CYBEX GmbH v. SYTO CONSULTANTS AND INVESTMENT LTD

CYBEX GmbH v. SYTO CONSULTANTS AND INVESTMENT LTD

The Non-use Application succeeds because Syto failed to prove genuine use of the registered device mark in Hong Kong after 12 December 2014 and the period of non-use is fixed as commencing 13 December 2014; the Appeal against the Registrar's refusal to invalidate the registration is dismissed because the Hearing...

Source-derived case information.

Citation
[2022] HKCFI 972
Parties
Plaintiff/appellant: CYBEX GmbH; Defendant/respondent: Syto Consultants and Investment Limited
Court
Court of First Instance
Jurisdiction
Hong Kong
Judgment Date
6 April 2022
Case Number
HCMP75/2020
Procedural Posture
Trade Mark Revocation for Non Use and Appeal Against Registrar's Invalidation Decision / Final Judgment (court of First Instance)
Outcome
Non-use application allowed; registration revoked from 13 December 2014. Appeal against Registrar dismissed.
Legal Topics
Revocation for Non Use, Invalidation for Earlier Rights/bad Faith, Consent to Registration, Genuine Use, Appeal From Registrar
Source Language
en
Intellectual Property Trade Marks Copyright Civil Procedure Revocation for Non Use Invalidation for Earlier Rights/bad Faith Consent to Registration Genuine Use +1 more

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Parties

CYBEX GmbH

Plaintiff/appellant

Syto Consultants and Investment Limited

Defendant/respondent

Procedural Posture

Trade Mark Revocation for Non Use and Appeal Against Registrar's Invalidation Decision / Final Judgment (court of First Instance)

Legal Issues

  1. 1 Whether the registered device mark was genuinely used in Hong Kong for a continuous 3-year period prior to 16 January 2020
  2. 2 Whether the 2011 registration of the device mark was made in bad faith
  3. 3 Whether Cybex owned earlier copyright preventing registration or use of the device and whether consent was given

Ratio Decidendi

The Non-use Application succeeds because Syto failed to prove genuine use of the registered device mark in Hong Kong after 12 December 2014 and the period of non-use is fixed as commencing 13 December 2014; the Appeal against the Registrar's refusal to invalidate the registration 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 filings and s53(6) precludes invalidation on the copyright/earlier-rights ground; bad faith was not established.

Court Disposition

Non-use application allowed; registration revoked from 13 December 2014. Appeal against Registrar dismissed.

Orders

  • Revocation of Hong Kong Trade Mark Registration No. 301949473 with effect from 13 December 2014
  • Appeal HCMP 172/2020 dismissed and Invalidation Application refused to the extent appealed