court which has jurisdiction to rectify the register is the Court of First Instance. The rights in respect of Hong Kong trade marks are effective in Hong Kong and nowhere else. Coupled with this, the courts have always regarded it as important that only valid trade marks should remain on the register. In distinction to other monopolies, such as patents in respect of which the courts have not taken it upon themselves to interfere unless a party brings meritorious as well as fully formulated grounds for restriction or invalidity, the courts have adopted what might now, perhaps, be referred to as a more proactive approach. The classic, quaintly worded and oft-repeated statement in this regard was made by Bowen LJ in Paine & Co. v Daniells and Sons' Breweries, In Re Paine & Co.'s Trade-Marks [1893] 2 Ch 567 where he said at page 584:

"The purity of the register of trade-marks - if one may use the expression - is of much importance to trade in general, quite apart from the merits or demerits of particular litigants. If on a motion like the present the attention of the Court is called to an entry on the register of a trade-mark which cannot in law be justified as a trade-mark, it seems to me that the Court's duty may well be, whatever the demerits of the applicant, to purify the register and to expunge the illegal entry in the interests of trade, as was done in the "Stone Ale" case."

The notion that any person who has a legitimate ground for bringing proceedings to rectify the register of trade marks could not obtain leave to make the necessary service of such proceedings outside the jurisdiction would be absurd.

12. The Ordinance makes provision for an address for service. Under section 91(2)(g) it is provided that:

" Without prejudice to the generality of subsection (1), rules made under this section may make provision-

...

(g) as to the service of documents;"

That is a general provision. The service there referred to is not restricted in any way. It is not confined to any particular documents. It is certainly not restricted to service of documents which are used in the Trade Marks Registry. When it is borne in mind that the Ordinance refers specifically to applications having to be made in court the reference to service of documents is, in my view, on the face of the Ordinance, clearly a reference to service of all types of documents, including documents relating to proceedings in court.

13. Rules have, naturally, been made under the provisions of section 91. In particular Rule 105 of the Trade Marks Rules relates to the filing of an address for service. Every person who files an application for registration of a trade mark is required to file an address for service which must, under sub-rule (2), be an address in Hong Kong. Unless this address for service is changed, it carries through to the advertisement stage and, following that, the registration of the trade mark. As demonstrated in this case, when a search is made of the register, the address for service will be apparent. There are other sub-rules, for example there are sub-rules (5) and (6) which refer to use of the address for service in proceedings before the Registrar. 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. Neither can the wording on any of the forms used by the Registrar alter the effect of the statutory provision which stipulates that an address for service may be made a mandatory requisite in the process of registration of a trade mark.

The history of the practice in relation to service of notices of originating motion

14. The conclusion to which I have arrived is, in my view, confirmed by an analysis of the historical derivation of the provision. In the Patents, Designs, and Trade Marks Acts, 1883-1888 there were two provisions in relation to the filing of an address for service, namely sections 62(6) and 69(6). These were, however confined, in the first place, to proceedings in relation to the registration of a trade mark and the latter section was a provision requiring an opponent to a registration to provide such an address if he were out of the jurisdiction. There was no general provision requiring an address for service. It was not until the Trade Marks Act 1905 that a general requirement for an address for service was introduced. Under section 60(1)(a) of that Act rules could be made by the Board of Trade for regulating the practice under the Act. One of the rules made under that Act in 1906 was that there should be an address for service. Under rule 9, the Registrar was given power to require the proprietor of a registered trade mark who did not reside or carry on business within the United Kingdom to give an address for service within the United Kingdom. The provisions of 1905 Act and 1906 Rules were mirrored in Hong Kong in the Trade Marks Ordinance which came into effect on 1 April 1910 and in the Rules. Under section 57 of that Ordinance, the Governor in Council was given power to make rules and prescribe forms as he thought expedient for regulating the practice under that Ordinance. Rule 9 of the Trade Marks Rules made under that provision mirror imaged the rule made under the 1905 Act.

15. The change in the statutory provisions had a marked effect on the practice. Under the 1883-1888 legislation the question had arisen as to whether a foreign registered proprietor could be served with a notice of originating motion relating to his trade mark. The case of In re La Compagnie Générale d'Eaux Minérales [1891] 3 Ch 451 concerned a rectification application in respect of a trade mark owned by a foreign company which did not carry on business within the jurisdiction. The notice of originating motion was served on the company in Paris. Stirling J reached the conclusion that the service of the notice of originating motion in Paris was an abuse of process because it could not be served out of the jurisdiction. However, he went on to direct that "The name of the foreign company should be removed from the notice of motion as Respondents altogether". He then directed that a copy of the notice of originating motion should be sent to the foreign company with an intimation that it was sent in order that the company could be informed that proceedings were pending in the court which may affect its interests.

16. In the following year that procedure was adopted by the applicants in the case of In Re King & Co.'s Trade-Mark [1892] 2 Ch 462. Slightly different issues were involved because the proprietor of the trade mark in issue in those proceedings was an Irish company. Nevertheless the matter went to the Court of Appeal and the procedure outlined by Stirling J was approved. Lindley LJ, for example, said that it was sufficient if the proprietor had notice. At page 482 he said:

"The procedure is nowhere fixed. Any procedure which comes up to an Englishman's standard of justice is enough to satisfy this Act. What is required by our notions of justice is, that no man shall have his case disposed of, or be aggrieved or interfered with, without ample notice to him, and an ample opportunity of shewing cause against it."

Translating that into a more universal test, one might say that what was required was that the proprietor should have sufficient notice of the application to rectify to enable him to take adequate steps to defend his registration. The conclusion was reached in that case that it was not necessary to serve the notice of originating motion on anybody other than the Comptroller (the equivalent of the Registrar), the rules only provided for that, and that it would suffice if adequate notice were given to the proprietor of the mark.

17. Whilst the procedure outlined by Stirling J and approved by the Court of Appeal in those cases appears to be recognised as appropriate where necessary, even to this day, the introduction of the provisions in the 1905 legislation and its corresponding legislation in Hong Kong has rendered its use unnecessary in most instances. Hence, whereas the first edition of The Law of Trade Marks by D.M. Kerly, 1894, referred to those two cases and the procedure outlined in them as being the appropriate procedure for the service of originating notices of motion on foreign trade mark owners, when the fourth edition of his work came to be published in 1913 the same reference to the two cases was still retained but it was then followed by a reference to the statutory provisions relating to the address for service.

18. Later enactments carried on the provisions relating to the address for service. For example section 90 of the Trade Marks Ordinance which came into force on 1 January 1955, gave the Governor in Council power to make rules to prescribe or provide for regulating the practice under the Ordinance including service of documents.

19. Before concluding this aspect I would also refer to the case of Johnson and Johnson's Application [1991] RPC 1 where Mummery J interpreted in provisions in the Trade Marks Act 1938 and the Trade Marks Rules 1986 which were similar to the current Hong Kong Ordinance and rules. In relation to the provisions relating to an address for service he held that an address provided in accordance with those provisions would be an address at which service could be made of a notice of originating motion on appeal from the Registrar of Trade Marks.

Conclusion

20. In these circumstances I have no doubt that the proper construction of the Ordinance and the rules dictates that the service which was effected at the address of the solicitors in this case was good service on Porter. Even if it had not constituted good service, the cases to which reference has been made demonstrate that if adequate notice has been given to the proprietor, an originating motion for rectification of a trade mark can be moved without further ado. I would observe that the notes in the Hong Kong Civil Procedure 2004 refer at 11/9/1 to the In re La Compagnie Générale d'Eaux Minérales and the In re King & Co.'s Trade-Mark cases as supporting the proposition that notice of an originating motion can be given to a party outside the jurisdiction without an order. In this case, as has been noted, there is no question but that Porter has had adequate notice.

21. In those circumstances I would set aside the order below and make an order remitting this case to the Court of First Instance. Directions for hearing of the notice of originating motion have not been given. Such directions are usually in standard form and counsel appearing in this case indicated that they should have no difficulty in agreeing those directions. Should they be able to do so, those should be submitted to the Court of First Instance in writing with a consent summons so that an order can be made without necessitating a hearing simply for the giving of directions. I would also make an order nisi of costs in favour of the applicant against the solicitors since they were the party which made the application to set aside the service of the notice of originating motion and were the respondents on this appeal.

Hon Le Pichon JA:

22. I agree.