CHAN CHUN KUEN v. TRADE MARKS REGISTRAR

HCAL 24/2008

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

CONSTITUTIONAL AND ADMINISTRATIVE LAW LIST

NO. 24 OF 2008

____________

_____________

D E C I S I O N

_____________

1.  Mr. Chan made a trademark application in December 2004. His application was opposed by Palmerston Ltd. There have since been preliminary hearings in relation to Mr. Chan’s application. A substantive hearing is now due to take place on 28 March 2011.

2.  Mr. Chan seeks leave to apply for judicial review of a preliminary decision of the Trade Mark Registrar dated 28 February 2008.  By that decision Ms. Jessica Law on behalf of the Registrar allowed documentary evidence in Chinese to be adduced by Palmerston without translation into English.  As a result, that evidence can be referred to in the substantive hearing on 28 March 2011. 

3.  Mr. Chan originally sought leave for judicial review on 3 March 2008.  But the leave application has been pursed sporadically due to Mr. Chan’s poor health.  Mr. Chan also applied for Legal Aid on a number of occasions.  But his applications have been rejected by Legal Aid.  He has since filing the application for leave for judicial review in March 2008 become subject to a Restrictive Proceedings Order made by Au J on 27 September 2010.

4.  In July 2005 Mr. Chan asked to have the proceedings before the Registrar heard in Chinese.  That was because Mr. Chan is significantly more comfortable with Chinese than he is with English.  Palmerston, through its solicitors Wilkinson & Grist, did not agree to Mr. Chan’s request.  The Registrar then wrote to Mr. Chan on 9 July 2005 confirming that the proceedings would be conducted in English.

5.  Thereafter, statements and counter-statements and evidence on the substance of the trademark application were filed by Mr. Chan and Palmerston.  In June 2007 Mr. Chan objected to Palmerston’s having filed evidence in the form of Chinese documents without English translation.  Mr. Chan contended that, the Registrar having determined that the language of the proceedings was English, it was incumbent on Palmerston to translate all Chinese documents upon which it was relying into English.  Palmerston not having done so, Mr. Chan argued that the untranslated Chinese evidence should be ignored. 

6.  I note that Mr. Chan was (and is) content for the proceedings to be conducted in English.  But he maintains that, in all fairness to him, the language of the proceedings having been held (on Palmerston’s insistence) to be English, Palmerston should be held to that election.  Mr. Chan does not insist (and has told Palmerston’s solicitors that he does not require) that the Chinese documents be translated.  Instead, he says that, the documents not having been translated, they should simply be disregarded.  That (Mr. Chan submits) is the legal and logical consequence of the Palmerston’s insistence on English as the language of proceedings. 

7.  Ms. Law, however, did not think that it would be right to ignore the Chinese evidence filed by Palmerston.  Ms. Law held that she had to treat that evidence as admissible and, Mr. Chan having said that he was not requiring translation into English, Ms. Law would not direct Palmerston to file English translations.  Ms. Law consequently dismissed Mr. Chan’s objection to the untranslated Chinese evidence.

8.  I am unable to find a reviewable error in Ms. Law’s reasoning.  I do not think that Mr. Chan’s proposed application for judicial review against Ms. Law’s decision stands any prospect of success.  I see no merit in Mr. Chan’s proposed judicial review. Mr. Chan is attempting to use a technical objection to prevent the Registrar from considering the Chinese evidence.  The reality is that Mr. Chan would himself be more comfortable reading the relevant documents in Chinese and making submissions in Chinese.  His proposed judicial review (ostensibly to bar evidence which has not been translated into English) is purely tactical.

9.  Mr. Chan also objects to the Registrar or any person employed in the Government’s Intellectual Property Department (IPD) from hearing the substantive trademark application. This is because (according to Mr. Chan) there would be apparent bias if someone from the Registry were to hear the matter. 

10.  That alleged apparent bias arises from the fact that on 28 September 2008 various IPD officers (including the Director of Intellectual Property) took part in an Intellectual Property Rights Protection Seminar at which Ms. Anne Choi of Wilkinson & Grist also spoke.  Mr. Chan submits that the event shows a close connection between the IPD (including the Registrar and Registry staff) and Wilkinson & Grist (Palmerston’s solicitors). 

11.  Mr. Chan believes that, subsequently, there have been similar seminars or events at which IPD representatives have had social contact with solicitors from Wilkinson & Grist.  Mr. Chan refers to the “cunning” of Palmerston (acting through Wilkinson & Grist) in establishing the contacts of which Mr. Chan complains.

12.  However, in my view, Mr. Chan’s application to annul Ms. Law’s preliminary decision on account of bias is bound to fail.  The seminars or other events which he criticises would not lead a fair-minded and reasonable observer to apprehend that there was a real danger of bias against Mr. Chan on the part of the Registrar or any representative of the Registrar.  Ms. Law rightly rejected Mr. Chan’s allegation of bias and rightly refused to recuse herself from hearing Mr. Chan’s trade mark application.

13.  By reason of the foregoing, leave to apply for judicial review is refused.