Hong Kong Case Law: Decisions & Judgments

Topic

Assignment of trade marks

Legal area

Court

31 Oct 2025

CONVOY (TRADEMARKS) LTD v. CONVOY GLOBAL HOLDINGS LTD AND OTHERS

Citation

[2025] HKCFI 5196
Court

Court of First Instance
Case number

HCA702/2018

The court found that CTL validly held the registered marks pursuant to a legitimate assignment and that the Marks were intended to benefit the Original Convoy Group (not CFS alone); the Licensing Agreement terminated when CFGL ceased to be a controlling shareholder and CTL was therefore entitled to enforce its trade mark rights; the CFS Parties' misfeasance and estoppel/acquiescence arguments failed on evidence and legal analysis; Fubon Convoy was not liable because there was no evidence it used the Marks, and the counterclaims and HCMP claim were dismissed.
18 Feb 2015

LEHMANBROWN LTD v. UNION TRADE HOLDINGS INC AND OTHERS

Citation

LEHMANBROWN LTD v. UNION TRADE HOLDINGS INC AND OTHERS
Court

Court of First Instance
Case number

HCMP775/2012

Court held service in respect of Hong Kong Marks was valid on 1st and 2nd defendants via registered address for service under Trade Mark Rules r105; proceedings in relation to Mainland Marks were not duly served on the 1st defendant and the court had no jurisdiction over the 1st defendant for Mainland Marks; O65 r3 could not be used to treat service on the 4th defendant as service on the 2nd defendant because O65 r3 does not apply to companies like the 2nd defendant and repealed s.356 did not apply to the BVI 2nd defendant; proceedings in relation to Mainland Marks were not duly served on the…
19 Aug 2009

BORRI S. p. A. v. TRALACO TECHNOLOGY LTD AND OTHERS

Citation

BORRI S. p. A. v. TRALACO TECHNOLOGY LTD AND OTHERS
Court

Court of First Instance
Case number

HCA1170/2007

On the evidence the plaintiff retained substantial reputation and goodwill in the BORRI mark; Tralaco acknowledged plaintiff's ownership by entering the 1995 Agreement; defendants knowingly engaged in acts (registrations, use of marks, website, incorporations) calculated to pass off their goods as the plaintiff's and acted pursuant to a common design/conspiracy; there was no real defence or triable issue; therefore summary judgment was appropriate and relief including injunction (Hong Kong only), assignment of registrations and domain and costs were ordered.
10 Sept 2008

TAIWAN FU HSING INDUSTRIAL CO LTD v. E. BON BUILDING MATERIALS CO LTD

Citation

TAIWAN FU HSING INDUSTRIAL CO LTD v. E. BON BUILDING MATERIALS CO LTD
Court

Court of First Instance
Case number

HCMP185/2008

Defendant failed to prove any valid prior assignment of the LEADO trade mark or that it had acquired the relevant goodwill in Hong Kong; the mark at registration was a manufacturer’s mark attributable to the plaintiff (via acquisition from Leado Enterprises), and therefore the defendant’s registration (though prima facie valid) was displaced by the plaintiff’s earlier right in passing off; claim for declaration of invalidity under s53 Cap.559 succeeded and counterclaim failed.
23 Nov 2005

LEADWELL CNC MACHINES MFG CORP. v. GLOBAL CROWN INTERNATIONAL LTD

Citation

LEADWELL CNC MACHINES MFG CORP. v. GLOBAL CROWN INTERNATIONAL LTD
Court

Court of First Instance
Case number

HCA853/2005

On the evidence the court found the defendant had actual or imputed knowledge of Dr Chang's unlawful assignments through the involvement of Terrence Chang, was not a bona fide purchaser without notice, and therefore received the registrations knowing they were traceable to a breach of duty; plaintiff entitled to equitable relief including injunction, reassignment of registered marks and ancillary remedies; summary judgment was appropriate as no triable issues remained.
3 Jul 2002

CHAN KWOK KI v. PANG SIU MING

Citation

CHAN KWOK KI v. PANG SIU MING
Court

Court of First Instance
Case number

HCA2246/1995

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 p…
3 Jul 2002

YING KUT LEE MEDICINE FACTORY LTD. v. PANG SIU MING

Citation

YING KUT LEE MEDICINE FACTORY LTD. v. PANG SIU MING
Court

Court of First Instance
Case number

HCA7966/1993

The Second Assignments were invalid because the marks had already been assigned to YKL by the First Assignment; the Registrar's entries were wrongly made and, weighing the paramount public interest in the purity of the Trade Marks Register and the real ownership and goodwill of YKL against PSM's limited interest, the court exercised its discretion to order rectification and expunge the Second Assignments; on the facts PSM was found to have caused counterfeit Wood Lock Oil to be manufactured and labelled, and was liable for passing off; the defendant's counterclaim was dismissed.

Hong Kong Case Law

CONVOY (TRADEMARKS) LTD v. CONVOY GLOBAL HOLDINGS LTD AND OTHERS

LEHMANBROWN LTD v. UNION TRADE HOLDINGS INC AND OTHERS

BORRI S. p. A. v. TRALACO TECHNOLOGY LTD AND OTHERS

TAIWAN FU HSING INDUSTRIAL CO LTD v. E. BON BUILDING MATERIALS CO LTD

LEADWELL CNC MACHINES MFG CORP. v. GLOBAL CROWN INTERNATIONAL LTD

CHAN KWOK KI v. PANG SIU MING

YING KUT LEE MEDICINE FACTORY LTD. v. PANG SIU MING