BRANDS INC. LTD v. KABUSHIKI KAISHA REGAL CORPORATION

HCMP 754/2006

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO. 754 OF 2006

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J U D G M E N T

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1.  This was an appeal by Brands Inc. Limited (“the Applicant”) against a decision of the Registrar of Trade Marks given on 20 March 2006, by which the Registrar dismissed the Applicant’s application for revocation of the registration of Trade Mark No. 1994B04412 (“the Mark”), which consists of the word “REGAL” and a device (in the image of a boot).  The Mark is registered in Class 25 of the Trade Marks Register, in respect of boots, shoes and slippers.  It is registered in the name of Kabushiki Kaisha Regal Corporation (“the Owner”).  The Applicant sought its revocation on the ground of non-use, pursuant to section 52(2)(a) of the Trade Marks Ordinance (Cap. 559) (“the Ordinance”).  The Owner resisted the application, contending that the Mark had been genuinely used in Hong Kong by it, or with its consent, in relation to the goods in respect of which it was registered.

2.  The evidence at the hearing was not seriously in dispute.  It was common ground that there were no sales of goods bearing the Mark in Hong Kong during the period of at least three years prior to the application for revocation, which was made on 4 February 2004.  The Owner contended, however, that it had used the Mark in Hong Kong by transshipping footwear products, manufactured in China pursuant to orders placed by it with manufacturers in Hong Kong, through Hong Kong in the course of shipment from the factories in China (where the footwear was produced) to itself in Japan (where the footwear was to be sold).  The Mark was stamped on the insoles of shoes, and also printed on the individual packaging for each pair of shoes and on the outside of the shipping cartons containing boxes of the shoes, all of this having apparently been done in China.  The Applicant did not dispute this, but contended that these activities did not amount to genuine use of the Mark in Hong Kong so as to defeat the application.

3.  The Registrar found that the transshipment through Hong Kong amounted to genuine use of the Mark in Hong Kong, and therefore dismissed the application.  From that decision, the Applicant appeals.

4.  The appeal thus raises a short point - whether transshipment of goods bearing a registered trade mark through Hong Kong, when there is no evidence or suggestion of sales of such goods to anyone in Hong Kong (other than the registered owner of the trademark), can amount to genuine use of the trademark in Hong Kong for the purposes of section 52(2)(a) of the Ordinance.

5.  That section provides:-

“(2)   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); ...”

6.  In an application to revoke a trade mark on the ground of non-use, the burden is on the owner of the trade mark to prove that he has genuinely used the trade mark in Hong Kong - see section 82(1) of the Ordinance, which provides:-

“If, in any civil proceedings under this Ordinance in which the owner of a registered trade mark is a party, a question arises as to the use to which the trade mark has been put, the burden of proving that use shall lie with the owner.”

7.  Mr Wong, appearing for the Applicant in this appeal, submitted that in order for the Mark to have been used for the purposes of section 52(2)(a), it was necessary for it to have been used as a trade mark - that is, as a badge of origin, identifying the source of the goods to which it was affixed, to a person (other than the owner or his licensees or agents) acquiring or considering acquiring the goods.  This required that the Mark should have been addressed to third parties in a market of some sort for the goods bearing the Mark.  He went on to submit that in this case, as the goods bearing the Mark were only transshipped through Hong Kong, and were never exposed to any market in Hong Kong on which third parties would rely on the Mark as identifying the goods as originating from the Owner, the Mark had not been used in Hong Kong, genuinely or otherwise, within the meaning of section 52(2)(a).

8.  In support of this contention, Mr Wong relied on a number of European and English authorities which examined the meaning of a materially identical provision in European Community and English legislation (Articles 10 and 12(1) of First Council Directive 89/104/EEC of 21 December 1988 and section 46 of the Trade Marks Act 1994) – these were  Ansul BV v Ajax Bradbeveiliging BV [2005] Ch 97, and a series of decisions involving the Laboratoire De La Mer Trade Mark, reported in [2002] FSR 51, [2004] FSR 38, [2005] FSR 29 and [2006] FSR 5.

9.  The starting point is the Ansul decision.  There, the European Court of Justice said (at paragraphs 35 to 38 of its judgment):-

“35.   ... “Genuine use” ... means actual use of the mark. ...

“36.   “Genuine use” must therefore be understood to denote use that is not merely token, serving solely to preserve the rights conferred by the mark.  Such use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin.

“37.   It follows that “genuine use” of the mark 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.  The protection the mark confers and the consequences of registering it in terms of enforceability vis-a-vis third parties cannot continue to operate if the mark loses its commercial raison d’etre, which is to create or preserve an outlet for the goods or services that bear the sign of which it is composed, as distinct from the goods or services of other undertakings.  Use of the mark must therefore 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. ...

“38.   Finally, when assessing whether there has been genuine use of the trade mark, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, in particular 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.”

10.  In La Mer Technology Inc v Laboratoires Goemar SA [2004] FSR 38, the European Court of Justice reiterated the views it had expressed in Ansul in the following terms (at paragraphs 20 to 21 and 26 to 27 of its judgment):-

“20.   ... the preservation by a trade mark proprietor of his rights is predicated on the mark being put to genuine use in the course of trade, on the market for the goods or services for which it was registered in the Member State concerned.

“21.   Moreover, ... use of the mark may in some cases be sufficient to establish genuine use within the meaning of the Directive, even if that use is not quantitatively significant.  Even minimal use can therefore be sufficient to qualify as genuine, on condition that 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.

...

“26.   ... where use of the mark does not have as its essential aim the preservation or creation of market share for the goods or services which it protects, such use must be considered in fact to be intended to defeat any request for revocation.  Such use cannot be characterised as genuine within the meaning of the Directive.

“27.   In the light of the foregoing, ... there is genuine use of a trade mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by that mark.  When assessing whether use of the 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.  When it serves a real commercial purpose, in the circumstances cited above, even minimal use of the mark or use by only a single importer in the Member State concerned can be sufficient to establish genuine use within the meaning of the Directive.”

11.  In Laboratoire De La Mer Trade Mark [2006] FSR 5, the Court of Appeal applied the guidance given by the European Court of Justice in the Ansul and La Mer Technology cases.  That case involved an application seeking the revocation of trade marks registered in the United Kingdom, which consisted of the words “Laboratoire De La Mer”.  During the relevant period (five years in the United Kingdom and the European Community), the trade mark owner had made very modest sales of products bearing the trade mark to a single importer in the United Kingdom, involving some five small deliveries and a total value of some £800.  There was evidence to show that the importer was intending to sell the products to the public through persons who would be appointed sub-agents to make such sales, but that before any such on sales took place, the importer ceased business.  At first instance, Blackburne J. took the view that in order for there to be “genuine use” in the sense required by Ansul and La Mer Technologies, there had to be sales to consumers or end-users, and that the sales by the trade mark owner to the importer did not qualify as “genuine use” of the trade mark in the United Kingdom.  The Court of Appeal reversed Blackburne J.’s decision, holding that any use of the trade mark that was consistent with its essential function, other than merely token or internal use, would qualify as “genuine use”, and that arm’s length sales to an independent importer, resulting in the goods being in different ownership in the United Kingdom, did amount, in the circumstances of the case, to “genuine use” so as to save the trade mark from revocation.

12.  In his judgment, Mummery L.J. had this to say:-

“23.   Although token use of a mark is obviously not genuine use, it would be illogical to assert that every case of non-token use qualifies as genuine use.  Ansul and the reasoned order in this case are clear that, even if the use is not token, it is still necessary to consider other factors in order to decide whether or not the use of the mark is genuine.  For example, internal use by the registered proprietor may not be token or sham, but it will fail to qualify as genuine use because it is internal only.

...

“25.   ... The question of the use of the mark by an importation by a single importer into a Member State was specifically raised in the reference, as it was a special feature of the facts in this case.  The answer given in para. 24 of the reasoned order was that such use “can be sufficient to demonstrated that such use is genuine”.  The act of importation of goods can constitute putting the goods bearing the mark on the market in the country to which they are imported.  The crucial question is what type or kind of market use is in fact sufficient in the particular case. ...

“32.   Blackburne J. interpreted and applied the rulings of the Court of Justice as placing considerably more importance on the market in which the mark comes to the attention of consumers and end users of the goods than I think they in fact do [original emphasis].  I agree with Mr Tritton that the effect of Blackburne J’s judgment was to erect a quantitative [sic] and qualitative test for market use and market share which was not set by the Court of Justice in its rulings.  The Court of Justice did not rule that the retail or end user market is the only relevant market on which a mark is used for the purpose of determining whether use of the mark is genuine.

“33.   Trade marks are not only used on the market in which goods bearing the mark are sold to consumers and end users.  A market exists in which goods bearing the mark are sold by foreign manufacturers to importers in the United Kingdom.  The goods bearing the LA MER mark were sold by Goemar and bought by Health Scope Direct on that market in arm’s length transactions.  The modest amount of the quantities involved and the more restricted nature of the import market did not prevent the use of the mark on the goods from being genuine use on the market.  The Court of Justice made it clear that, provided the use was neither token nor internal, imports by a single importer could suffice for determining whether there was genuine use of the mark on the market.”

13.  Neuberger L.J. agreed.  He noted (at paragraph 39 of the judgment) that it was common ground that use of a mark which was merely internal to the registered proprietor’s undertaking (or to that of his licensees or agents), or use which was merely token, undertaken merely with a view to defeating an application for revocation for non-use, would not qualify as “genuine use”.  He went on to say (paragraph 40) that the guidance provided by the European Court of Justice led to the conclusion that any use of a trademark that was “consistent with its essential function” as described in paragraph 36 of the Ansul judgment, other than token or internal use, would constitute “genuine use”.  He then went on to conclude that there was no reason to restrict “genuine use” so as to require that the mark should be communicated to the ultimate consumers of the goods on which it is place, saying (at paragraphs 48 and 49 of the judgment):-

“48.   ... I can see no warrant for such a requirement ... once the mark is communicated to a third party in such a way as can be said to be “consistent with the essential function of a trademark” as explained in [36] and [37] of the judgment in Ansul, it appears to me that genuine use for the purpose of the directive will be established.

“49.   A wholesale purchaser of goods bearing a particular trademark will, at least on the face of it, be relying upon the mark as a badge of origin just as much as a consumer who purchases such goods from a wholesaler.  The fact that the wholesaler may be attracted by the mark because he believes that the consumer will be attracted by the mark does not call into question the fact that the mark is performing its essential function as between the producer and the wholesaler.”

14.  The policy behind the requirement that a trade mark, once registered, should be used in order to justify its continued registration is stated in Ansul, at paragraph 37 of the judgment.  It is that the purpose of a trade mark is to enable its owner to create or preserve a market for goods or services produced or supplied by him.  It does so by granting to the owner the exclusive right to use the mark in that market, and the ability to stop others from using the mark in respect of their own goods or services.  However, where the mark is not in fact used for this purpose, it ceases to achieve this purpose.  There is then no longer any justification for preventing others from using it.

15.  Further, as a trade mark and the rights that are conferred by it are essentially territorial in nature, what is relevant for the purpose of deciding whether or not the owner should be entitled to retain the mark and its associated rights is use as a trade mark in the territory in respect of which it is registered.

16.  This policy was discussed by Jacob J. in Laboratoire De La Mer Trade Marks [2002] FSR 51 in the following terms:-

“19.   ... what amount and kind of use will suffice to prove that a mark has been put to genuine use within the meaning of Art.10?  It is worth stating in some detail why the question is so important.  There are a number of reasons:

(a)     There is an obvious strong public interest in unused trade marks not being retained on the registers of national trade mark offices.  They simply clog up the register and constitute a pointless hazard or obstacle for later traders who are trying actually to trade with the same or similar marks.  They are abandoned vessels in the shipping lanes of trade.

(b)     The 8^th recital of the Directive gives express recognition of that public interest.  It says:

‘Whereas in order to reduce the total number of trade marks registered and protected in the Community and, consequently, the number of conflicts which arise between them, it is essential to require that registered trade marks must actually be used or, if not used, be subject to revocation.’

The same goes for Community trade marks.  Again there is an express recognition of the importance of use.  This is in the 9^th recital of the Community Trade Mark Regulation which reads:

(c)     ‘Whereas there is no justification for protecting Community trade marks or, as against them, any trade mark which has been registered before them, except where the trade marks are actually used.’

The wider the specifications of goods or services permitted by the registration authorities, the greater the extent of the problem of unused marks. ... Whatever the width of the “umbra” of the specification, it should also be remembered that the holder’s rights to stop infringement or prevent registration of a later similar mark extend to the “penumbra” of “similar goods”.   ... A wide umbra means there is an even wider penumbra.  Other traders with a similar mark may not go into either the umbra or penumbra, whether it is by use or registration.

“20.   Thus it is that the jurisdiction to remove for non-use is very important.  It may be the only way of dealing with covetous specifications, albeit it can only come into play after five years from the date of registration. ...”

17.  Later in his judgment, when considering whether or not a minimum amount of use should be required, Jacob J. said this:-

“32.   Nor do I think that the absence of a de minimis rule significantly affects the policy behind the ligislation.  Yes, marks must be used within the relevant period, but there seems no reason to make a trader who has actually made some small, but proper, use of his mark, lose it.  Only if his use is in essence a pretence at trade should he do so. ...

...

“34.   One provision, relied upon by Mr Tritton, does not assist.  He points to Article 10(2)(b) of the Directive which says that:

‘affixing of the trade mark to goods or to the packaging thereof in the Member State concerned solely for export purposes’

‘shall constitute use.’

Mr Tritton that this shows you do not actually have to prove an act of trade.  True, but so what?  The use still has to be genuine.  You would not establish genuine use if all you had done was to put the mark on a few goods and exported them for a non-commercial purpose.  Actually the real point of Article 10(2)(b) is to ensure that use solely for export still counts as use of the mark within the Member State.  There is an obvious argument to the contrary in the absence of such a provision.  In the U.K., under the 1905 Act, that was so.  And, the House of Lords in Reddaway & Co. Ltd’s Application (1927) 44 R.P.C. 27, held that export use only could not be relied upon to establish distinctiveness.  To reverse that decision, the 1938 Act contained a new provision, section 31, to do much the same job as is now done by Article 10(2)(b).”

18.  I think that it is clear from these authorities that Mr Wong is right in submitting that what is essential (leaving aside section 52(3)(b) of the Ordinance) is that the Mark should have been used by being exposed to third parties (other than the Owner or his licensees or agents) on a market in Hong Kong for goods 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 source or origin of the goods to which it is affixed.  The Owner of the Mark, and his licensees and agents, would not rely on the Mark for this purpose, and thus, the utilisation of the Mark on goods which are seen by them only, and not by any third party purchaser or potential purchaser, whether wholesale or retail, cannot constitute a use of the Mark as a trade mark.  The mere fact that some third party might have seen the Mark in the course of transhipment would equally not be sufficient, as they would not then have done so in the context of a market for the goods in question, in which the Mark would be serving its essential function.

19.  At the hearing below, the Hearing Officer came to the view that there had been genuine use of the Mark by the Owner by placing orders with Hong Kong companies for the manufacture of the goods in China, and subsequently shipping the goods from China to Japan with transshipment in Hong Kong.  She rightly noted in paragraph 20 of her decision that it was not suggested in this case that the use was only token use, designed to defeat an application for revocation.  In paragraph 21 of her decision, she concluded that the purpose of the application of the Mark on the insoles of the goods and their packaging was use of the Mark in a way that was consistent with the essential function of a trade mark, because the purpose of doing so was to enable consumers or end users, whether in Hong Kong or otherwise, to distinguish the goods in question from others which came from a different trader.

20.  That may well have been so, but in my view, that does not amount to use (genuine or otherwise) of the Mark as a trade mark in Hong Kong, which is what section 52(2)(a) requires.  If the goods were never (as they were not) exposed to any market in Hong Kong in which third parties would or might rely on the Mark as a badge of origin in respect of the goods, the Mark was not, I think, used in Hong Kong.  There is, in this case, no suggestion of any such market having existed in the relevant period of three years prior to the revocation application.

21.  The Hearing Officer also appears to have relied on the fact that the transactions between the Owner and the Hong Kong companies that manufactured the goods in China were at arm’s length, and involved the transfer of property in the goods from the producers to the Owner.  However, it does not seem to me that this assists the Owner, since in none of these transactions could any of the parties to them have been relying on the Mark as a badge of origin in respect of the goods.  The manufacturers were producing the goods under licence and were themselves the source of the goods, and so far as the Owner was concerned, it cannot seriously be suggested that it was relying on its own Mark to inform itself of the origin of the goods which it had itself ordered.

22.  Before me, Mr Kerr, appearing for the Owner, submitted that there was nonetheless genuine use of the Mark as a trade mark in this case.  He contended that:-

(1)     Genuine use occurred when the Mark was used for its proper commercial purpose - in this case, the Mark was used in the course of a legitimate business transaction by which the Owner ordered goods from a manufacturer in Hong Kong, for production in China, being applied to the goods and their packaging in China, for the purpose of enabling consumers somewhere to identify the origin of the goods.  He suggested that it was artificial to split up the process and ask whether there was genuine use of the mark in China (where the goods were produced and the Mark affixed), Hong Kong (through which the goods were imported and exported in the course of transshipment) and Japan (where they were ultimately to be sold), and said that the Hearing Officer’s approach in paragraph 21 of her decision was correct.

(2)     There was also genuine use of the Mark in this case, because the affixing of the Mark to the goods prevented the manufacturers from selling any part of the goods produced to the Owner’s order to anyone other than the Owner, in Hong Kong or elsewhere.

(3)     The question of use was to be considered not just by reference to the Ansul line of cases, but also by reference to the provisions of section 52(3)(b) and section 18 of the Ordinance, which defines use for the purpose of considering whether or not a registered trade mark has been infringed.  In particular, he relied on the fact that by section 18(5)(f) of the Ordinance, import and export of goods bearing a registered trade mark, if done by someone other than the registered owner of the mark or his licensee, amounts to an infringing use of the mark.  He suggested that if import and export amounted to use for the purpose of infringement, they should equally amount to genuine use for the purpose of section 52(2)(a).  In this context, he relied on certain dicta in the decision in Imaginarium Trade Mark [2004] R.P.C. 30, at paragraph 36.

(4)     In this case, there was an arm’s length transaction on a market, in that the market on which the Owner placed orders with Hong Kong companies for the manufacture of the goods in China was a relevant market, and there was nothing to suggest that the orders which had been placed were otherwise than at arm’s length.

(5)     In any event, once the Mark had been affixed with a view to the goods eventually finding a market on which the Mark would serve its essential function, the Mark was in genuine use at all material times from the time when it was affixed until it reached that market, and was in such use at all places through which it passed on the way to such market, regardless of whether or not the goods were exposed to any market in each of such intermediate places.

(6)     Given the importance to Hong Kong of trade involving the placing of orders with Hong Kong companies for the manufacture of goods in (usually southern) China, it would be undesirable for trade mark owners who had goods manufactured in this way to be at risk of having their marks revoked for non-use where they did not in fact have a market for their goods in Hong Kong, so that they might have difficulties in being able to carry on business in the way to which they had become accustomed.  Put another way, import into and export out of Hong Kong in the course of finding a market for the goods amounted to genuine use of the trade mark.

23.  Mr Kerr also suggested that the decisions of the European Court of Justice, and of the English Courts in the Laboratoire De La Mer Trade Mark cases should be viewed with some reserve, given that conditions in Hong Kong might differ from those in Europe.  With respect, I do not agree.  It seems to me that the purpose of a trade mark, and the reason why it is given protection in the way that it is in the relevant trade mark legislation, is essentially similar in both Hong Kong and Europe.

24.  Nor do I think that any of the other points made assist the Owner in this case.

25.  So far as the first and fifth arguments mentioned in paragraph 22 above are concerned, I have dealt with these at paragraphs 19 and 20 above.  The fact is that the protection conferred upon owners of registered trade marks under the Ordinance is territorial, and is restricted to Hong Kong.  Given the purpose of affording protection to trade marks, which I have discussed above, it is, in my view, necessary to consider the position so far as use is concerned in relation to Hong Kong in isolation.  If this were not the case, it would be possible for a person to acquire a trade mark registration in Hong Kong without any intention at all of creating or developing a market for goods under the mark in Hong Kong.  In those circumstances, the Mark would not be serving its essential function in Hong Kong, and thus would not be being used as a trade mark in Hong Kong.

26.  I do not think that the second argument is a valid one.  If the Owner were to take action against the manufacturer for selling goods bearing the Mark to someone other than the Owner, he would not be using the Mark, but would be using or enforcing the rights which ownership of the Mark confers upon him.  This cannot in my view equate to use of the mark as a trade mark for the purposes of section 52(2)(a).  Were it otherwise, the effect would be that even if no goods were manufactured, sold or shipped through Hong Kong at all, the bringing of an action for trademark infringement would result in the extension of the validity of the mark for a further period of three years.  I do not think that this can be right.

27.  As to the argument that use for the purposes of section 18 should also be considered to be use for the purposes of section 52(2)(a), I do not think that the statement in the Imaginarium case, which was in any event obiter (as there was in that case, use of the nature defined by the English equivalent of section 52(3)(b)) is well founded:-

(1)     It is pointed out in Kerly’s Law of Trade Marks and Trade Names (14^th ed) at para 10-055 that:-

“what counts as genuine use in the course of trade in say, the United Kingdom, should also count as the use of the sign for the purposes of infringement.  The reverse is not necessarily true at all.”

(2)     The same view was expressed by Blackburne J. in Laboratoire De La Mer Trade Mark (No. 2) [2005] FSR 29 at paragraphs 36 to 37 of his judgment.  The reasoning in this part of his judgment was not, in my view, affected by the overruling of his decision by the Court of Appeal.

(3)     As a matter of interpretation of the Ordinance, it seems to me that given that section 18(5) defines a range of activities that constitute “use” for the purpose of section 18, and section 52(3) defines a different range of activities that constitute “use” for the purpose of section 52(2)(a), it is not permissible, as a matter of construction to treat the two definitions as interchangeable.  Were this intended, one would have expected to see a common definition for the purpose of both provisions.

28.  I do not think that the argument that there was a market in this case assists either.  While there may have been a market on which the Owner was able to find a manufacturer to manufacture goods to his order, that was not a relevant market for the purposes of use within the meaning of section 52(2)(a), since no-one on that market would have been relying on the Mark as a badge of origin in respect of the goods, for the reasons which I have explained in paragraph 21 above.

29.  So far as the final point made by Mr Kerr is concerned, I do not think that this takes the matter any further.  If transshipment is not (as I think it is not) “use” of a trade mark for the purposes of section 52(2)(a) of the Ordinance, it does not become such use because of the concerns which Mr Kerr has expressed.  To the extent that it may be thought that the concern is a valid one, the answer lies not in a strained interpretation of “use as a trade mark”, but in the enactment of a further form of deemed use for the purposes of section 52(2)(a), which would operate in the same way as section 52(3)(b) operates as explained by Jacob J. in his judgment in Laboratoire De La Mer Trade Mark to which I have referred in paragraph 17 above.

30.  I am therefore of the view that, in the circumstances of this case, while the activities undertaken by the Owner of the Mark were not by any means token, they did not amount to use or genuine use of the Mark in Hong Kong within the meaning of section 52(2)(a) of the Ordinance.  It follows the appeal should be allowed, and the Owner’s registration of the Mark revoked.  So far as costs are concerned, I shall make an order nisi that the costs of this appeal, and of the hearing in the Trade Mark Registry should be paid by the Owner to the Applicant, to be taxed on the party and party basis if not agreed.