Hong Kong Case Law: Decisions & Judgments

Topic

Registrar discretion

Legal area

Court

23 Dec 2019

NANYANG BROTHERS TOBACCO CO LTD v. N.V. SUMATRA TOBACCO TRADING CO

Citation

[2019] HKCFI 3115
Court

Court of First Instance
Case number

HCMP723/2018

The Registrar did not err in principle: there was substantial and unjustified delay (over 2.5 years) in making the application for leave to cross-examine; the Work Manual is not legally binding and did not justify the delay; the Registrar properly treated the late application as an indulgence and validly exercised discretion to order the Opponent to pay both the costs of the late application and the contested paper hearing; the appeal is dismissed.
11 May 2015

LIN HEUNG TEA HOUSE & BAKERY v. GUANGZHOU CATERING SERVICES ENTERPRISES GROUP CO LTD

Citation

LIN HEUNG TEA HOUSE & BAKERY v. GUANGZHOU CATERING SERVICES ENTERPRISES GROUP CO LTD
Court

Court of Appeal
Case number

CACV196/2013

The Court held that although the respondent's historical and packaged use of the suit mark amounted to honest concurrent use at stage one, on a fresh exercise of the stage two discretion the applicants' long‑standing and territorially specific goodwill in Hong Kong and the greater risk of unwarranted confusion/dilution outweighed the respondent's shorter and now discontinued local use; accordingly the respondent's registration was declared invalid under s53(5)(b) read with s12(5) TMO and the appeal was dismissed.
15 Dec 2009

RE CREATIVE RESOURCES LLC

Citation

RE CREATIVE RESOURCES LLC
Court

Court of Appeal
Case number

CACV15/2009

The Court held that the hearing officer correctly found that the mark 'NAKED' conveys an immediate message that the condoms give a 'naked' feeling and therefore consists exclusively of a sign designating a characteristic of the goods under s11(1)(c) and is devoid of distinctive character under s11(1)(b); the hearing officer's exercise of discretion was properly exercised and deserved deference, so the refusal to register was upheld.
17 Jun 2004

E.I. DU PONT DE NEMOURS AND CO v. THE DIRECTOR OF INTELLECTUAL PROPERTY

Citation

E.I. DU PONT DE NEMOURS AND CO v. THE DIRECTOR OF INTELLECTUAL PROPERTY
Court

Court of First Instance
Case number

HCAL107/2003

The Registrar lawfully refused the s.23 amendment because s.23 is principally directed at preventing copying/piracy of foreign registered marks and there was no allegation or evidence of copying; the Registrar lawfully refused to admit the statutory declarations under r.27 because they were not strictly in reply, were self‑serving and had no evidential weight, and under r.28 because the evidence should have been filed earlier and r.28 is not a catch‑up provision; accordingly the Registrar did not act outside his powers and the judicial review applications fail.
30 Jul 2001

LAU KWONG HING v. LUK CHI KEUNG AND ANOTHER

Citation

LAU KWONG HING v. LUK CHI KEUNG AND ANOTHER
Court

Court of First Instance
Case number

HCA2231/1995

The appeal was dismissed because the Registrar's decision was either ministerial/administrative or involved the exercise of a power initially vested in the Court of Appeal, and therefore the decision did not fall within the scope of RHC O.58 r.1 and the appeal was misconceived.
31 Jan 2000

HKSAR v. CHOW YUEN HAN

Citation

HKSAR v. CHOW YUEN HAN
Court

Court of First Instance
Case number

HCMA772/1999

Section 116(1) does not confer an automatic right to a full transcript of magistrates' proceedings; the term 'depositions' does not include the full mechanical transcript of oral evidence, and it is for the Registrar to determine the standard contents of the appeal bundle while additional transcript parts may be supplied on application if sufficient reasons are shown.

Hong Kong Case Law

NANYANG BROTHERS TOBACCO CO LTD v. N.V. SUMATRA TOBACCO TRADING CO

LIN HEUNG TEA HOUSE & BAKERY v. GUANGZHOU CATERING SERVICES ENTERPRISES GROUP CO LTD

RE CREATIVE RESOURCES LLC

E.I. DU PONT DE NEMOURS AND CO v. THE DIRECTOR OF INTELLECTUAL PROPERTY

LAU KWONG HING v. LUK CHI KEUNG AND ANOTHER

HKSAR v. CHOW YUEN HAN