CHROME HEARTS LLC v. TSUEI TSE HOU AND ANOTHER

HCMP 165/2008

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO 165 OF 2008

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J U D G M E N T

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1.  This is the substantive hearing of an originating notice of motion taken out by the applicant in respect of two trade mark registrations obtained by the respondents.

2.  The applicant seeks a declaration that the trademark registrations, namely, Hong Kong Trade Mark Registration Nos. 300636417 and 300700217, are invalid on the ground that they have been applied for in bad faith within the meaning of section 11(5)(b) of the Trade Marks Ordinance (Cap 559) and, further, that they should not have been registered, pursuant to section 12(5)(a) of the Ordinance.

3.  On 19 June 2008, Mr Recorder Ambrose Ho SC ordered, amongst other things, that the applicant be given leave to cross-examine the 1^st respondent at the substantive hearing, and if the 1^st respondent should fail to attend the hearing to be cross-examined, his affidavit shall not be allowed to be relied upon by the respondents at the hearing. 

4.  The two respondents act in person, they having filed a notice to act in person on 2 July 2008.  Today’s hearing was fixed on 26 June 2008 at a time when the two respondents were legally represented.  In fact, the respondents’ former solicitors were notified of the appointment with the listing clerk for the purpose of fixing the hearing of the substantive hearing but they chose not to attend the appointment.  When contacted by the listing clerk over the telephone, they informed the clerk that they had no further instructions from the respondents in the matter and they, therefore, did not see fit to attend the appointment.

5.  It was in those circumstances that the date was fixed.  As I said, that was done before the respondents filed their notice to act in person.  After they did so, further affirmations were filed on behalf of the applicant.  They were all served on the respondents at the address that they gave in their notice to act in person.  In fact, the court registry also sent a notification of today’s hearing to the two respondents at the same address.  None of these documents and notification has been returned, undelivered, to the senders.

6.  As I said, the respondents have chosen not to appear at today’s hearing.  Given the circumstances that I have described, I have decided to proceed with today’s hearing in the absence of the respondents.  I have given a direction to that effect.  Moreover, given what Mr Recorder Ambrose Ho SC has ordered, and given the failure of the 1^st respondent to attend Court today to be cross-examined on his affidavit, which is the only affidavit filed on behalf of the respondents in opposition to the applicant’s claim, the respondents cannot rely on the affidavit and the Court must disregard that affidavit.

7.  Turning to the evidence filed on behalf of the applicant, I have no difficulty in accepting the submission of Mr Wong, acting for the applicant, that the evidence for the applicant’s case is overwhelming.  It is plain that the marks in question have been used by the applicant at all material times in relation to jewellery and accessories, leather clothing, bags and furniture, both internationally and in Hong Kong.  The marks are well known and they are referable to and associated with the products of the applicant. 

8.  Moreover, there is clear evidence that the 1^st respondent has worked for the applicant for a substantial period of time and he must have known very well the reputation that the marks in question have acquired.  In any event, given the 1^st respondent’s involvement in the relevant trade and business in question, there is no question of his not being aware of the reputation that the applicant has acquired under the marks.

9.  The 2^nd respondent is the wife of the 1^st respondent and it is reasonably clear that she must have got the requisite knowledge from her husband. 

10.  In those circumstances, I am with Mr Wong that a case of bad faith in applying for registration of the same marks in Hong Kong, by the respondents, has been made out.  There is simply no explanation from the respondents, putting aside the affidavit made by the 1^st respondent which, for the reasons that I have explained, this Court must disregard, for the respondents choosing to use the same, or substantially the same, marks for their products.  The inference of bad faith is irresistible, so the first ground for saying that the trade mark registrations in question are invalid by reason of section 11(5)(b) of the Ordinance has been clearly made out.

11.  Furthermore, on the facts that I have described, I have no doubt that a case under section 12(5)(a) has also been made out.  The use of the subject trade marks would, on the evidence, cause confusion or deception amongst members of the public and the trade in Hong Kong, given the long use of the applicant’s marks, both locally and internationally, and the reputation that the applicant has acquired as a result of such usage in its marks.  For all these reasons, I am with the applicant. 

12.  So far as relief is concerned, a declaration is made that the trade mark registrations in question are invalid. 

13.  I further award the costs of these proceedings, including all costs previously reserved, if any, to the applicant.

[Submission on costs]

14.  So far as costs are concerned, I am prepared to make a gross sum order here.  I direct that the applicant do file and serve a skeleton bill within seven days hereof.

15.  To save costs, the Court would make a provisional gross sum order first and, if the applicant is satisfied with the provisional order, that will become an absolute order.  If the applicant is not satisfied with the provisional order made by the Court, the applicant can make an appointment with the Court to attend Court to make submissions.