COLOURPOP COSMETICS, LLC AND ANOTHER v. KCH INTERNATIONAL DEVELOPMENT CO LTD

HCIP 72/2021

[2022] HKCFI 2474

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

INTELLECTUAL PROPERTY PROCEEDINGS NO 72 OF 2021

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	IN THE MATTER OF The Trade Marks Ordinance (Cap 559)
	and
	IN THE MATTER OF Hong Kong Trade Mark Registration
	(1) No. 304618756 “” in Class 3
	(2) No. 305012919 “” in Class 35
	(3) No. 305017888 “” in Class 3
	(4) No. 305017897 “” in Class 3
	(5) No. 305099194 “” in Class 3
	(6) No. 305181345 “” in Class 21
	(7) No. 305284648 “” in Classes 3 and 35
	(8) No. 305320836 “” in Classes 3 and 35
	(9) No. 305414184 “” in Class 3
	(10) No. 305414193 “” in Classes 3 and 35
	(11) No. 305414201 “” in Class 3
	(12) No. 305493079 “” in Classes 21 and 35
	in the name of KCH International Development Company Limited (香港嘉世行國際發展有限公司)
	and
	IN THE MATTER OF an application for a declaration of invalidity of the said registrations by ColourPop Cosmetics, LLC and 3B, LLC

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D E C I S I O N

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1.  This is an application for a declaration of invalidity of the trade marks registered by the defendant.

2.  The originating summons and the notice of hearing have been properly served on the defendant, and yet no one appears on behalf of the defendant today.  Perhaps I should also mention that there is one Mr Ma who seeks to represent the defendant in this hearing.  Since this Mr Ma is not a director of the defendant and the defendant has not obtained the leave of the court to defend the case in person, I treat the defendant as absent in this hearing.

3.  After the service of the originating summons, the defendant has not filed any affidavit in opposition, and the court is only faced with the evidence adduced by the plaintiffs.  Mr Tong, solicitor for the plaintiffs, asks the court to dispose of this application in a summary manner.  Since there is no affidavit in opposition, I agree to do so.

4.  I have perused the materials supplied by the plaintiffs in the present case.  I am satisfied that the defendant’s trade marks should be declared invalid on the ground that the use of the defendant’s marks will lead to passing off in respect of the plaintiffs’ marks which have been used by them before the applications of the trade marks by the defendant.

5.  In fact, the marks registered by the defendant are very similar, if not identical, to the plaintiffs’ marks.  The plaintiffs have already established that they had been using these marks before the applications.  Though the use was not for a long period of time, such use was sufficient to establish the plaintiffs’ goodwill and reputation necessary to maintain a claim for passing off in Hong Kong.  In such case, the use of the defendant’s trade marks would certainly lead to passing off in respect of the plaintiffs’ marks which have been used by the plaintiffs for quite some time.

6.  I have also perused the evidence filed by the plaintiffs in respect of the allegation of bad faith.  Someone from the defendant had indeed approached the plaintiffs and attempted to obtain the distributorship of the plaintiffs’ products in the Mainland.  Under such circumstances, I am satisfied that the application for the registration of the marks in Hong Kong were made by the defendant in bad faith due to the fact that the defendant should have known that the plaintiffs had been using their marks for some time. This is a classic case where the defendant tried to obtain the right unlawfully by way of prior registration.  In fact, the goodwill associated with these marks belonged to the plaintiffs, and I am satisfied that the applications were made in bad faith.

7.  For the above reasons, I am satisfied that the defendant’s trade marks should be declared invalid.