Hong Kong Case Law: Decisions & Judgments

Topic

Registrability

Legal area

Court

18 Nov 2020

TUNG TAT CONSTRUCTION LTD v. EAGLE LUCK (HONG KONG) LTD AND OTHERS

Citation

[2020] HKDC 1067
Court

District Court
Case number

DCCJ5616/2020

The Endorsement of Claim shows the plaintiff's claim against the 8th defendant is for an alleged unpaid sum for construction work and does not concern any proprietary interest in the Subject Lot; therefore the writ was not registrable as a lis pendens. Given the plaintiff's delay and the potential abuse of the registration system, costs of the application were awarded to the 8th defendant on an indemnity basis, to be taxed if not agreed.
27 Dec 2017

SHINELAND CORPORATION LTD v. GLADFORD LTD AND OTHERS

Citation

SHINELAND CORPORATION LTD v. GLADFORD LTD AND OTHERS
Court

Court of First Instance
Case number

HCMP1972/2017

The OS was plainly not registrable as a lis pendens and the plaintiff abused the land registration system by attempting to maintain the OS on the Land Registry without any basis; consequently indemnity costs were justified against the plaintiff for the Summons (including the hearings), and the costs order nisi was made absolute. The plaintiff alone was responsible for the need for the 28 November hearing because it withheld substantive grounds and pursued unmeritorious procedural objections.
30 Nov 2017

SHINELAND CORPORATION LTD v. GLADFORD LTD AND OTHERS

Citation

SHINELAND CORPORATION LTD v. GLADFORD LTD AND OTHERS
Court

Court of First Instance
Case number

HCMP1972/2017

The OS was not registrable as a lis pendens because it did not relate to or affect the Properties (they were not claimed or alleged to be trust property); the court has inherent jurisdiction to determine registrability and to order removal of a non‑registrable document from the Land Registry pending registration; accordingly the Summons was granted, the OS ordered vacated from the pending registration and indemnity costs awarded to Glendale (order nisi).
4 Dec 2008

SONY COMPUTER ENTERTAINMENT INC v. REGISTRAR OF TRADE MARKS

Citation

SONY COMPUTER ENTERTAINMENT INC v. REGISTRAR OF TRADE MARKS
Court

Court of Appeal
Case number

CACV169/2007

The hearing officer correctly found the applied-for 3-dimensional marks lacked inherent and factual distinctiveness and the applicant failed to discharge the burden of proof under sections 9 and 10; accordingly the marks are unregistrable and the appeals are dismissed; it was unnecessary to decide section 12(3)(b) issues.
4 Dec 2008

SONY COMPUTER ENTERTAINMENT INC v. REGISTRAR OF TRADE MARKS

Citation

SONY COMPUTER ENTERTAINMENT INC v. REGISTRAR OF TRADE MARKS
Court

Court of Appeal
Case number

CACV170/2007

The hearing officer and judge correctly found the marks unregistrable because the applicant failed to prove inherent or acquired distinctiveness under sections 9 and 10 of the Ordinance; absent such proof the appeals must be dismissed.
4 Dec 2008

SONY COMPUTER ENTERTAINMENT INC v. REGISTRAR OF TRADE MARKS

Citation

SONY COMPUTER ENTERTAINMENT INC v. REGISTRAR OF TRADE MARKS
Court

Court of Appeal
Case number

CACV166/2007

The Court upheld the hearing officer's finding that the applied-for three-dimensional marks lacked inherent distinctiveness and there was insufficient evidence of acquired distinctiveness under sections 9 and 10 of the Ordinance, rendering the marks unregistrable; accordingly the appeals were dismissed and it was unnecessary to decide section 12(3)(b) issues.
4 Dec 2008

SONY COMPUTER ENTERTAINMENT INC v. REGISTRAR OF TRADE MARKS

Citation

SONY COMPUTER ENTERTAINMENT INC v. REGISTRAR OF TRADE MARKS
Court

Court of Appeal
Case number

CACV167/2007

The hearing officer correctly found that the applied-for three-dimensional marks were not inherently distinctive and no evidence of acquired distinctiveness was shown; accordingly the marks were unregistrable under sections 9(1)(e) and 10(1) of the Ordinance and the appeals are dismissed; it was unnecessary to consider section 12(3)(b).
4 Dec 2008

SONY COMPUTER ENTERTAINMENT INC v. REGISTRAR OF TRADE MARKS

Citation

SONY COMPUTER ENTERTAINMENT INC v. REGISTRAR OF TRADE MARKS
Court

Court of Appeal
Case number

CACV168/2007

The appeals were dismissed because the applicant failed to prove inherent or acquired distinctiveness for the applied-for three-dimensional marks; the hearing officer correctly applied ss 9 and 10 of the Ordinance and the burden of proof rests on the applicant, so registration was properly refused and no further consideration of section 12 was necessary.
18 May 2007

SONY COMPUTER ENTERTAINMENT INC v. REGISTRAR OF TRADE MARKS

Citation

SONY COMPUTER ENTERTAINMENT INC v. REGISTRAR OF TRADE MARKS
Court

Court of First Instance
Case number

HCMP2616/2006

The Court applied the Mega Bloks necessity test to the essential features of each applied-for shape and found those essential features were dictated by technical functions: consoles as flat rectangular housings for components and stability, controllers as two short legs connected by a rung to enable secure bi-manual control, and the memory card as a flat rectangle to fit the console aperture and allow handling. As such the shapes are excluded from registration by TMO s.12(3)(b); additionally the shapes are common and lack inherent or acquired distinctiveness under TMO ss.9 and 10, so the appe…
22 Jul 2005

MATTEL, INC v. DE LUXE MANUFACTURING LTD

Citation

MATTEL, INC v. DE LUXE MANUFACTURING LTD
Court

Court of Appeal
Case number

CACV251/2004

Majority held that 'KELLY' has an ordinary signification as a surname in Hong Kong, the Registrar's circular did not alter the legal test, no evidence of distinctiveness was produced at registration, and therefore the Part A registration was improperly entered and the defendant's counterclaim for rectification succeeds; appeal dismissed.