RE MS CONNIE LAW ACTING FOR THE REGISTRAR OF TRADE MARKS DATED 10 OCTOBER 2024 IN RELATION TO AN OPPOSITION BY 星洲藥業(香港)有限公司 TO TRADE MARK APPLICATION NO. 305197753 IN CLASSES 3 AND 5 APPLIED FOR BY MR CHI WING LIMITED AND LAW OI YING LTD TRADING AS SINGAPORE HEADWAY MEDICINE COMPANY 池榮有限公司及羅愛英有限公司以星加坡鴻威藥業公司之名營業

RE MS CONNIE LAW ACTING FOR THE REGISTRAR OF TRADE MARKS DATED 10 OCTOBER 2024 IN RELATION TO AN OPPOSITION BY 星洲藥業(香港)有限公司 TO TRADE MARK APPLICATION NO. 305197753 IN CLASSES 3 AND 5 APPLIED FOR BY MR CHI WING LIMITED AND LAW OI YING LTD TRADING AS SINGAPORE HEADWAY MEDICINE COMPANY 池榮有限公司及羅愛英有限公司以星加坡鴻威藥業公司之名營業

The Hearing Officer was entitled to make the Challenged Finding in the opposition: a respondent may adduce evidence in opposition proceedings that a part of an Earlier Mark lacks distinctiveness without bringing a formal revocation under section 52, the evidential threshold for revocation is different and was not required here, and the Hearing Officer properly accepted the unchallenged evidence (LOY Declaration) and made a defensible evaluative judgment; accordingly the appeal is dismissed.

Citation
[2025] HKCFI 3087
Parties
Appellant/opponent: Appellant; Respondent/applicant: Respondent
Court
Court of First Instance
Jurisdiction
Hong Kong
Judgment Date
16 July 2025
Case Number
HCIP63/2024
Procedural Posture
Intellectual Property Trade Marks Opposition / Appeal to Court of First Instance (judgment)
Outcome
Appeal dismissed in its entirety
Legal Topics
Distinctiveness, Likelihood of Confusion, Honest Concurrent Use, Revocation, Procedural Fairness, Deference to Registrar
Source Language
EN
Intellectual Property Trade Mark Law Administrative Law Distinctiveness Likelihood of Confusion Honest Concurrent Use Revocation Procedural Fairness +1 more

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Parties

Appellant

Appellant/opponent

Respondent

Respondent/applicant

Procedural Posture

Intellectual Property Trade Marks Opposition / Appeal to Court of First Instance (judgment)

Legal Issues

  1. 1 Whether the Hearing Officer was entitled to find part of an Earlier Mark had become a common name/lacked distinctiveness in opposition proceedings without a formal revocation application under section 52 TMO
  2. 2 Whether making the Challenged Finding without a specific plea or revocation application breached procedural propriety
  3. 3 Whether evidence was sufficient to support the Challenged Finding absent challenge by the appellant

Ratio Decidendi

The Hearing Officer was entitled to make the Challenged Finding in the opposition: a respondent may adduce evidence in opposition proceedings that a part of an Earlier Mark lacks distinctiveness without bringing a formal revocation under section 52, the evidential threshold for revocation is different and was not required here, and the Hearing Officer properly accepted the unchallenged evidence (LOY Declaration) and made a defensible evaluative judgment; accordingly the appeal is dismissed.

Court Disposition

Appeal dismissed in its entirety

Orders

  • Amended Notice of Originating Motion dismissed
  • Order nisi that costs of and occasioned by the ANOM including any reserved costs be paid by the appellant to the respondent, to be taxed if not agreed