Hong Kong Case Law: Decisions & Judgments

Topic

Bad faith registration

Legal area

Court

18 Jan 2022

COLOURPOP COSMETICS, LLC AND ANOTHER v. KCH INTERNATIONAL DEVELOPMENT CO LTD

Citation

[2022] HKCFI 2474
Court

Court of First Instance
Case number

HCIP72/2021

Plaintiffs had prior use and sufficient goodwill; the defendant's marks are identical or very similar such that use would lead to passing off; the defendant applied for registration knowing of the plaintiffs' use (evidenced by attempts to obtain distributorship), demonstrating bad faith; accordingly the defendant's registrations are invalid.
30 Nov 2018

JAYJUN COSMETIC CO., LTD v. JAY JUN (KOREA COSMETIC LTD)

Citation

[2018] HKCFI 2619
Court

Court of First Instance
Case number

HCMP161/2018

The defendant's Hong Kong trademark registration was obtained in bad faith: the plaintiff established prior use and reputation, the defendant's mark copied the plaintiff's mark's key features indicating knowledge and premeditation, the defendant offered no credible defence and its conduct evidenced an attempt to extract a financial advantage; accordingly the court granted the declaration sought under s.53 and awarded indemnity costs to the plaintiff.
19 Apr 2017

THE CHINESE INSTITUTE OF CERTIFIED FINANCIAL PLANNERS LTD v. ZHAO LIANG AND ANOTHER

Citation

THE CHINESE INSTITUTE OF CERTIFIED FINANCIAL PLANNERS LTD v. ZHAO LIANG AND ANOTHER
Court

Court of First Instance
Case number

HCA951/2010

Summary judgment was refused because the defendants' evidence disclosed an arguable triable issue that the trade mark was registered in bad faith based on the 2006 share transfer agreement, alleged obligations not to register by the transferor, the transferee's continuing interest in a related company, and evidence of the transferor's involvement with the plaintiff; further discretion favoured refusal given related passing off claims and delay by the plaintiff.
25 Mar 2015

WONG TO YICK WOOD LOCK OINTMENT LTD v. WINTEX MEDICINE TRADING LTD

Citation

WONG TO YICK WOOD LOCK OINTMENT LTD v. WINTEX MEDICINE TRADING LTD
Court

Court of First Instance
Case number

HCMP1950/2014

Respondent lacked existence at the relevant time and provided no explanation for adopting the applicant's mark; on the evidence the registration was obtained in bad faith so the registration is invalid and should be removed, and the respondent must pay the applicant's costs.
20 Jun 2011

CHIKARANOMOTO COMPANY CO LTD v. A-1 BAKERY CO (HK) LTD

Citation

CHIKARANOMOTO COMPANY CO LTD v. A-1 BAKERY CO (HK) LTD
Court

Court of First Instance
Case number

HCA364/2011

The application for judgment on admissions was dismissed because the plaintiff did not plead lack of distinctiveness under section 3(1) and the grounds of invalidity actually pleaded (bad faith and contravention of s12(5)(a)/(b)) raise disputed factual issues which must be resolved at trial; registration remains prima facie valid under s80 and the Court will not grant judgment on a ground that was not pleaded.
29 Sept 2008

CHROME HEARTS LLC v. TSUEI TSE HOU AND ANOTHER

Citation

CHROME HEARTS LLC v. TSUEI TSE HOU AND ANOTHER
Court

Court of First Instance
Case number

HCMP165/2008

Given the applicant's long and well known use of the marks and the 1st respondent's close involvement and knowledge, the respondents' registrations were made in bad faith under s11(5)(b) and their use would cause confusion under s12(5)(a) of the Trade Marks Ordinance (Cap 559); accordingly the registrations are invalid.
28 Nov 2005

HAMMER CASTERS KABUSHIKI KAISHA v. YIP LING FOON

Citation

HAMMER CASTERS KABUSHIKI KAISHA v. YIP LING FOON
Court

Court of First Instance
Case number

HCMP2239/2005

Uncontested evidence established the applicant's long use and goodwill in the HAMMER mark; the respondent registered a confusingly similar mark while aware of that goodwill, demonstrating registration in bad faith and an intention to deceive; accordingly the registration was declared invalid and costs awarded to the applicant.

Hong Kong Case Law

COLOURPOP COSMETICS, LLC AND ANOTHER v. KCH INTERNATIONAL DEVELOPMENT CO LTD

JAYJUN COSMETIC CO., LTD v. JAY JUN (KOREA COSMETIC LTD)

THE CHINESE INSTITUTE OF CERTIFIED FINANCIAL PLANNERS LTD v. ZHAO LIANG AND ANOTHER

WONG TO YICK WOOD LOCK OINTMENT LTD v. WINTEX MEDICINE TRADING LTD

CHIKARANOMOTO COMPANY CO LTD v. A-1 BAKERY CO (HK) LTD

CHROME HEARTS LLC v. TSUEI TSE HOU AND ANOTHER

HAMMER CASTERS KABUSHIKI KAISHA v. YIP LING FOON