CHI WING AND LAW OI YING t/a SINGAPORE HEADWAY MEDICINE CO v. ENG KWAN LAN t/a KAM YING TRADING CO

CHI WING AND LAW OI YING t/a SINGAPORE HEADWAY MEDICINE CO v. ENG KWAN LAN t/a KAM YING TRADING CO

The court held that while it is permissible practice to treat s.10 distinctiveness separately from s.12/s.22 proprietorship issues, the Hearing Officer erred by considering only notional fair use and failing to account for actual use when assessing likelihood of deception; accordingly the first limb of s.12(1) (likelihood of deception) and the question of honest concurrent use under s.22 are remitted to the Hearing Officer for rehearing; the respondent may challenge below despite absence of a formal notice of cross-appeal and costs are reserved as ordered.

Citation
CHI WING AND LAW OI YING t/a SINGAPORE HEADWAY MEDICINE CO v. ENG KWAN LAN t/a KAM YING TRADING CO
Parties
Opponent/appellant: MEDICINE COMPANY; Applicant/respondent: ENG KWAN LAN trading as KAM YING TRADING CO.
Court
Court of First Instance
Jurisdiction
Hong Kong
Judgment Date
28 March 2008
Case Number
HCMP730/2007
Procedural Posture
Appeal Against Registrar's Decision Under the Trade Marks Ordinance (cap.43) / Judgment on Appeal in the Court of First Instance
Outcome
Appeal allowed in part and remitted to the Hearing Officer for rehearing on the first limb of s.12(1) (likelihood of deception) and on s.22 (honest concurrent use); other parts of the appeal dismissed or not sustained.
Legal Topics
Registrability Under Part B, Distinctiveness (s.10), Likelihood of Deception and Disentitlement (s.12(1)), Honest Concurrent Use (s.22), Proprietorship (s.13), Cross Appeal Practice, Remittal for Rehearing
Source Language
EN
Trade Marks Intellectual Property Administrative Law Civil Procedure Registrability Under Part B Distinctiveness (s.10) Likelihood of Deception and Disentitlement (s.12(1)) Honest Concurrent Use (s.22) +3 more

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Parties

MEDICINE COMPANY

Opponent/appellant

ENG KWAN LAN trading as KAM YING TRADING CO.

Applicant/respondent

Procedural Posture

Appeal Against Registrar's Decision Under the Trade Marks Ordinance (cap.43) / Judgment on Appeal in the Court of First Instance

Legal Issues

  1. 1 Whether a respondent may challenge a hearing officer's finding in the absence of a formal notice of cross-appeal
  2. 2 Whether the hearing officer erred in law by disregarding the opponent's actual use when assessing registrability under s.10
  3. 3 Whether the applicant's mark was likely to deceive or was disentitled to protection under s.12(1)

Ratio Decidendi

The court held that while it is permissible practice to treat s.10 distinctiveness separately from s.12/s.22 proprietorship issues, the Hearing Officer erred by considering only notional fair use and failing to account for actual use when assessing likelihood of deception; accordingly the first limb of s.12(1) (likelihood of deception) and the question of honest concurrent use under s.22 are remitted to the Hearing Officer for rehearing; the respondent may challenge below despite absence of a formal notice of cross-appeal and costs are reserved as ordered.

Court Disposition

Appeal allowed in part and remitted to the Hearing Officer for rehearing on the first limb of s.12(1) (likelihood of deception) and on s.22 (honest concurrent use); other parts of the appeal dismissed or not sustained.

Orders

  • Matter remitted to the Hearing Officer for rehearing and determination on the first limb of section 12(1) and on section 22 (honest concurrent use)
  • Costs of this appeal to be in the cause of the rehearing below (order nisi); order to become absolute 14 days from judgment in the absence of any application for variation