RE MS CONNIE LAW ACTING FOR THE REGISTRAR OF TRADE MARKS DATED 10 OCTOBER 2024 IN RELATION TO AN OPPOSITION BY 星洲藥業(香港)有限公司 TO TRADE MARK APPLICATION NO. 305197753 IN CLASSES 3 AND 5 APPLIED FOR BY MR CHI WING LIMITED AND LAW OI YING LTD TRADING AS SINGAPORE HEADWAY MEDICINE COMPANY 池榮有限公司及羅愛英有限公司以星加坡鴻威藥業公司之名營業

HCIP 63/2024

[2025] HKCFI 3087

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

INTELLECTUAL PROPERTY PROCEEDINGS NO 63 OF 2024

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J U D G M E N T

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Introduction

1.  This is an appeal from a decision of Ms Connie Law acting for the Registrar of Trade Marks (“the Hearing Officer”) given on 10 October 2024 (“the Decision”) whereby the Hearing Officer rejected the appellant’s opposition to the respondent’s application for registration of “” (“the Subject Mark”) in respect of goods in Classes 3 and 5 under Trade Mark Application no. 305197753 (“the Application”) despite the three earlier marks cited by the appellant (collectively “the Earlier Marks”).

2.  The Earlier Marks include「萬里」 under Registration no. 300023732 (Class 5) (“Earlier Mark I”), 「萬里追」 under Registration no. 300023796 (Class 5) (“Earlier Mark II”) and the composite mark

under Registration no. 304262832 (Class 5) (“Earlier Mark III”).

3.  Madam Law Yan Kwai (羅仁槐) (“Madam YK Law”), the director of the appellant, is the registered owner of Earlier Mark I. Singapore Medicine Co. Limited is the registered owner of Earlier Mark II and Madam Ko Wai Ping (高惠萍) is the registered owner of Earlier Mark III.

4.  The Decision was written in Chinese. The appellant has provided an English translation of the Decision. The parties raise no issue about the accuracy of the English translation and I shall rely on the same in this Judgment. Unless otherwise stated, references to paragraph numbers are references to paragraph numbers in the Decision.

5.  In its Amended Notice of Originating Motion refiled on 22 January 2025 (“ANOM”), the appellant advances 10 grounds of appeal. Mr Clark, for the appellant, indicates to this court at the outset of the hearing that the only point taken by the appellant in this appeal is that the Hearing Officer should not have made the finding in §44 of the Decision that 「萬里追風油」 has become a common name for medicated oil products and lacks distinctiveness in relation to the relevant goods (“the Challenged Finding”). Mr Clark submits that in the event that this ground is not accepted, it is not necessary for this court to determine the remaining grounds.

6.  The crux of the appellant’s complaint about the Challenged Finding is that the Hearing Officer was not entitled to make the Challenged Finding in the absence of any such plea made by the respondent in the Application and an application to revoke the registrations of the Earlier Marks. The appellant, in addition, complains that there is no evidence that due to the acts or inactivity of the appellant, any of the Earlier Marks has become a common name.

Applicable legal principles

7.  Before assessing the validity of this complaint, I find it helpful to refer to the general principles on the approach to dealing with appeals from the Registrar. Lok J in Monster Energy Company v 洪嘉珮 [2020] HKCFI 561, cited by Mr Yan SC for the respondent, reviewed the relevant authorities and said this at §14:

“In trade mark opposition proceedings, the Registrar often has to make “multi-factorial comparison”, evaluating similarity of marks, similarity of goods and other factors in order to reach conclusions about likelihood of confusion and the outcome of a notional passing-off claim. A lot of these assessments involve value judgments. The court has to guard against substituting the Registrar’s evaluation of these matters with its own evaluation. Unless the Registrar has adopted the wrong approach in the evaluation exercise, the court should be slow in interfering with the Registrar’s decision.”

8.  Further, in Re NAKED [2010] 1 HKLRD 382, the Court of Appeal dealt with an appeal from Reyes J allowing an appeal from a refusal of the applicant’s application to register the trade mark “NAKED” on the absolute grounds under sections 11(1)(b) and (1)(c) of the Trade Marks Ordinance, Cap. 559 (“the TMO”). Rogers VP (with whom Stone J and Lunn J agreed) said this at §22,

“In my view, the correct approach is that the Registrar’s opinion has to be fully and carefully considered. The Registrar has very particular experience. Any departure from the way in which the Registrar exercised his discretion has to be made upon a sound basis after giving full and most careful consideration to the Registrar’s views and reasons. The exercise of discretion by the Registrar should not be overruled simply because the court itself might have come to a different conclusion. Essentially, therefore, a similar approach should be taken to the exercise of discretion by the Registrar as by a judge.”

9.  Guided by these principles, I turn to the arguments of the parties.

Factual background

10.  I first set out the undisputed or indisputable factual background relating to the Application.

11.  The Application was made on 24 February 2020. The appellant filed its opposition by way of Form T6 on 9 October 2020. The respondent filed its Counterstatement by way of Form T7 dated 1 February 2021.

12.  The sole ground of the appellant in its Statement of Grounds of Opposition attaching to Form T6 is based on section 12(3) of the TMO and the appellant relies on the Earlier Marks.

13.  In the Counterstatement, the respondent’s primary position is that the Earlier Marks and the Subject Mark are not similar and the use of the Subject Mark does not cause confusion on the part of the public. Its fall-back position is that there has been honest concurrent use of the Subject Mark and the Earlier Marks, praying in aid section 13(1) of the TMO.

The Challenged Finding

14.  Mr Clark submits that the Challenged Finding must be impugned for want for procedural propriety and adequate evidence.

15.  First, Mr Clark points out that the Earlier Marks are property rights and their registered owners are entitled to the remedies provided by the TMO: sections 10(1) and (2).

16.  Mr Clark goes further to say that such property rights are protected by Article 6 of the Basic Law which provides that the Hong Kong Special Administrative Region shall protect the right of private ownership of property in accordance with law.

17.  Mr Clark argues that the Challenged Finding effectively takes away the property rights in the Earlier Marks. He submits that such property rights can only be removed by revocation of the registration of the Earlier Marks and the proper mechanism is provided by section 52 of the TMO, which provides,

“The registration of a trade mark and may be revoked on any of the following grounds, namely –

(a) …

(b) that the trade mark consists of a sign that, in consequence of the acts or the inactivity of the owner –

(i) has become the common name in the trade for goods or services for which the trade mark is registered; or

(ii) has become generally accepted within the trade as the sign that describes goods or services for which the trade mark is registered;…”

18.  Mr Clark submits that in the absence of a proper revocation application under section 52, the Hearing Officer was not entitled to make the Challenged Finding.

19.  Mr Clark argues that the respondent cannot challenge a trade mark as being a common name by way of the backdoor without making a formal application under section 52. In this regard, he relies on England George v Bond [2020] EWHC 3863 (IPEC) in which Recorder Campbell QC said this at §25:

“The fact there are other organisations using similar names does not help the defendant. There is no counterclaim for invalidity of the claimant’s registrations, but even if there had been then the mere presence on the market of such third parties does not establish, for instance, that the claimant’s mark has become the common name in the trade for oven cleaning services within the meaning of Section 46(1)(c) of the Act, far less that this has happened in consequence of acts or inactivity by the proprietor.”

20.  On the other hand, Mr Clark complains that the respondent neither pleaded any case nor alleged in the written submissions lodged on its behalf that the trade mark 「萬里追風油」 has become a common name.

21.  Mr Clark reiterates that without a proper pleaded case, the appellant was deprived of an opportunity to defend itself by adducing relevant rebuttal evidence.

22.  I find no merit in Mr Clark’s submissions. The Hearing Officer simply did not suggest the invalidity of any of the Earlier Marks. Nor does the Challenged Finding have the slightest effect of revoking the registration of any of the Earlier Marks.

23.  The Challenged Finding has to be understood in its context and one cannot adopt a blinker approach and merely read the last sentence of paragraph 44 of the Decision. The entire paragraph and indeed §§37 to 57 must be studied as a whole.

24.  To allow the opposition under section 12(3) of the TMO, the Hearing Officer had to be satisfied that:

(1) the Subject Mark is similar to any of the Earlier Marks;

(2) the goods or services for which the application for registration is made are identical or similar to those for which the Earlier Marks are protected; and

(3) the use of the Subject Mark in relation to those goods or services is likely to cause confusion on the part of the public.

25.  Before making a comparison of the Subject Mark with each of the Earlier Marks, the Hearing Officer duly assessed the distinctive character of the Earlier Marks (from §§38 to 49). This was a necessary exercise and Mr Clark does not argue otherwise.

26.  In §38, the Hearing Officer observed that Earlier Marks I and II are simple word marks and they are not descriptive of the goods registered. The Hearing Officer then concluded that they are of medium degree of distinctiveness. The Hearing Officer did not say that they are invalid.

27.  From §§39 to 49, the Hearing Officer focused on Earlier Mark III. From §§39 to 41, the Hearing Officer stated her observations about Earlier Mark III and stated that it is a composite mark looking like a 2-dimensional drawing of a packaging box. There are many different sets of Chinese words in Earlier Mark III. They are 「萬里追風油」, 「南洋星加坡各埠風行」， 「星洲」，「四肢麻木 腰椎勞損」, 「驅風袪濕 舒筋活絡」, 「跌打扭傷 筋骨疲勞」and 「手足抽筋 腰痠背痛」.

28.  The Hearing Officer then from §§42 to 43 referred to the evidence adduced by the respondent by way of a statutory declaration of Madam Law Oi Ying (“Madam OY Law”) dated 1 November 2022 (“the LOY Declaration”) and the submissions made on behalf of the parties.

29.  The Challenged Finding was made in §44. For a proper understanding of the Challenged Finding, I find it necessary to reproduce the entire §44 below:

“I agree that a trade mark can be used together with other trade marks, but the key is whether the “萬里追風油” element has the distinctiveness as a trade mark. I noticed LOY’s Declaration stated there are dozens of “千里追風油” products launched by different companies in the market, and the 2020 Registry Decision enclosed in the Clark Declaration also accepted “千里追風油” has become a generic name for medicated oil products in the industry. It can be seen from this that both parties to the proceedings admit “千里追風油” has become a generic name for medicated oil products. Moreover, as the Applicant has pointed out, the Opponent did not question the statement in the LOY Declaration that the Applicant had launched “金波士萬里追風油” from as early as 1998 and that consumers and market traders have known and been able to identify the many different “千里追風油” and “萬里追風油” products from different brands and manufacturers for many years, especially the Applicant’s “金波士萬里追風油”. On the other hand, the Opponent’s evidence shows that the Opponent launched “萬里追風油”, and the Opponent used the graphic combination of “星洲”, “星洲藥業” and/or “星洲” and the letter “S” to label its “萬里追風油” product. Upon considering the evidence of both parties, I agree that “萬里追風油” has become a generic name for medicated oil products and lacks distinctiveness in relation to the relevant goods.”

30.  The Hearing Officer made the Challenged Finding in the course of her assessment of the distinctiveness of the 「萬里追風油」 element of Earlier Mark III only. The Hearing Officer did go on to consider the distinctiveness of the other parts of Earlier Mark III in §45. Eventually, the Hearing Officer came to the conclusion that all other words of the Earlier Mark III lack distinctiveness save that the graphic combination of 「星洲」 and “S” has a certain degree of distinctiveness. The Hearing Officer concluded that Earlier Mark III has a moderate degree of distinctiveness as a whole in relation to the goods for which it is registered.

31.  Lastly, in §46, upon her acceptance of the evidence of the appellant relating to the sale of goods bearing Earlier Mark III between 2011 to 2021 and the “2019-2021 Most Popular Brand in Hong Kong Pharmacies Award” won by 「星洲藥業萬里追風油」, the Hearing Officer further concluded that the distinctiveness of Earlier Mark III had been somewhat enhanced.

32.  In my view, the Hearing Officer duly completed the requisite assessments of the distinctiveness of the 「萬里追風油」element of Earlier Mark III and the likelihood of confusion from the perspective of an average customer. In Monster Energy Company, in the context of opposition proceedings, Lok J said this at §47,

“Second, the inherent distinctive character of a words composite mark would depend on whether the average consumer would perceive the word elements of a mark as referring to one single element or different elements, and whether certain word in the composite mark is descriptive of the goods concerned.”

33.  The assessments carried out by the Hearing Officer are relevant in the appellant’s opposition based on section 12(3). The approach taken by the Hearing Officer was entirely correct. The Hearing Officer was perfectly entitled to make the Challenged Finding.

34.  Moreover, it is clear that the Challenged Finding does not indicate any conclusion of the Hearing Officer that the registration of Earlier Mark III is invalid or should be revoked, let alone any actual or implied revocation of its registration. No property right has even been taken away from the registered owners of the Earlier Marks in light of the Challenged Finding. The reliance of the appellant on sections 10(1) and (2), 14 and 52 and Article 6 of the Basic Law is demonstrably misplaced.

35.  As pointed by Mr Clark, the respondent has not made any application to revoke the registration of any of the Earlier Marks. In fact, the respondent could not have done so without joining the registered owners of the Earlier Marks in the opposition proceedings. The appellant is not the registered owner of any one of the Earlier Marks according to their registration records and I do not know on what basis Mr Clark says that it is.

36.  It should be noted that in opposition proceedings when opposition is raised under section 12(3), there is no requirement that such opposition can only be raised by the registered owner of the earlier mark(s) cited, unlike those oppositions based on sections 12(4) and (5): section 12(6).

37.  The Registrar can undoubtedly be entitled to invoke section 12(3) to refuse applications for registration on her own motion.

38.  When the registered owners of earlier mark(s) cited do not take part in the opposition proceedings, the applicants must be entitled to challenge the distinctiveness of the earlier mark(s) cited or any part thereof without making an application to join all the registered owners to revoke their registrations.

39.  Proving a particular mark or any part of it has become the common name in the trade for goods or services for which the trade mark is registered with a view to negating likelihood of confusion on the part of the public in opposition proceedings cannot be equated with an attempt to revoke the registration of the trade mark under section 52. For revocation, an applicant has to further prove that the trade mark consisting of a sign that has become the common name in consequence of the acts or the inactivity of the registered owner of the trade mark. It is an altogether different application and a different evidential threshold applies.

40.  I do not accept Mr Clark’s submission that the respondent challenged Earlier Mark III as being a common name by way of the backdoor in the absence of a proper revocation application. In my view, it is not necessary to apply for revocation so as to adduce evidence that a part of a mark has become the common name in the trade and lacks distinctiveness in opposition proceedings. Nor is it necessary for the respondent to make an express plea that the 「萬里追風油」 element of Earlier Mark III has become a common name in the trade in its Counterstatement before it can adduce the relevant evidence.

41.  The England George case does not assist the appellant at all. There, Mr Recorder Campbell, QC dealt with an application for summary judgment in a trademark infringement action. The defendant pointed to other organisations using similar names. The Recorder rejected his contention and held that there was no counterclaim for invalidity of the claimant’s registrations. The Recorder further held that even if there had been, the defendant would not have been able to establish that the claimant’s mark had become the common name in the trade for the same services, far less that this had happened in consequence of acts or inactivity of the proprietor.

42.  The issue in that case was whether the defendant could raise a triable issue as to the validity of the registered mark so that it might have a bona fide defence to the claimant’s trademark infringement claim. The Recorder was of course correct in pointing out that the defendant even did not make a counterclaim for invalidity of the claimant’s registration. The absence of such a counterclaim showed the genuineness of the defendant’s dispute about the validity of the registration.

43.  I agree with Mr Yan that the England George case is no authority in support of the proposition suggested by Mr Clark. In the present case, the respondent did not have to allege invalidity of the registration of the Earlier Marks to resist the opposition under section 12(3).

44.  Lastly, Mr Yan helpfully draws to my attention to 梁培基 益安寧 Mark [2023] HKTMR 2. In that case, in the context of opposition proceedings, the Registrar, in his assessment of likelihood of confusion caused to average consumers, accepted the applicant’s evidence that 「益安寧」had become a common name and lacked distinctiveness and went on to compare other elements of the subject mark and the earlier mark. Such a finding was made without any express plea or an application to revoke registration.

45.  In the premises, I conclude that there is no substance in the appellant’s contention that the Hearing Officer was not entitled to make the Challenged Finding on the pleadings and in the absence of a revocation application.

46.  Turning to the evidence, the complaint about the lack of evidence that due to the acts or inactivity of the owner of the Earlier Marks, the Earlier Marks had become a common name (Ground 3 in the ANOM) is clearly baseless. The complete answer is that the respondent did not make any application under section 52(2)(b) and there was no need for the respondent to meet the requirements thereunder.

47.  In making the Challenged Finding, the Hearing Officer accepted the evidence of Madam OY Law in the LOY Declaration that the respondent has launched 「金波士萬里追風油」 since as early as 1998 and that consumers and market traders have known and been able to identify the many different 「千里追風油」 and 「萬里追風油」 products from different brands and manufacturers for many years. After the receipt of the LOY Declaration in November 2022, the appellant did not find it necessary to file its rebuttal evidence in respect of these allegations before the opposition hearing on 29 May 2024 despite ample opportunities to do so. As a result, such evidence was neither in any way challenged by the appellant nor contradicted by any contrary evidence. The Hearing Officer must be entitled to make the Challenged Finding in the circumstances.

48.  Even in this appeal, the appellant has not sought to apply to adduce any evidence to rebut the relevant evidence of Madam OY Law.

49.  There is no allegation that the Challenged Finding is plainly wrong as a matter of evidence in the ANOM.

50.  I come to the conclusion that the Hearing Officer was entitled to accept the unchallenged and uncontradicted evidence of Madam OY Law and the Challenged Finding is unassailable.

Conclusion and order

51.  For the reasons given, I am of the view that none of the appellant’s grounds relating to the Challenged Finding is tenable and meritorious.

52.  As submitted by Mr Clark, my conclusion on the Challenged Finding is dispositive of the appeal. Accordingly, the ANOM falls to be dismissed in its entirety and the appeal must be dismissed.

53.  There is no reason why costs should not follow the event. I make an order nisi that costs of and occasioned by the ANOM including any costs reserved be paid by the appellant to the respondent, to be taxed if not agreed. This order nisi shall become absolute in the absence of any application by summons for variation within 14 days from the date of this Judgment.

54.  Last but not least, I thank Mr Clark and Mr Yan for their helpful assistance.