INTERNATIONAL JINGJIN MEDICAL INSTITUTE LTD v. HONG KONG INSTITUTE OF CHINESE JINGJINKE PROFESSIONALISM LTD t/a CHINESE JINGJIN PROFESSIONAL COMMITTEE

HCA 350/2012

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO. 350 OF 2012

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J U D G M E N T

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1.  This is the plaintiff’s application for summary judgment. It is in relation to the defendant’s claim of monopoly in the use of the expressions “經筋治療師” and “經筋理療師”.

2.  The defendant has threatened the plaintiff with proceedings if the plaintiff should continue using such expressions in its trade and business.  The plaintiff regards such threats as groundless, and hence took out this action for relief under section 26(1) and (2) of the Trademark Ordinance, Cap. 599.

The meridian sinew system

3.  According to traditional Chinese medicine, there is a system of meridians, (經脈) in the human body through which the life energy or “Qi” flows. There are 12 principal meridians, (十二經脈), and a number of secondary meridians, (經絡).  There are also a number of sub‑systems in the meridian system.  One of which is the meridian sinew/tendon (經筋) sub‑system (hereinafter called “the meridian sinew system”). 

4.  There are 12 meridian sinew/tendons (十二經筋) in the meridian sinew system.  This system was first discussed in the famous ancient traditional Chinese medicine book “黃帝內經”, (“Huángdì Nèijīng”, also known as “The Inner Canon of Huangdi” or “Yellow Emperor’s Inner Canon”).  Historians say that this book was composed in between 99 BC to 26 BC.

5.  The meridian sinew system has to be learned by and is known to all those who practise acupuncture.  It is discussed in all the acupuncture textbooks for the use of university students of traditional Chinese medicine.

6.  The meridian sinew system is not something mysterious or recently discovered though Mr Lam Yau, the person who controls the defendant, claims that he is the first person who has mastered a proper understanding and acquired profound knowledge of this system.  The fact remains that this meridian sinew system is known in the traditional Chinese medicine culture for over 2,000 years and has been discussed in many textbooks published in the mainland and Taiwan.

The defendant’s mark and business

7.  The defendant is the registered owner of two trademarks numbers 301196550 (“the first mark”) and 301196569 (“the second mark”).

8.  The first mark is composed of a device in the form of a shield flanked by two dragons on both sides and with a banner underneath it.  It is in deep yellow colour.  There are the Chinese characters “經筋治療師” inside the shield and the Chinese characters “香港中華經筋治療師學會” inside the banner. The two groups of characters mean “Meridian Sinew Therapist” and “Academic Society of Hong Kong Chinese Meridian Sinew Therapist” respectively.

9.  For the second mark, it is also composed of a shield with a banner underneath it, but it is flanked by two lions.  It is also in deep yellow colour.  There are the Chinese characters “經筋理療師” and “香港中華經筋治療師學會” inside the shield and the banner respectively.  Their English translations are the same as for the Chinese characters in the first mark, despite the use of the Chinese character “治” in the first mark and the Chinese character “理” in the second mark.  The two marks also appear very similar to one another despite the use of dragons in the first mark and lions in the second mark.

10.  Part of the defendant’s business is to offer training courses, the study of which can lead to the conferring by the defendant of the title “經筋治療師”, “經筋理療師” or “經筋師”.  The last title can be translated to “meridian sinew master”.

The plaintiff’s mark and business

11.  The plaintiff uses a mark composed of a device of a shield with a circular “太極圖”, (“tàijítú” or “diagram of ultimate power”) inside.  There also are Chinese characters “國際經筋醫學院”.  These characters can be translated to “International Medical College of Meridian Sinew”.  Part of the plaintiff’s business is also to provide training courses the study of which can lead to the conferring by the plaintiff of the title of “經筋治療師” or “Meridian Sinew Therapist”.  The plaintiff has also advertised its training courses through its website in the internet by using the title “經筋治療師”.

The defendant’s demand letters

12.  The defendant’s solicitors sent the plaintiff a letter dated 8 February 2012 advising the plaintiff that the defendant is the owner of the first and second marks.  The letter complained that the plaintiff was using the marks of “國際經筋醫學院” and “經筋治療師文憑課程” in the marketing and sale of its products and services on its website.  (The second group of Chinese characters can be translated to “Diploma Course for Meridian Sinew Therapist”.)  The letter further said that such were infringements of the first and second marks of the defendant.  The letter demanded the plaintiff to stop using the said marks, deliver up all infringement materials, and pay the defendant HK$10,000 damages and HK$40,000 legal costs.

13.  By a further letter of the defendant’s solicitors dated 14 March 2012, the defendant’s claim was narrowed down only to the plaintiff’s use of the title or mark “經筋治療師” (meridian sinew therapist).  There was no more complaint about the plaintiff’s use of the title or mark “國際經筋醫學院”.  Counsel for the defendant also confirmed at this morning’s hearing that the defendant did not make this latter complaint any more.  The complaint is limited to the title or mark “經筋治療師”.

14.  The defendant agrees that the two letters issued by its solicitors as referred to above constitute threats of legal proceedings for infringement of registered trademarks within the meaning of section 26(1) of the Trade Marks Ordinance, Cap. 559.  Hence, the plaintiff has cause to launch this action under section 26(2) of the ordinance.

The plaintiff’s submissions and analyses

15.  The plaintiff says that the defendant’s claim of infringement as intimated in the two demand letters from its solicitors and maintained in the defence and counterclaim has no basis.  The expression “經筋” is a descriptive term.  It describes a system in the human body in the context of traditional Chinese medicine.  It is just like the descriptive terms referring to our limbs and organs.  For the Chinese characters “治療師” or “理療師” which means “therapist”, they are also descriptive terms.  The plaintiff further submitted that when these two descriptive terms are combined together, they only produce another descriptive term.

16.  Counsel for the plaintiff also relied on the judgment of the General Court of the European Community in Universal Display Code v. Office for Harmonisation in the Internal Market (Trademarks and Designs) and dated 2 May 2012 at paragraphs 21 to 31, where the General Court said that the combination of two words, each of which is descriptive of the type and nature of the goods in question, is also descriptive of the type and nature of those goods.

17.  In this case, I take the view that both “經筋” (meridian sinew) and “治療師” or “理療師” (therapist) are all descriptive expressions.  To combine “經筋” with “治療師” or “理療師” merely qualifies the kind and nature of therapy offered by the therapist.  The two combined terms, “經筋治療師” and “經筋理療師” are descriptive in nature.

18.  Since these combined expressions or titles are descriptive in nature and do not have any distinctive character, they are not registrable as trademarks under section 11(1)(b) of the ordinance. Sections 11(1)(b) and (2) of the ordinance provide:

“(1) Subject to subsection (2), the following shall not be registered-

(b) trade marks which are devoid of any distinctive character.

(2)     A trademark shall not be refused registration by virtue of subsection (1)(b) … if, before the date of application for registration, it has in fact acquired a distinctive character as the result of the use made of it.”

The defendant’s submissions and analyses

19.  The defendant is not relying on section 11(2) as it does not say that the two expressions have acquired a distinctive character as the result of the use made of them.  The defendant’s case, as advanced by counsel, is that it was Mr Lam Yau of the defendant who had first coined these two expressions and had them registered in the devices abovementioned for the defendant.  Since the expressions “經筋治療師” and “經筋理療師” are the conspicuous parts of the registered trademarks, the defendant therefore has monopoly in using these two expressions.  However, the defendant accepts that it has no monopoly in the expressions of “經筋”, “治療師” or “理療師”.  Its argument for monopoly in the Chinese characters or expressions “經筋治療師” and “經筋理療師” is based on the registration of the two marks and that these two combined expressions form the conspicuous parts of the marks.

20.  I do not think the defendant’s argument has any merit.  These two combined expressions of “經筋治療師” and “經筋理療師” are merely descriptive expressions and are devoid of distinctive character. They are therefore not registrable as word-marks under section 11(1)(b) of the ordinance.

21.  The defendant’s argument amounts to saying that despite the words themselves are not registrable, once they are incorporated into and form the conspicuous part of a registered trademark, they, in isolation of the rest of the trademark, would also become a word-mark the exclusive right of which belongs to the owner of the registered trademark.  If such argument should be upheld, section 11(1)(b) would be rendered useless.  I dismiss such argument.

Decision

22.  In the premises, I hold that the defendant has not shown any ground of defence to the plaintiff’s claim in relation to the plaintiff’s use of the Chinese characters or title or expression “經筋治療師” as mentioned in the letters of the defendant’s solicitors dated 8 February and 14 March 2012.  I give summary judgment to the plaintiff in relation to this expression. 

23.  I declare that the defendant’s threats to bring legal proceedings against the plaintiff for infringement of its registered trademarks as per the letters dated 8 February and 14 March 2012 issued by its solicitors to the plaintiff in relation to “經筋治療師” is unjustifiable. 

24.  I further declare that the defendant’s trademark registration numbers 301196550 and 301196569 do not grant the defendant the monopoly over the use of the term “經筋治療師”. 

25.  I grant an injunction enjoining the defendant, whether acting by itself, its directors, officers, employees or agents or any of them or otherwise howsoever from continuing the said threats. 

26.  I order that there be an inquiry as to the damages suffered by the plaintiff or, at the plaintiff’s option, an account of profits in respect of the defendant’s wrongful acts of groundless threats.  I order the payment of all sums found due to the plaintiff by the defendant upon taking such inquiry or account, together with interest thereon as may be ordered at the end of the inquiry or account. 

27.  I also order the defendant to make discovery upon oath of all matters relating to the threats. 

28.  I also make a costs order nisi that the defendant do pay the plaintiff the costs of and incidental to this action, including the costs of this application.