Hong Kong Case Law: Decisions & Judgments

Topic

Likelihood of confusion

Legal area

Court

16 Jul 2025

RE MS CONNIE LAW ACTING FOR THE REGISTRAR OF TRADE MARKS DATED 10 OCTOBER 2024 IN RELATION TO AN OPPOSITION BY 星洲藥業(香港)有限公司 TO TRADE MARK APPLICATION NO. 305197753 IN CLASSES 3 AND 5 APPLIED FOR BY MR CHI WING LIMITED AND LAW OI YING LTD TRADING AS SINGAPORE HEADWAY MEDICINE COMPANY 池榮有限公司及羅愛英有限公司以星加坡鴻威藥業公司之名營業

Citation

[2025] HKCFI 3087
Court

Court of First Instance
Case number

HCIP63/2024

The Hearing Officer was entitled to make the Challenged Finding in the opposition: a respondent may adduce evidence in opposition proceedings that a part of an Earlier Mark lacks distinctiveness without bringing a formal revocation under section 52, the evidential threshold for revocation is different and was not required here, and the Hearing Officer properly accepted the unchallenged evidence (LOY Declaration) and made a defensible evaluative judgment; accordingly the appeal is dismissed.
12 Mar 2024

RECKITT & COLMAN (OVERSEAS) HEALTH LTD AND ANOTHER v. WHEALTHFIELDS (HONG KONG) LTD

Citation

[2024] HKCFI 760
Court

Court of First Instance
Case number

HCIP2/2022

Summary judgment was refused because there are triable issues of fact as to whether a substantial part of the Plaintiffs' copyright work was copied and as to elements of the passing-off claim; factual matters (generic nature of bonus-pack designs, comparative market shares, designer evidence, and survey methodology) require full trial; accordingly the Defendant is granted unconditional leave to defend.
8 Nov 2023

MERCK KGaA v. MERCK SHARP & DOHME CORP AND OTHERS

Citation

[2023] HKCFI 2885
Court

Court of First Instance
Case number

HCIP64/2019

Amendments advancing claims based on historical events occurring outside the limitation window that the plaintiff does not rely on substantively were disallowed (47(a)-(d)), while amendments asserting potentially actionable post‑limitation or within‑period conduct (47(e)-(f)) and pleaded instances of confusion (49A) were permitted. Discovery requests must be tailored to relevance and proportionality: discovery of misdirected communications and complaints is relevant but must be limited to documents sent to and/or pertaining to Hong Kong; Category2(a) and (b) disclosure was ordered, Category2(…
31 Mar 2023

MEGAHONG PHA RMACEUTICAL CO (a firm) v. 醫藥易有限公司

Citation

[2023] HKCFI 930
Court

Court of First Instance
Case number

HCIP83/2021

The Hearing Officer's finding that the Objected Sales Services and Objected Agency Services were not similar to the Earlier Goods was set aside because she failed to account for shared distribution channels, overlapping consumers and the close link between products and their marketing; the Objected Sales Services and Objected Agency Services are similar or complementary to the Earlier Goods and, given the above‑average similarity between the marks and the distinctiveness of the Earlier Mark, use of the Subject Mark for those services would cause a likelihood of confusion; registration is refu…
2 Feb 2023

RE N.V. SUMATRA TOBACCO TRADING CO

Citation

[2023] HKCFI 285
Court

Court of First Instance
Case number

HCIP9/2020

The appeal is dismissed because the Hearing Officer's factual findings that the Subject Mark is visually, aurally and conceptually similar to the Opponent's earlier Double Happiness marks, that those marks enjoy at least enhanced distinctiveness through use, and that the Applicant acted with intention to cause confusing similarity (bad faith) are supported by the evidence and not plainly wrong; accordingly the opposition succeeds and the Subject Application must be refused.
11 Aug 2022

樂氏同仁藥業科技集團有限公司 v. 中國北京同仁堂(集團)有限責任公司

Citation

[2022] HKCFI 2512
Court

Court of First Instance
Case number

HCIP62/2020

The court set aside the Hearing Officer's finding of bad faith (s 11(5)(a)) because the finding relied on unsafe inferences and the registrar erred in rejecting unchallenged sworn evidence without cross-examination; however, on de novo review the Logo Mark was found similar to the Opponent's mark and its registration was refused under s 12(3). For the Words Mark, registration was refused for Classes 32, 33 and 41 due to likelihood of confusion under s 12(3), but allowed for Class 36 because services in Class 36 are dissimilar and therefore no confusion, and the Opponent failed to establish s…
5 May 2021

WONG TO YICK WOOD LOCK OINTMENT LTD v. IMPERIAL CHARITY HALL MEDICINES LTD AND ANOTHER

Citation

[2021] HKCFI 1252
Court

Court of First Instance
Case number

HCIP7/2021

On undisputed evidence plaintiff established substantial goodwill and registered well-known trade marks and demonstrated that the defendants' mark 金牌道益 and packaging were deceptively similar to plaintiff's marks and get-up, causing a likelihood of confusion and actual deception; these acts infringed s18(3) and s18(4) TMO and constituted passing off; the 2nd defendant, as sole director and shareholder and by procuring or participating in a common design, is jointly and severally liable with the 1st defendant; no arguable defence was shown and summary judgment was appropriate.
19 Apr 2021

樂氏同仁藥業科技集團有限公司 v. 中國北京同仁堂(集團)有限責任公司

Citation

[2021] HKCFI 1025
Court

Court of First Instance
Case number

HCIP63/2020

The application to adduce fresh evidence was dismissed because the Appellant failed to justify the delay (evidence could and should have been filed earlier, with an unexplained and significant delay of about 2.5 years), the explanation for lateness was unsatisfactory, the proposed evidence was of limited relevance or significance to the bad faith issue (mostly non‑Hong Kong use or post‑relevant date or involving different jurisdictions/laws), and admission would risk prejudice and delay to the Respondent; accordingly the court exercised its discretion against admission and ordered costs.
19 Apr 2021

樂氏同仁藥業科技集團有限公司 v. 中國北京同仁堂(集團)有限責任公司

Citation

[2021] HKCFI 1025
Court

Court of First Instance
Case number

HCIP62/2020

The court exercised its discretion to refuse admission of the proposed fresh evidence because the evidence could and should have been filed earlier with no satisfactory explanation for the long delay, the proposed evidence was of limited relevance or significance to the issue of bad faith in Hong Kong (much of it concerned non‑Hong Kong use, post‑dating the relevant date, or foreign decisions applying different laws), and admission would cause prejudice and delay to the Respondent; accordingly the application was dismissed with costs.
2 Apr 2020

MONSTER ENERGY CO v. 洪嘉珮

Citation

[2020] HKCFI 561
Court

Court of First Instance
Case number

HCIP5/2019

The court affirmed the Hearing Officer's decision: the Earlier MONSTER marks possess only a moderate degree of inherent distinctiveness for the registered goods; the Subject Mark ICE MONSTER & device is perceived by the average consumer as a composite dominated by ICE MONSTER and the ice device which gives a distinct overall impression; on visual, aural and conceptual comparison the degree of similarity between the Subject Mark and the Earlier Marks is very low; although some goods are identical or similar, the lack of mark similarity means use of the Subject Mark is not likely to cause confu…