CHAN KWOK KI v. PANG SIU MING

CHAN KWOK KI v. PANG SIU MING

The Second Assignments were invalid because the assignors had no title by reason of the prior registered First Assignment (nemo dat); the Registrar had wrongly accepted and entered the Second Assignments on the Register; on balance of public interest and preserving the purity of the Register the court exercised its discretion under s.48(1) to order rectification (expunge the Second Assignments). Separately, on the evidence the defendant caused counterfeit Wood Lock Oil to be manufactured and labelled with Wan Li identifiers at Jizhu after ZHYKL ceased production and was therefore liable for passing off; the defendant's counterclaim was dismissed.

Citation
CHAN KWOK KI v. PANG SIU MING
Parties
Plaintiff (hca 7966/1993): Ying Kut Lee Medicine Factory Limited; Plaintiff (hca 2246/1995): Chan Kwok Ki; Defendant (both Actions): Pang Siu Ming
Court
Court of First Instance
Jurisdiction
Hong Kong
Judgment Date
3 July 2002
Case Number
HCA2246/1995
Procedural Posture
Civil Trial Passing Off and Rectification of Trade Marks; Ancillary Claims of Rescission/misrepresentation / Judgment Following Trial; Preliminary Issue on Rectification Determined Prior to Full Hearing
Outcome
Register rectified by expunging entries relating to the Second Assignments; judgment for plaintiffs (YKL/CKK) on passing off; defendant's counterclaim dismissed; 1995 action not pursued further in light of rectification; costs ordered as below.
Legal Topics
Rectification of Trade Marks Register, Assignment of Trade Marks, Nemo Dat Quod Non Habet, Goodwill, Misrepresentation, Passing Off, Court Discretion on Rectification, Costs Allocation
Source Language
EN
Intellectual Property Trade Marks Tort (passing Off) Contract Equity Rectification of Trade Marks Register Assignment of Trade Marks Nemo Dat Quod Non Habet +5 more

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Parties

Ying Kut Lee Medicine Factory Limited

Plaintiff (hca 7966/1993)

Chan Kwok Ki

Plaintiff (hca 2246/1995)

Pang Siu Ming

Defendant (both Actions)

Procedural Posture

Civil Trial Passing Off and Rectification of Trade Marks; Ancillary Claims of Rescission/misrepresentation / Judgment Following Trial; Preliminary Issue on Rectification Determined Prior to Full Hearing

Legal Issues

  1. 1 Whether the Second Assignments were valid and conferred proprietary title in the registered marks
  2. 2 Whether the entries relating to the Second Assignments should be rectified under s.48(1) of the Trade Marks Ordinance
  3. 3 Whether the defendant was liable for passing off by causing counterfeit products to be manufactured and sold

Ratio Decidendi

The Second Assignments were invalid because the assignors had no title by reason of the prior registered First Assignment (nemo dat); the Registrar had wrongly accepted and entered the Second Assignments on the Register; on balance of public interest and preserving the purity of the Register the court exercised its discretion under s.48(1) to order rectification (expunge the Second Assignments). Separately, on the evidence the defendant caused counterfeit Wood Lock Oil to be manufactured and labelled with Wan Li identifiers at Jizhu after ZHYKL ceased production and was therefore liable for passing off; the defendant's counterclaim was dismissed.

Court Disposition

Register rectified by expunging entries relating to the Second Assignments; judgment for plaintiffs (YKL/CKK) on passing off; defendant's counterclaim dismissed; 1995 action not pursued further in light of rectification; costs ordered as below.

Orders

  • Rectify the Trade Marks Register by removing entries relating to the Second Assignments
  • Judgment for Ying Kut Lee Medicine Factory Limited in respect of passing off against Pang Siu Ming