HELMED CO LTD v. MAAS PROFILE GMBH

HCMP 645/2018

[2019] HKCFI 754

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO 645 OF 2018

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J U D G M E N T

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1.  Helmed Company Limited is the Registrant/Appellant (“the appellant”) in these proceedings. MAAS Profile GmbH is the Applicant/Respondent (“the respondent”).

2.  Trade mark no 200210931 in respect of the mark BEMO (“the Subject Mark”) was registered in the name of the appellant in Class 6 in respect of :

“aluminium alloy; aluminium, manganese, magnesium alloy; mill finish stucco embossed aluminium, manganese, manganese alloy; aluminium alloy pre-painted with polyvinylidene fluoride; mirror finish or dull finish stainless steel; copper, common metals and their alloys; metal building materials; any other metals and their alloys for metal roofing and wall cladding purposes; all included in Class 6”

3.  The actual date of registration of the Subject Mark is 21 August 2002.

4.  On 2 September 2015 the respondent filed an application to revoke the registration of the Subject Mark (“the application”) on the ground of non-use under section 52(2)(a) of the Trade Marks Ordinance (Cap 559) (“the Ordinance”).

5.  The application was heard by Mr Ryan Ng (“the Hearing Officer”) acting for the Registrar of Trade Marks.  By his decision dated 1 March 2018(“the decision”) the Hearing Officer allowed the application and revoked the registration of theSubject Mark with effect from 25 August 2014 for the reasons given by him in the statement of reasons for the decision (“the reasons for decision”). 

6.  This is an appeal against the decision of the Hearing Officer dated 1 March 2018 revoking the registration of the Subject Mark. 

7.  By the Originating Summons dated 30 April 2018 (“the OS”) the appellant seeks an order that the decision revoking the registration of the Subject Mark be reversed and that the application to revoke be dismissed.

8.  By the OS the appellant also sought an order that the decision be stayed pending appeal and that the appellant be given leave to file further evidence for the hearing of the appeal.

9.  By an acknowledgment of service of the OS the respondent, through its solicitors Woo Kwan Lee & Lo, gave notice on 10 May 2018 that it intended to contest the proceedings.

10.  Not long after that the respondent decided not to contest the proceedings.

11.  By an amended acknowledgment of service of the OS the respondent, through its said solicitors, gave notice on 11 June 2018 that it no longer intended to contest the proceedings.  Thus, as from 11 June 2018, the respondent no longer opposed the appeal.

12.  The Registrar of Trade Marks takes a neutral stance to the appeal.  The Registrar has indicated that he did not intend to appear or be represented in the appeal. 

13.  The OS first came before Deputy High Court Judge Fee on 10 July 2018.  At that hearing the judge made an order, inter alia, that the decision be stayed pending appeal. 

14.  Deputy High Court Judge Fee also gave leave to the appellant to rely at the hearing of the appeal on the affirmation of Lee Chun Ming(“Lee”) filed on 23 May 2018 and the exhibits to Lee’s affirmation (“the additional evidence”).   Exhibit LCM-7, which was a full copy of the 2012 brochure, and exhibit LCM-8, which was a full copy of the 2009 brochure, were exhibited to Lee’s affirmation.

15.  Section 52(2) of the Ordinance provides that:

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

(a)   that the trade mark has not been genuinely used in Hong Kong by the owner or with his consent, in relation to the goods or services for which it is registered, for a continuous period of at least 3 years, and there are no valid reasons for non-use (such as import restrictions on, or other governmental requirements for, goods or services protected by the trade mark); …”

16.  The respondent sought to revoke the registration of the Subject Mark on the ground that it had not been genuinely used in Hong Kong for a continuous period of at least 3 years.

17.  As the respondent sought to revoke the registration with effect from 25 August 2014, the relevant period of non-use that the Hearing Officer had to consider was the three-year period commencing from 25 August 2011 and ending on 24 August 2014 (“the relevant period”). 

18.  There is no dispute that by virtue of section 82(1) of the Ordinance the burden of proving that the Subject Mark has been put to genuine use in Hong Kong in relation to the relevant goods during the relevant period lies with the appellant.

19.  The evidence before the Hearing Officer consisted of the statutory declaration of Edward Man Chi Hung (“Man”) made on 28 August 2015 on behalf of the respondent, the statutory declaration of Lee made on 2 March 2016 on behalf of the appellant, and the statutory declaration of Hans Weidemann made on 23 August 2016 on behalf of the respondent as well as the exhibits to the statutory declarations.

20.  On the evidence that was placed before the Hearing Officer, he found that the appellant had failed to prove genuine use of the Subject Mark in Hong Kong during the relevant period. 

21.  It is plain that on an appeal from the Registrar’s decision, the court should not depart from the exercise of the Registrar’s discretion simply because the court itself might have come to a different conclusion.  A similar approach should be taken to the exercise of discretion by the Registrar as by a judge (Re NAKED [2010] 1 HKLRD 382).

22.  Mr Clark, for the appellant, accepted that the Hearing Officer correctly set out the legal principles at paras 26 and 27 of the reasons for decision.  In particular, at para 27 the Hearing Officer said:

“27. What constitutes genuine use has been considered in a number of cases including Ansul, La Mer Technology Inc v Laboratoires Goemar SA [2004] F.S.R. 38 (‘La Mer’), Laboratoire de La Mer Trade Mark [2006] F.S.R. 5 (‘Laboratoire’) and Brands. According to these cases:

● Genuine use does not include token use for the sole purpose of preserving the rights conferred by that mark (La Mer, paragraph 27).

● It entails use of the mark on the market for the goods or services protected by that mark and not just internal use by the undertaking concerned (Ansul, paragraph 37).

● Use of the mark must relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns (Ansul, paragraph 37).

● When assessing whether use of a trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real in the course of trade, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (La Mer, paragraph 27).

● Even if use of a mark is not quantitatively significant, it may be sufficient to qualify as genuine use if it is deemed to be justified, in the economic sector concerned, for the purpose of preserving or creating market share for the goods or services protected by the mark (La Mer, paragraph 21)

● What matters are the objective circumstances of each case, and not the owner’s commercial intention, purpose or motivation (Laboratoire, paragraph 34).

● There is no requirement that the mark must have come to the attention of the end user or consumer. The retail or end user market is not the only relevant market on which a mark is used for the purpose of determining whether use of the mark is genuine ((Laboratoire, paragraph 32).

● What is essential (other than where section 52(3)(b) of Cap. 559 is applicable) is that the mark should have been used by being exposed to third parties (other than the owner or his licenses or agents) on a market in Hong Kong for goods or services of a type in respect of which the mark was registered. The need for exposure on such a market follows from the fact that to be used as a trade mark, the mark must be used in such a way as to act as a badge of origin, or a guarantee of the souce or origin of the relevant goods or services (Brands, paragraph 18).

23.  Mr Clark also referred me to para 12-050 in Kerly’s Law of Trade Marks and Trade Names 16^th Edition where at sub-para (4) it is stated

“The use must be by way of real commercial exploitation of the mark on the market for the relevant goods or services, i.e. exploitation that isaimed at maintaining or creating an outlet for the goods or services or a share in that market: Ansul at [37]-[38]; Silberquelle [18]:

(a) Examples that meet this criterion includes:

…

(ii) use of a trade mark in an organization’s relations with the public, announcing forthcoming events, on business papers and on advertising material….”

24.  In his written submissions for the hearing of the appeal Mr Clark criticized the Hearing Officer for not considering the 2012 brochure at the hearing before him. This criticism of the Hearing Officer is unfounded.  It is clear that at the hearing before the Hearing Officer counsel who then appeared for the appellant (not Mr Clark) accepted that the 2012 brochure was not part of the evidence that the Hearing Officer should consider. The Hearing Officer proceeded on that basis and cannot be faulted for doing so. 

25.  Mr Clark fairly accepted in his oral submissions that the Hearing Officer was entitled to come to the view that the 2012 brochure was not part of the evidence that the Hearing Officer should consider in the light of the concession made by counsel who then appeared for the appellant before the Hearing Officer. 

26.  The main thrust of the appellant’s appeal is that the use of the Subject Mark in the 2012 brochure produced in the additional evidence constitutes genuine use of the Subject Mark for the relevant goods in Hong Kong during the relevant period.

27.  The additional evidence is unchallenged and I have considered the same.

28.  Mr Clark relied on the full copy of the 2012 brochure exhibited as LCM-7 to Lee’s affirmation.  The 2012 brochure was an update of the 2009 brochure exhibited as LCM-8 to Lee’s affirmation. 

29.  Lee has affirmed that the 2012 brochure has been provided to customers and potential customers in Hong Kong.  A copy of the 2012 brochure was actually handed to the investigator when he made enquiries from Lee on 4 August 2015.  Only the cover page of the 2012 brochure was exhibited to Man’s statutory declaration.   The full 2012 brochure has now been adduced in the additional evidence.

30.  Lee said in his statutory declaration that in 1994 the appellant set up Tianjin Swiss-Tech Construction Engineering Ltd. (“Tianjin Swiss-Tech”) in the Mainland to assist it to handle the projects of building metal roofing and wall cladding system in the Mainland under the Subject Mark for its customers.  Lee said that at all material times the appellant has continuously carried out the leading role in operating its business under the Subject Mark.  Tianjin Swiss-Tech was there to assist the appellant to physically construct the systems under the Subject Mark and to enter into contracts with customers in the Mainland since 2004. This was due to the change of regulations in the Mainland in 2004 whereby a Hong Kong company was prohibited from entering into building contracts for construction works in the Mainland.

31.  Lee also said that the 2012 brochure was created in 2012, which was during the relevant period, and that it has been continuously distributed and circulated to customers and potential customers of the appellant in Hong Kong and in the Mainland. 

32.  In his affirmation Lee re-iterated that the 2012 brochure had been provided to customers and potential customers in Hong Kong.  He said that normally the appellant handed it to enquirers and that since the preparation of the 2012 brochure, he has been using it to promote the business of the appellant.  He also said that the appellant does not have records of whom it has provided the brochure to.  In my view, it is not surprising that the appellant did not keep a record of all the persons or firms that brochures have been provided to in the course of enquiries from potential customers.

33.  Mr Clark drew my attention to several parts of the 2012 brochure, which was an updated version of the 2009 brochure, to demonstrate that there has been genuine use of the Subject Mark in the brochure for the relevant goods during the relevant period.

34.  The 2012 brochure is in the name of Tianjin Swiss-Tech, the appellant’s subsidiary in the Mainland.  The brochure is in Chinese.

35.  The English translation of para 1.5 is:

“1.5 Technical advantages

Our mother company Helmed Company Limited entered into China market in the year of mid 1980’s introduced with promotion of large-span light weight composite waterproof, insulated metal roofing system products. Accumulated 20 years of experience in undertaking large-scale public construction projects in China.  Our company has mastered the ‘BEMO’ metal roofing system is Europe’s most advanced and mature technology product system. The company’s mother company is fully support in terms technical, financial, personnel and fully capable of deepening and refining all kinds of large-scale metal roof project public buildings tender bid design proposal.”

36.  The English translation of para 1.8 of the said brochure is:

“1.8 Introduction of company product

Our company’s ‘BEMO’ waterproof, insulation system is an excellent structure waterproofing roofing system…

‘BEMO’ The most prominent part of the roofing system is:

…

At present, ‘BEMO’ system is the ideal construction waterproof panel structure world wide. At present, the most complicated shape of the roof in China is incorporated with ‘BEMO’ system…

‘BEMO’, another characteristic of roofing system is the use of aluminium alloy base material as roofing panel main material, it is unique in performance, special made aluminium, manganese, manganese alloy panel…”

37.  The above are English translations of parts of the 2012 brochure. These show that “BEMO” in Chinese was clearly used as a trade mark in the brochure. 

38.  The question to consider is whether the Subject Mark was also used in English in the brochure.

39.  Mr Clark submitted that the Subject Mark in English was also used in the 2012 brochure. There are references to “HELMED BEMO” in English in the brochure in the actual pictures of the projects in appendix 9 to the brochure.  There is also a reference in appendix 10 in English of “HELMED BEMO Seamed System for Roofs and Walls”.

40.  I would also observe that on the last page of both the 2012 brochure and the 2009 brochure the contact details of the Hong Kong Liaison Office are given in English.  These are the contact details of the appellant in Hong Kong.   The Beijing and the Guangzhou contact details are also given but only in Chinese. The brochures are also said to have been printed in Hong Kong.

41.  Although in the brochures the mark is used in English in combination as “HELMED BEMO” that does not matter, in my view.

42.  Mr Clark referred me to para 12-096 of Kerly’s Law of Trade Marks and Trade Names under the heading of ‘Genuine Use of Signs Only Used in Combination” where it is stated:

“It is clear that two adjacent elements in a combination can each play an independent distinctive role.”

43.  It seems to me that it is clear on the evidence that when HELMED BEMO is used in the brochures in English in combination, HELMED and BEMO each play an independent distinct role.  As further evidence of this is the use of HELMED alone in English on the side of a container at page 19 of appendix 10 to the 2012 brochure.  That shows that HELMED BEMO is not always used together in a combination of both words.

44.  It is clear that there has been use of the Subject Mark in the 2012 brochure.  The 2012 brochure was an updated version of the 2009 brochure and was used in the course of trade during the relevant period. The brochure was handed out to commercial enquirers in Hong Kong for the purpose of promoting the appellant’s services. As Mr Clark submitted, correctly in my view, the very purpose of handing out brochures to commercial enquirers in Hong Kong was to preserve or create a market share.  I accept Mr Clark’s submission that this is use in advertising in Hong Kong during the relevant period. 

45.  I am satisfied that on the additional evidence the appellant has established that it has genuinely used the Subject Mark in Hong Kong for the relevant goods during the relevant period.

46.  I am satisfied that the appeal should be allowed. 

47.  It is not necessary to deal with the other points made by Mr Clark.

48.  I make an order that the decision of the Hearing Officer dated 1 March 2018 revoking the Subject Mark be reversed and that the application to revoke the Subject Mark be dismissed.

49.  I also make an order that the costs of and occasioned by the appeal and of the proceedings before the Hearing Officer be costs to the appellant to be paid by the respondent.

50.  There shall be no order as to costs as between the appellant and the Registrar of Trade Marks.