HCMP004779/2003
HCMP 4779/2003
IN THE HIGH COURT OF THE
HONG KONG SPECIAL ADMINISTRATIVE REGION
COURT OF FIRST INSTANCE
MISCELLANEOUS PROCEEDINGS NO. 4779 OF 2003
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IN THE MATTER of Section 53 and Paragraph 17(2) in Schedule 5 of the Trade Marks Ordinance (Cap. 559)
AND
IN THE MATTER of an Application by YOSHIDA & CO. LTD ("the Applicant", a company organised and existing under the laws of Japan) for a Declaration of Invalidity of Trade Mark Registration No. B3598/1995 of "PORTER & DEVICE" in Class 18 in the name of PORTER INTERNATIONAL CO. LTD ("the Respondent", a company organised and existing under the laws of Taiwan)
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Coram: Hon Reyes J in Chambers
Date of Hearing: 1 December 2003
Date of Decision: 8 December 2003
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D E C I S I O N
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Background
1. By a Notice of Motion ("the Notice") dated 30 October 2003 the Applicant sought a Declaration, pursuant to Trade Marks Ordinance (Cap. 559) ("TMO") s. 53, that Hong Kong Trade Mark Registration No. B3598 of 1995 of "Porter & Device" in Class 18 ("the Trade Mark") was invalid. The Notice was served on the Registrar of Trade Marks ("the Registrar") and on:-
"The Respondent, PORTER INTERNATIONAL CO. LTD, of 2F, No. 86, Sec. 1, Huamei Street, Shi Chiu, Taichung, Taiwan, through its agent for service in Hong Kong, Messrs Cheung & Choy ['the Solicitors'], Room 612, Wing On Centre, 111 Connaught Road Central, Hong Kong."
2. The Applicant claims to be the original proprietor of the Trade Mark. It says that the Trade Mark was misappropriated and wrongly registered by Gallant, an associate company of the Respondent. The Applicant contends that Gallant wrongfully assigned Gallant's purported rights in the Trade Mark to the Respondent by a Deed of Assignment ("the Assignment") dated 6 February 2002. The Applicant says that the Respondent obtained no rights to the Trade Mark by the Assignment. The Applicant served the Notice on the Solicitors because the particulars of the Trade Mark in the Trade Mark Registry ("the Registry") give the Solicitors's name and address as the Respondent's "address for service".
3. There are 2 other current High Court Actions ("the Actions") in respect of the Trade Mark.
4. By a Writ issued on 21 May 2003 in High Court Action No. 1815 of 2003, the Applicant as Plaintiff alleges that the Respondent:-
"passed itself off as part of the Plaintiff and/or associated or in some way connected with the Plaintiff and has passed off, attempted to pass off and/or has authorized, directed, caused, enabled, assisted, procured others to pass off goods not of the Plaintiff's manufacture or merchandise as and for goods of the Plaintiff or goods authorized, approved or endorsed by the Plaintiff."
The Applicant also claims that the Respondent has unlawfully interfered with the contractual relationship between the Plaintiff and its Hong Kong distributor, Top & Top Limited ("Top & Top"). The Applicant seeks injunctions, an order for delivery up, assignment of all relevant Trade Mark registrations and applications, and damages.
5. By a Writ issued on 25 July 2003 in High Court Action No. 2762 of 2003 Sunlit Porter Holding Company Limited ("Sunlit") sues Top & Top and the Respondent. Sunlit claims that the Respondent gave it the exclusive license to use the Trade Mark in Hong Kong. Sunlit says that, in breach of contract, the Respondent has allowed Top & Top to sell products bearing the Trade Mark in Hong Kong. Sunlit seeks an injunction, an order for delivery up, and damages.
6. By letter dated 10 November 2003 to Messrs Wilkinson & Grist (the Applicants' Solicitors), the Solicitors challenged service of the Notice on them. The Solicitors say that they are only the Respondent's agents for service in connection with applications under the TMO and its ancillary Trade Mark Rules ("TMR") brought before the Registrar. Since the Notice concerns proceedings in the High Court, the Applicant must follow the procedures in the High Court Rules. Thus, the Respondent being outside Hong Kong, the Applicant must apply to the High Court under RHC Order 11 for leave to serve outside of the jurisdiction. Service of the Notice on the Solicitors cannot be deemed valid service on the Respondent. Neither the TMO nor the TMR authorises such service of the Notice.
Discussion
7. Mr Tsang (appearing for the Applicant) submitted that the Notice was validly served on the Solicitors by reason of TMO ss. 53(1) and 77 and TMR rr. 46 and 112. Those provisions are as follows:-
(1)
TMO s. 531 :
"Declaration of invalidity of registration
(1)
An application for a declaration of invalidity of the registration of a trade mark may be made by any person and may be made either to the Registrar or to the court."
(2)
TMO s. 77:-
"Procedure in case of option to apply to Court or Registrar
(1)
Where under this Ordinance a person has an option to make an application either to the court or to the Registrar on a question concerning a registered trade mark or an application for registration of a trade mark, then:-
(a)
if any proceedings concerning the registered trade mark or application for registration in question is pending before the court, the application must be made to the court; and
(b)
if in any other case the application is made to the Registrar, he may, at any stage of the proceedings, refer the application to the court, or he may, after hearing the parties, determine the question.
(2)
Subsection (1) is without prejudice to the court's powers, apart from this section, to determine any question referred to in that subsection."
(3)
TMR r. 46:-
"Application for declaration of invalidity
(s. 53, s. 14 of Sch. 3 and s. 16 of Sch. 4 to the Ordinance) (Form T6)(Fee No. 13)
(1)
An application for:-
(a)
a declaration of invalidity of the registration of a trade mark on the grounds mentioned in section 53 of the Ordinance;
...
shall be filed on the specified form.
(2)
The application shall be accompanied by a statement of the grounds on which the application is made.
(3)
The applicant shall, at the same time as he files the application, send a copy of the application and statement of grounds to the owner of the registered trade mark..."
(4)
TMR r. 112:-
"Service of documents
(1)
Except as provided by rules 108, 109, 110 and 111, where any document or other thing is required or authorized by the Ordinance or these Rules to be sent to any person:-
(a)
the document or other thing may be left at, or sent by post to, the address for service of the person; or
(b)
if the persons does not have an address for service, the document or other thing may be sent by post to his last known address.
(2)
Sending by post shall be deemed to be effected by properly addressing, preparing and posting a letter containing the document or other thing, with the postage on it prepaid, to the address for service of the person or, if he does not have an address for service, at his last known address, and unless the contrary is shown, the document or thing shall be deemed to have been received by that person at the time when the letter would be delivered in the ordinary course of post."
8. Mr Tsang further said that the Applicants proceeded by motion as provided by RHC Order 100, Rule 2(2). That reads:-
"Subject to rule 3, every application to the Court under the said Ordinance must be begun by originating motion."
The "said Ordinance" mentioned in Order 100, Rule 2(2) is not the TMO, but the TMO's repealed predecessor, the Trade Marks Ordinance (Cap. 43) ("the Old TMO"). Since enactment of the TMO, RHC Order 100 which contains rules for applications under the Old TMO has not been revised. This means that it is currently unclear to what extent (if at all) the rules in Order 100 remain applicable by analogy or otherwise to proceedings brought before the High Court pursuant to the TMO.
9. None of the provisions cited by Mr Tsang specifically empower a person applying for a declaration of invalidity to serve a Notice on the Hong Kong agents of a trade mark owner situate outside Hong Kong.
10. TMO s. 53 gives a person the option of seeking a declaration of invalidity from the Registrar or the Court. The section says nothing about the procedure to be employed before either forum.
11. TMO s. 77 restricts the Applicant's option to seek a declaration of invalidity before the Registrar. Because the Actions are pending before the Court and concern the Trade Mark, the Applicant must make his application to the Court. At first impression, if a person seeks relief from the High Court, he should follow the procedures set out in the High Court Rules when applying for such relief, in the absence of statutory provision permitting deviation from the High Court Rules. Nothing in TMO s. 77 authorises a deviation from the High Court Rules.
12. On its face TMR r. 46 appears to require use ("shall be filed") of a "specified form" for an application under TMO s. 53. That is not in fact the form used by the Applicant which has taken out the Notice on the strength of RHC Order 100, Rule 2(2) applied by analogy to the TMO. TMR r. 46 says nothing about service.
13. The expression "specified form" in TMR r. 46 is defined in TMR r. 2(1) as follows:-
"'specified form', in relation to any matter or proceeding, means the form specified by the Registrar under section 74 of the Ordinance to be used in connection with that matter or proceeding."
14. TMO s. 74 states:-
"Power to require use of forms
(1)
The Registrar may require the use of such forms as he may, by notice published in the official journal, specify in connection with the registration of a trade mark or any other proceeding before him under this Ordinance.
(2)
A notice under subsection (1) may contain any direction of the Registrar with respect to the use of a form specified in the notice.
(3)
A notice published under subsection (1) shall not be regarded as subsidiary legislation for the purpose of section 34 of the Interpretation and General Clauses Ordinance (Cap.1) ['IGCO']."
IGCO s. 34 concerns the laying of subsidiary legislation before LegCo for vetting.
15. It is helpful also to look at TMR r. 2(2):-
"(2)
Unless the context otherwise requires, any reference in these Rules to the filing of a document or other thing (howsoever expressed) shall be construed as a reference to the filing of the document or thing with the Registrar in accordance with Part 162 .
(3)
Unless the context otherwise requires, any reference in these Rules to a trade mark shall be construed as including a reference to a certification mark, collective mark and defensive trade mark.
(4)
A reference in the heading to a rule to the number of a form is a reference to the number of that form as published in the official journal under section 74 of the Ordinance."
16. What emerges from TMO s. 74 and TMR r. 2 read together, is that the forms specified in the TMR relate to proceedings under the TMO before the Registrar and not the High Court. So, for example, when TMR r. 46 refers to the filing of Form T6, it should be taken as a reference to the filing of Form T6 in the Registry for a proceeding before the Registrar. Indeed, it seems from TMO s. 74 and TMR r. 2 that TMR Part 16 on the filing and service of documents relates solely to the filing and service of documents in connection with matters or proceedings before the Registrar. The procedures in TMR Part 16 do not replace the procedures set out in the High Court Rules, insofar as applications authorised by the TMO to be brought before the High Court are concerned.
17. By way of a check on the foregoing conclusion, I have taken the opportunity to examine Form T6. Mr Tsang referred me to the Intellectual Property Department's website (www.info.gov.hk/ipd), from which I downloaded a copy of Form T6. It is evident from the form and (in particular) the Notes thereto, that Form T6 was solely intended to apply to proceedings before the Registrar. For example, at the bottom of the Notes is the following statement:-
"Personal data provided in this form will be used by the Intellectual Property Department and can be disclosed for purposes relating to the administration of the Trade Marks Ordinance. The personal data required by this form is necessary for processing your application. You can obtain information regarding access to and alteration of your personal data in accordance with the Trade Marks Ordinance and the subsidiary legislation by contacting the Registrar of Trade Marks."
Such statement would be both inapposite and surprising in documents intended to be filed in the High Court Registry for use in High Court proceedings.
18. TMR r. 112 permits service of a document by certain modes (for example, post) on a trade mark's owner's "address for service" filed in the Registry, but only where such document is required or authorised to be sent to the trade mark owner under the TMO or TMR. It follows that, if Mr Tsang is to rely on TMR r. 112, it is necessary for him to point to some other provision, either in the TMO or TMR, requiring or authorising the sending of the Notice to the trade mark owner. He has not been able to point me to any other such provision.
19. There is the added difficulty that TMR r. 112 is to be found in TMR Part 16, which I have concluded relates solely to matters or proceedings before the Registrar.
20. Mr Shipp (appearing for the Solicitors) drew my attention to TMR r. 105. That provides as follows:-
"Filing of address for service
(1)
An address for service shall be filed by every person who files:-
(a)
an application for registration of a trade mark under rule 6;
...
(2)
The address for service must be a residential or business address in Hong Kong.
...
(5)
An applicant for registration of a trade mark may use only one address for service for the purposes of all proceedings before the Registrar concerning that registered trade mark.
(6)
The owner of a registered trade mark may use only one address for service for the purposes of all proceedings before the Registrar concerning that registered trade mark.
..."
21. Mr Tsang disavowed reliance on TMR r. 105. This is not surprising. As Mr Shipp pointed out, TMR r. 105 would not assist Mr Tsang, as TMR r. 105(5) makes it clear that a trade mark owner's "address for service" filed with the Registry relates only to service in connection with proceedings before the Registrar. What TMR r. 105, read in conjunction with TMO s. 74 and TMR r. 2, makes plain is that the Solicitors' address was not a proper one for service for the purpose of High Court proceedings under the Notice.
22. There is no provision in the TMO or the TMR supplanting the application of the High Court Rules to the Applicant's Notice. No High Court Rule authorises service on the Solicitors as agent for the Respondent in the circumstances of the present case. Service on the Solicitors was therefore not valid service on the Respondent.
23. There was some debate whether the Applicant was right to commence High Court proceedings by the Notice. Strictly, RHC Order 100, Rule 2(2) is not applicable, since the latter expressly concerns the old TMO. I reach no firm conclusion on whether it was right to apply Order 100, Rule 2(2) to the present case by analogy.
24. There is no doubt that by TMO s. 77 the Applicant had to seek a declaration of invalidity in the High Court. The question is whether TMO s. 77(1) requires the Applicant to bring its application within one or other or both of the Actions, rather than commence fresh proceedings by the Notice. The former course might avoid a multiplicity of proceedings on the Trade Mark and obviate the risk of different findings on the true ownership of the Trade Mark by different courts.
25. In my view, a number of procedural courses may be open to the Applicant. Having reflected on the matter, I think that it would be wrong to give directions as to how the Applicant should now proceed. I do not wish to pre-empt the Applicant's options. For the moment, I am merely called upon to decide whether service of the Notice on the Solicitors was valid service on the Respondent. I have decided that it was not. That is all I have decided. The Notice remains extant and it is for the Applicant to determine how it wishes to proceed, whether by seeking leave to service the Notice outside of the jurisdiction or by taking some other course.
Conclusion
26. The service on the Solicitors was not valid service of the Notice on the Respondent. Insofar as necessary, in the exercise of the Court's inherent jurisdiction to control its own procedures, I set aside the service on the Solicitors. I make an Order Nisi that the Solicitors are to have their costs of the hearing before me, such costs to be taxed if not agreed.
(A. T. Reyes)
Judge of the Court of First Instance
High Court
Representation:
Mr Thomas Tsang, of Messrs Wilkinson & Grist, for the Applicant
The Respondent, absent
Mr Colin Shipp, instructed by Messrs Cheung & Choy, for Messrs Cheung & Choy
1 The TMO came into operation on 4 April 2003. Nonetheless, TMO Schedule 5 s. 17(2), which is referred to in the heading of the Notice, provides: "For the purposes of proceedings under section 53 of this Ordinance (declaration of invalidity of registration), as it applies in relation to an existing registered mark, this ordinance shall be deemed to have been in force at all material times."
2 TMR Part 16 (entitled "Filing and Service of Documents") comprises rr. 108-112.
Remarks: