CHEUNG YAN t/a WAH CHEONG v. YUE LUNG SEA PRODUCTS TRADING CO LTD AND ANOTHER

CHEUNG YAN t/a WAH CHEONG v. YUE LUNG SEA PRODUCTS TRADING CO LTD AND ANOTHER

The court found that as at the registration date (26 May 1998) a strong residual reputation attached to the earlier Yubi Brand marks; Cheung had deliberately copied core elements of that packaging; use of the Device and Character Marks on related hoi mei products would likely deceive consumers as to trade origin and also involved misrepresentations (Japanese origin; whelk sold as abalone). Consequently registrations were unlawful under s.12(1) (deceptive/disentitled to protection) and the register was rectified by expunging the Device and Character Marks; passing off failed in any event and copyright claim was withdrawn.

Citation
CHEUNG YAN t/a WAH CHEONG v. YUE LUNG SEA PRODUCTS TRADING CO LTD AND ANOTHER
Parties
Plaintiff / Respondent: Cheung Yan trading as Wah Cheong; 1st Defendant / Applicant: Yue Lung Sea Products Trading Company Limited; 2nd Defendant: Yue Loong Ho Limited
Court
Court of First Instance
Jurisdiction
Hong Kong
Judgment Date
24 June 2005
Case Number
HCMP2606/2000
Procedural Posture
Trade Mark Infringement; Rectification of Register of Trade Marks; Passing Off; Copyright (withdrawn) / Judgment (court of First Instance)
Outcome
Dismissed plaintiff's claims in HCA 2562/2000; acceded to Yue Lung's application HCMP 2606/2000 and ordered rectification of the Register by expunging the Device and Character Marks; passing off claim dismissed; copyright claim withdrawn.
Legal Topics
Rectification/expungement of Trade Mark, Likelihood of Deception and Residual Reputation, Misrepresentation of Origin and Product, False Claim of Proprietorship/abandonment, Clean Hands, Remedies and Costs
Source Language
EN
Trade Mark Law Passing Off Copyright Civil Procedure Intellectual Property Rectification/expungement of Trade Mark Likelihood of Deception and Residual Reputation Misrepresentation of Origin and Product +3 more

Case Brief

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Parties

Cheung Yan trading as Wah Cheong

Plaintiff / Respondent

Yue Lung Sea Products Trading Company Limited

1st Defendant / Applicant

Yue Loong Ho Limited

2nd Defendant

Procedural Posture

Trade Mark Infringement; Rectification of Register of Trade Marks; Passing Off; Copyright (withdrawn) / Judgment (court of First Instance)

Legal Issues

  1. 1 Whether Device and Character Marks should be expunged under s.12(1) and s.48(1)(a) of the old Trade Marks Ordinance (Cap.43)
  2. 2 Whether a residual reputation in the earlier Yubi Brand marks existed as at 26 May 1998
  3. 3 Whether use by Cheung would be likely to deceive as to trade origin

Ratio Decidendi

The court found that as at the registration date (26 May 1998) a strong residual reputation attached to the earlier Yubi Brand marks; Cheung had deliberately copied core elements of that packaging; use of the Device and Character Marks on related hoi mei products would likely deceive consumers as to trade origin and also involved misrepresentations (Japanese origin; whelk sold as abalone). Consequently registrations were unlawful under s.12(1) (deceptive/disentitled to protection) and the register was rectified by expunging the Device and Character Marks; passing off failed in any event and copyright claim was withdrawn.

Court Disposition

Dismissed plaintiff's claims in HCA 2562/2000; acceded to Yue Lung's application HCMP 2606/2000 and ordered rectification of the Register by expunging the Device and Character Marks; passing off claim dismissed; copyright claim withdrawn.

Orders

  • Register of Trade Marks to be rectified by expunging Device Mark and Character Mark (Trade Mark Registration Nos. 7191 of 1999 and 14647 of 2000)
  • Dismissal of Cheung Yan trading as Wah Cheong's claims in HCA 2562 of 2000