RE AN APPLICATION BY CYBEX GMBH

RE AN APPLICATION BY CYBEX GMBH

The Non-use Application under s52(2)(a) is allowed because Syto/Charmie failed to prove genuine use of the Suit Mark in Hong Kong from 17 January 2017 to 16 January 2020 and the court found non-use commenced 13 December 2014; the appeal against the Registrar is dismissed because the Hearing Officer was entitled to find on the balance of probabilities that the Dickinson Group had authorization/consent from Cybex for the 2011 registration and therefore there was no bad faith, and s53(6) precludes invalidation on the copyright ground once consent is established.

Citation
[2022] HKCFI 972
Parties
Plaintiff; Appellant: Cybex GmbH; Defendant; Respondent; Registered Proprietor: Syto Consultants and Investment Limited; Previous Registered Proprietor (assigned to Syto): Charmie Investments Limited
Court
Court of First Instance
Jurisdiction
Hong Kong
Judgment Date
6 April 2022
Case Number
HCMP172/2020
Procedural Posture
Trade Mark Revocation (non Use) and Invalidation Appeal Under the Trade Marks Ordinance (cap.559) / Final Judgment (decision on Non Use Application and Appeal From Registrar)
Outcome
Non-use application allowed; registration of Hong Kong Trade Mark No.301949473 (the Suit Mark) revoked with non-use commencing 13 December 2014; Appeal against Registrar dismissed.
Legal Topics
Non Use Revocation Under S52, Bad Faith Registration (s53(3), S11(5)(b)), Earlier Rights/copyright Invalidation (s53(5)(b), S12(5)(b)), Consent to Registration (s53(6)), Distribution Agreements and Leftover Stock, Appeal From Registrar
Source Language
EN
Intellectual Property Trade Marks Civil Procedure Non Use Revocation Under S52 Bad Faith Registration (s53(3), S11(5)(b)) Earlier Rights/copyright Invalidation (s53(5)(b), S12(5)(b)) Consent to Registration (s53(6)) Distribution Agreements and Leftover Stock +1 more

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Parties

Cybex GmbH

Plaintiff; Appellant

Syto Consultants and Investment Limited

Defendant; Respondent; Registered Proprietor

Charmie Investments Limited

Previous Registered Proprietor (assigned to Syto)

Procedural Posture

Trade Mark Revocation (non Use) and Invalidation Appeal Under the Trade Marks Ordinance (cap.559) / Final Judgment (decision on Non Use Application and Appeal From Registrar)

Legal Issues

  1. 1 Whether the Suit Mark was genuinely used in Hong Kong for the relevant 3-year period under s52(2)(a)
  2. 2 Whether consent/authorization existed for the 2011 registration (bad faith issue)
  3. 3 Whether copyright or earlier rights invalidated registration or were subject to consent (s53(5)(b) v s53(6))

Ratio Decidendi

The Non-use Application under s52(2)(a) is allowed because Syto/Charmie failed to prove genuine use of the Suit Mark in Hong Kong from 17 January 2017 to 16 January 2020 and the court found non-use commenced 13 December 2014; the appeal against the Registrar is dismissed because the Hearing Officer was entitled to find on the balance of probabilities that the Dickinson Group had authorization/consent from Cybex for the 2011 registration and therefore there was no bad faith, and s53(6) precludes invalidation on the copyright ground once consent is established.

Court Disposition

Non-use application allowed; registration of Hong Kong Trade Mark No.301949473 (the Suit Mark) revoked with non-use commencing 13 December 2014; Appeal against Registrar dismissed.

Orders

  • The registration of the Suit Mark No.301949473 is revoked with the period of non-use commencing from 13 December 2014
  • The appeal in HCMP 172/2020 against the Registrar's decision is dismissed