Hong Kong Case Law: Decisions & Judgments

Topic

Trade mark registration

Legal area

Court

20 May 2016

LEWIS ROAD CREAMERY LTD v. KEEN TOP INTERNATIONAL LTD AND OTHERS

Citation

LEWIS ROAD CREAMERY LTD v. KEEN TOP INTERNATIONAL LTD AND OTHERS
Court

Court of First Instance
Case number

HCA1529/2015

The defendants’ application was dismissed because they failed to show a real prospect of success or produce convincing evidence; Hong Kong was the appropriate forum given the 1st defendant’s Hong Kong incorporation and the allegation that conspiratorial acts occurred in Hong Kong; the China forum was not shown to be clearly more appropriate and the defendants’ foreign law opinion lacked sufficient analysis; accordingly the default judgment and associated injunctions should stand.
6 Dec 2013

POON KA MAN JASON v. CHENG WAI TAO AND OTHERS

Citation

POON KA MAN JASON v. CHENG WAI TAO AND OTHERS
Court

Court of First Instance
Case number

HCA304/2011

The judge exercised the power to reopen the unperfected judgment but declined to grant Smart Wave an election to seek an account of profits because the plaintiff (acting as shareholder) had acted in bad faith and there was abuse in related trade mark proceedings; accordingly Smart Wave is limited to damages as ordered in paragraph 68, to be assessed in the usual way, and costs of the variation application are ordered against the plaintiff with specified allocations.
24 May 2013

FINE ELITE GROUP LTD v. CHENG WAI TAO

Citation

FINE ELITE GROUP LTD v. CHENG WAI TAO
Court

Court of First Instance
Case number

HCA1269/2008

The court found that Fine Elite's unauthorised application to register the Service Marks amounted to a breach that went to the substance of the Hero Elegant Agreement and constituted repudiation; Ricky validly accepted that repudiation. Fine Elite therefore could not obtain specific performance and its claim was dismissed. Smart Wave's derivative claim for damages relating to Ricky's operation of the Itacho restaurants succeeded in principle and damages were ordered to be assessed. Costs allocations were adjusted accordingly.
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.
15 Mar 2007

WONG TO YICK WOOD LOCK OINTMENT LTD AND ANOTHER v. WONG TIN CHEE TINLY AND OTHERS

Citation

WONG TO YICK WOOD LOCK OINTMENT LTD AND ANOTHER v. WONG TIN CHEE TINLY AND OTHERS
Court

Court of First Instance
Case number

HCA7984/2000

The court found on balance that the father was sole proprietor until the 1988 incorporation and that by incorporation he intended to transmit the goodwill to the Company; there was no proved 1983 promise or effective transfer of the Ointment goodwill to the son alone; the 1996 allotment to the grandsons was not procured by misrepresentation and the grandsons hold those shares beneficially (subject to the father's right to receive dividends during their minority), and the father must account for dividends received after majority; the son and certain defendants breached fiduciary duties and eng…
24 Mar 2006

HONG MAN CHING v. HONGDOU GROUP CORPORATION

Citation

HONG MAN CHING v. HONGDOU GROUP CORPORATION
Court

Court of First Instance
Case number

HCMP2148/2005

The court found that, despite the absence of cross-examination, the coincidences in design (font, inclination, near perfect superposition except one letter) combined with the appellant's implausible account made the inference of copying irresistible; therefore the appellant acted dishonestly in seeking registration and the Registrar was correct to refuse registration.
2 Apr 2001

LA CHEMISE LACOSTE S.A. v. CROCODILE GARMENTS LTD.

Citation

LA CHEMISE LACOSTE S.A. v. CROCODILE GARMENTS LTD.
Court

Court of Appeal
Case number

CACV162/2000

The Court refused leave because the matter in controversy is the non‑pecuniary right to apply for, abandon or relinquish trade mark registrations outside Hong Kong; the alleged financial consequences (costs expended, potential inventory loss, business disruption, and speculative defensive effect in Mainland litigation) are collateral or speculative and do not convert the dispute into one 'of the value of $1,000,000 or more' under s22(1)(a).
27 Nov 1996

LA CHEMISE LACOSTE S.A. v. CROCODILE GARMENTS LTD

Citation

LA CHEMISE LACOSTE S.A. v. CROCODILE GARMENTS LTD
Court

Court of Appeal
Case number

CACV11/1996

The Court dismissed the appeal: the PRC Trade Mark Office was not shown to be a clearly more appropriate forum; clause 6(5) is properly construed to permit Hong Kong courts to determine whether marks are 'confusingly similar' applying Hong Kong law (clause 6(10)); lis alibi pendens did not apply; the judge below did not misexercise his discretion in refusing a stay.
27 Sept 1994

LAM SOON MARKETING SERVICES LTD. v. LAM MEI HING

Citation

LAM SOON MARKETING SERVICES LTD. v. LAM MEI HING
Court

Court of First Instance
Case number

HCMP1579/1994

The Court upheld the Registrar's finding of a real tangible danger of confusion between the marks because the crown device and the word 'Crown' were the essential, dominant features; however the Respondent failed to discharge the burden to prove honest concurrent use due to paucity of evidence and failure to address whether she knew of the Appellant's earlier mark; accordingly the appeal by the registered proprietor succeeded and registration was refused.