高等法院（雜項）Deputy High Court Judge Gilchrist12/4/2022[2022] HKCFI 1049
HCMP3591/2016
HCMP 3591/2016
A A
[2022] HKCFI 1049
B IN THE HIGH COURT OF THE B
HONG KONG SPECIAL ADMINISTRATIVE REGION
C C
COURT OF FIRST INSTANCE
D MISCELLANEOUS PROCEEDINGS NO 3591 OF 2016 D
E E
IN THE MATTER OF the Trade Marks
F F
Ordinance (Cap 559)(the “Ordinance”)
G
and G
IN THE MATTER OF the Application
H No.302585962 by Shelter Lounge H
Limited (the “Applicant”) to register the
I following trade mark in series I
J J
K K
L L
M M
N N
O O
P P
Q Q
R R
(the “Mark”) in Class 43 in the name of
S S
Shelter Lounge Limited (the
“Application”)
T T
U U
V V
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A A
IN THE MATTER OF an Appeal
B against the Registrar’s dismissal of the B
Opposition by Ocean Concept Holdings
C Limited (the “Opponent”) of the C
Application (the “Appeal”)
D D
E ____________________ E
F F
BETWEEN
G OCEAN CONCEPT HOLDINGS LIMITED Appellant G
(Opponent)
H H
and
I I
SHELTER LOUNGE LIMITED Respondent
J J
(Applicant)
________________
K K
L
Before: Deputy High Court Judge Gilchrist in Chambers L
Date of Hearing: 20 September 2017
M Date of Decision: 13 April 2022 M
___________________
N N
DECISION
O ___________________ O
P P
A. Introduction
Q Q
R R
1. On 23 April 2013, the Respondent filed an application
S (Application No. 302585962, the “Application”) with the Registrar of S
Trade Marks (the “Registrar”) to register a trademark (the “Opposed
T T
Mark”) in class 43 for “services for providing food and drink; temporary
U accommodation”. U
V V
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A A
2. On 26 August 2013, the Appellant opposed the Application
B B
by filing a Notice of Opposition together with a Statement of Grounds.
C C
D
3. On 8 June 2016, a hearing in respect of the opposition was D
held before the Hearing Officer acting for the Registrar (hereinafter
E E
referred to as the Registrar).
F F
4. On 1 December 2016, the Registrar handed down the
G G
Statement of Reasons rejecting all grounds of opposition relied on by the
H H
Appellant.
I I
5. The Appellant filed a Notice of Motion on 29 December 2016
J J
(the “Notice of Motion”) to appeal against the Registrar’s decision.
K K
L 6. On 3 February 2017, the Appellant made an application by L
way of a summons seeking leave to file further evidence on appeal (the
M M
“Summons”), such application being opposed by the Respondent. In
N simple terms, the main reason offered by the Appellant as to why further N
evidence has to be filed was that the Appellant was not legally represented
O O
before the Registrar, nor had it been provided with proper legal advice as to
P the basis upon which the Application should have been opposed, or the P
evidence which should have been adduced in order to oppose the
Q Q
Application.
R R
S 7. The parties have agreed by consent that the Notice of Motion S
is to be dealt with after the Summons is disposed of. The Court herein is
T T
U U
V V
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A A
therefore only asked to decide with respect to the Summons but not the
B B
Notice of Motion.
C B. BACKGROUND AND THE PARTIES’ RESPECTIVE POSITIONS C
D D
B1. Background
E E
F 8. This Court should preface matters by pointing out that the F
facts summarized in this sub-section are drawn from the evidence filed by
G G
the parties both at the opposition stage and for the purpose of the
H
Summons. Relevantly, the Affirmation of Choi Yiu Ying (“Choi’s 1st H
I
Affirmation”) filed by the Appellant in this appeal refers to a substantial I
amount of additional information not placed before the Registrar and
J J
which forms the subject matter of the Summons. This Court’s
K determination of the Summons is set out below in Sections E and G below K
but for the purpose of setting out the background, this Court will also
L L
include information from Choi’s 1st Affirmation.
M M
N
9. The Appellant, Ocean Concept Holdings Limited, began N
operating a food and beverage business under the name “Shelter” in 2002
O O
making use of the following logo:
P P
Q Q
(hereinafter referred to as the “Shelter Mark”).
R R
S S
10. “Shelter” started off as an “upstairs” bar (“Shelter Bar”)
T located at 27/F, Henry House, Causeway Bay, Hong Kong (the “Henry T
House Premises”).
U U
V V
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A A
B B
11. In July 2006, the shareholder and director of the Appellant
C decided to join forces with a friend (who was at that time operating bars C
under the names of “Census” and “C3” respectively) to merge their
D D
existing bar businesses together under the umbrella of the “Shelter Census
E Group”. They expanded their business to other areas of the food and E
beverage industry in Hong Kong as well as in Macau.
F F
G G
12. The Appellant registered the following mark with respect to
H the “Shelter Census Group” in Mainland China in class 43 in June 2010 H
and in class 35 in March 2012:
I I
J J
K K
L L
M (hereinafter referred to as the “Shelter Census Group Mark”). M
N N
13. As pleaded in the Appellant’s Statement of Grounds, the
O O
Shelter Census Group Mark has been used since August 2011.
P P
14. In early-2013, the Appellant was approached by Hysan
Q Q
Development Company Limited to establish a bar and restaurant at its then
R newly-developed property in Causeway Bay, namely Hysan Place (the R
S
“Hysan Place Premises”) and a tenancy agreement was signed in March S
2013. Shelter Bar ceased its operation in 2013 at the Henry House
T T
Premises although it is not clear as to exactly when it ceased its operation.
U U
V V
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A A
15. The Respondent, Shelter Lounge Limited, made the
B B
Application in April 2013 to register the Opposed Mark as follows:
C C
D D
E E
F F
G G
16. According to Choi’s 1st Affirmation, an application
H H
(Application No. 302589274) was made by a company then known as
I Profit Ocean Holdings Limited, but subsequently re-named as Choi’s I
Brothers Catering Holdings Limited, (a shelf company used “for the sake
J J
of convenience”), in respect of the Shelter Mark on 25 April 2013. Such
K application led to the discovery by the Appellant of the Application. K
L L
17. In or about July 2013, the Respondent’s business “Shelter
M M
Lounge” was granted its licence by the Food and Environmental Hygiene
N Department. N
O O
18. On 31 October 2013, “Shelter Italian Bar and Restaurant”
P P
began its operation at the Hysan Place Premises.
Q Q
R 19. On 12 March 2014, the Appellant made an application R
(Application No. 30291319) in respect of the Shelter Mark, but the Trade
S S
Marks Registry informed the Appellant of the Application which was
T pending and stated that the outcome of the Appellant’s application would T
depend on the Application.
U U
V V
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A A
B B
20. In or around late-2016, the Respondent ceased operation of
C “Shelter Lounge” in Sheung Wan. C
D D
B2. The Appellant’s position at the opposition stage
E E
F F
21. In opposing the Application, the Appellant put forward in the
G Statement of Grounds (which contains only two paragraphs) enclosed to G
the Notice of Opposition:-
H H
a. The fact that the Shelter Census Group Mark was registered in
I Mainland China in difference classes since 2010 and that the I
same has been used since August 2011;
J J
b. Sections 11(4)(a) of the Trade Marks Ordinance (Cap. 559)
K K
(the “Ordinance”) (that a trade mark shall not be registered if
L it is contrary to accepted principles of morality); L
c. Section 11(4)(b) of the Ordinance (that a trade mark shall not
M M
be registered if it is likely to deceive the public); and
N N
d. Section 11(5)(b) of the Ordinance (that the Application was
O
made in bad faith); O
P P
as the grounds of opposition. Only reference to the Shelter Census Group
Q Mark was made and there was no mention of the Shelter Mark. Q
R R
22. In the Statutory Declaration of Mr Pang Tak Hong (“Mr
S S
Pang”) dated 14 May 2014 who represented himself as the “Attorney of
T Times Intellectual Property (Hong Kong) Limited” (“Pang’s Statutory T
U U
V V
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A A
Declaration”), the Appellant put forward the following assertions /
B B
evidence including:
C a. The Appellant “has used the “trade mark “Shelter” since C
2002” and has “obtained goodwill by way of the extensive use
D D
of the “trade mark “Shelter” in the area of food and beverage
E restaurant area”; E
F b. To show that the Respondent “should, in no doubt, has the F
knowledge of [the Appellant’s] extensive use of the trade
G G
mark “Shelter” in Hong Kong”, materials such as the tenancy
H agreements from 2007 to 2013, the various licences and H
business registrations from 2002 to 2013 and in particular 6
I I
pages of newspaper clippings of articles in 2002 (i.e. when
J Shelter Bar was first opened) were produced; J
c. The Opposed Mark is “similar” to the “Shelter trade mark”
K K
and the Application therefore “violates section 11(4)(a),
L 11(4)(b) and 5(b)” of the Ordinance; L
M d. The word “Shelter” is the distinctive element of the Opposed M
Mark, which is identical to the Appellant’s ““Shelter” trade
N N
mark by way of meaning and pronunciation”; and
O e. The Shelter Census Group Mark was registered in class 43 O
since 2010, which was the same as the class to which the
P P
Application relates, and in class 35 since 2012.
Q Q
R B3. The Appellant’s position in this appeal R
S S
23. In summary, the Appellant put forward the following
T T
submissions / grounds of appeal in the Notice of Motion dated 29
U December 2016: U
V V
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A A
a. The Appellant maintains the “likely to deceive the public”
B B
ground as set out in section 11(4)(b) of the Ordinance. It is the
C Appellant’s position that the Registrar erred in ruling that the C
Opposed Mark will not “be reasonably likely to cause
D D
deception and confusion among the public” and that the
E Registrar, inter alia: (i) erred in not finding that the Appellant E
had acquired substantial goodwill and reputation in its
F F
business under the Shelter Mark and (ii) erred in not finding
G the word “Shelter” used in Class 43 activities distinctive and G
in particular distinctive to the Appellant’s business;
H H
b. The Appellant also maintained the “bad faith” ground as set
I I
out in section 11(5)(b) of the Ordinance and that the Registrar
J
erred in ruling that the Application was not made in bad faith. J
The Appellant also made the point that given the established
K K
goodwill and reputation acquired by the Appellant by 2013,
L the Application was “dishonest”; and L
c. The Appellant now maintains the ground pursuant to section
M M
12(5)(b) of the Ordinance that a trade mark shall not be
N registered by virtue of an earlier right. Whilst this ground was N
not put before the Registrar, the Appellant’s position is that
O O
the Registrar “could have and should have refused the
P Application by virtue of section 12(5)(b) of the Ordinance”. P
Q Q
The Notice of Motion makes no mention of section 11(4)(a) of the
R R
Ordinance which is one of the grounds set out in the Notice of Opposition.
S S
T 24. Both in the Notice of Motion and in Choi’s 1st Affirmation, T
the Appellant also makes the point that the Summons ought to be
U U
V V
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A A
successful as it was not legally represented before the Registrar but relied
B B
on Mr Pang. It is the Appellant’s submission that the Appellant was under
C the impression that Mr Pang was a legal counsel who had the competency C
in opposing the Application on behalf of the Appellant and in the
D D
circumstances, the Appellant ought to be allowed to file further evidence
E on appeal and with the benefit of such further evidence, the Court would E
reach the conclusion that the Application ought to be refused.
F F
G G
B4. The further evidence which the Appellant now seeks to file
H H
I
25. It is helpful to set out the more pertinent further evidence I
which the Appellant now seeks to file:
J J
K Regarding “Shelter” bar at the Henry House Premises K
L a. Menus of Shelter Bar from 2002 to 2013 bearing the Shelter L
Mark;
M M
b. A photo showing the lightbox design of “Shelter” bar at
N Henry House, which according to the 2 nd Affirmation of Choi N
Yiu Ying filed on 19 April 2017 (“Choi’s 2nd Affirmation”)
O O
was put in place at Henry House in as early as 2002;
P P
c. Financial statements of the companies which operated Shelter
Q Bar from 2002 to 2013, in order to show the turnover of Q
Shelter Bar.
R R
Regarding the “Shelter Census Group”
S d. One article mentioning the “Shelter Census Group” (which S
T
this Court understands from Choi’s 1st Affirmation was from T
August 2008);
U U
V V
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A A
Regarding “Shelter Italian Bar and Restaurant” at the Hysan Place
B B
Premises
C e. Various corporate documents relating to the company which C
operated “Shelter Italian Bar and Restaurant” at the Hysan
D D
Place Premises in 2016-2017;
E E
f. Contractual and license documents with respect to the
F operation of “Shelter Italian Bar and Restaurant”; F
g. Financial statements of the company which operated “Shelter
G G
Italian Bar and Restaurant” in order to show its turnover for
H the period ended 31 March 2014; H
I
h. Social media page of “Shelter Italian Bar and Restaurant” I
with regard to its grand opening in October 2013;
J J
i. Photos of the lightbox shown at Hysan Place and photos taken
K outside the Hysan Place Premises during the renovation of K
“Shelter Italian Bar and Restaurant”. The Court notes that
L L
the word “Shelter” as shown on the lightbox and at the
M renovation site bears slight differences from the Shelter Mark M
which the Shelter Bar used in 2002 to 2013;
N N
j. VIP Card issued by “Shelter Italian Bar and Restaurant”,
O O
which shows that it is part of the “Shelter Group” (without
P displaying the Shelter Census Group Mark); P
k. various media clippings for “Shelter Italian Bar and
Q Q
Restaurant” from October 2013 to April 2016;
R l. An Openrice.com review of “Shelter Italian Bar and R
Restaurant” in October 2014, which the Appellant seeks to
S S
use to demonstrate the confusion by the public as regards
T T
“Shelter Italian Bar and Restaurant” and the “Shelter
U
Lounge” operated by the Respondent. This Court notes that U
V V
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A A
the writer of the review was invited by “Shelter Group” to
B B
visit “Shelter Italian Bar and Restaurant”;
C m. Another online article posted on Sassyhongkong.com in July C
2014 regarding a promotion of “Shelter Italian Bar and
D D
Restaurant” which was wrongly labelled as a promotion from
E “Shelter Lounge”. Readers of the article were invited to click E
a Sassyhongkong.com link if they wished to enter a
F F
complimentary tea set giveaway from “Shelter Italian Bar
G and Restaurant”; G
H n. The award given by Hong Kong Tatler to “Shelter” (namely H
“Shelter Italian Bar and Restaurant”) in 2015;
I I
Regarding businesses related to the Appellant
J J
o. Correspondence with developers from 2014 to 2017
K regarding various business proposals / projects; K
L Regarding “Shelter Lounge” operated by the Respondent L
p. Photos taken outside “Shelter Lounge” showing that it had
M M
closed down.
N N
Regarding trade mark applications
O O
q. Materials regarding the registration of a trade mark similar to
P that used by “Shelter Italian Bar and Restaurant” (which, as P
pointed out in §25 i above, is slightly different from the
Q Q
Shelter Mark) in Macau in 2015;
R r. Materials regarding a failed trade mark application in respect R
of the Shelter Mark on 25 April 2013; and
S S
s. Materials regarding a pending trade mark application in
T T
respect of the Shelter Mark by the Appellant on 12 March
U
2014. U
V V
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A A
B5. The Respondent’s position at the opposition stage
B B
C C
26. The Respondent denied having prior knowledge of the
D
Appellant’s Shelter Census Group Mark registered in Mainland China, and D
denied that the Application was made in bad faith.
E E
F 27. In this regard, the Respondent maintains that the trade mark F
registration system in Hong Kong serves to provide territorial support. In
G G
other words, the fact that the Shelter Census Group Mark was registered in
H H
Mainland China does not constitute any basis for opposing the Application
I
in Hong Kong. I
J J
28. The Respondent also denies that the Opposed Mark would be
K contrary to accepted principles of morality and/or likely to deceive the K
public. In this regard, it is the Respondent’s position that:
L L
a. There was no evidence from the Appellant that the Appellant
M M
has obtained any goodwill in respect of the Shelter Census
N Group Mark in Hong Kong; N
b. The Opposed Mark is completely different from the Shelter
O O
Census Group Mark, whether visually, phonetically or
P conceptually; P
Q c. The services registered under the Shelter Census Group Mark Q
were not identical or were different in nature to that to which
R R
the Opposed Mark relates; and
S d. The fact that the Shelter Census Group Mark was registered S
only in Mainland China shows that the Appellant’s services
T T
are intended for customers in Mainland PRC. On the other
U U
V V
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A A
hand, the Application was made in Hong Kong, a different
B B
market;
C and by reason of points a to d above, there can be no likelihood of C
confusion arising from the use of the Opposed Mark.
D D
E E
B6. The Respondent’s position with respect to the Summons
F F
G 29. The Respondent opposes the appeal. The Respondent also G
opposes the Summons and filed evidence, namely the Affirmation of Lui
H H
Hing Yip (the manager of the Respondent), in opposition. For the purposes
I of the Summons, it suffices to set out that: I
a. It is the Respondent’s position that as the Appellant only
J J
pleaded the Shelter Census Group Mark but not the Shelter
K Mark in its Statement of Grounds at the opposition stage (see K
§21 above), the Appellant was and is not entitled to rely on
L L
evidence which is irrelevant to the Shelter Census Group
M M
Mark;
N b. The further evidence which the Appellant seeks leave to file N
relates to the Shelter Mark but not the Shelter Census Group
O O
Mark and the Appellant is not entitled to rely on such further
P evidence; P
c. The further evidence to support the goodwill and reputation
Q Q
acquired came after the “Shelter Italian Bar and Restaurant”
R was opened and in any event it does not show that the R
Respondent had knowledge of the Appellant and/or the
S S
Shelter Mark prior to the Application;
T T
d. The Appellant made the conscious decision of not engaging
U legal representation at the opposition stage; and U
V V
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A A
e. Whilst the Appellant relies on section 11(4)(b) of the
B B
Ordinance as one of the grounds, the further evidence which
C the Appellant seeks to adduce is irrelevant to this ground. C
D D
C. ISSUES FOR THIS COURT TO DETERMINE
E E
F 30. As noted above, the present Summons relates to the filing of F
further evidence in the appeal.
G G
H H
31. Notwithstanding this, the written submissions lodged by the
I Appellant, under the heading “Details of the Applications”, asked the I
Court to give leave to amend the Notice of Opposition pursuant to Practice
J J
Direction 22.1. In the written submissions of the Appellant, the Appellant
K also asked this Court to reach the conclusion that: K
a. Leave be granted to the Appellant to file further evidence;
L L
b. Leave be granted to amend the Notice of Opposition to
M M
include section 12(5)(b) of the Ordinance as a ground for
N opposition; N
c. The Registrar be directed to refuse the registration of the
O O
Opposed Mark to which the Application relates; and
P P
d. The costs of and occasioned by the appeal and of the
Q opposition proceedings be paid to the Appellant, to be taxed if Q
not agreed.
R R
S S
32. In this regard, the Notice of Motion of the Appellant states
T
that “[i]nsofar as it is required, the [Appellant] will seek leave to amend T
U U
V V
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A A
the Notice of Opposition to properly include section 12(5)(b) of the
B B
Ordinance as a ground for opposition”.
C C
D
33. This position of the Appellant was repeated in Choi’s 2 nd D
Affirmation. Choi’s 2 Affirmation also states that “[i]n the event leave is
nd
E E
granted [to the Appellant] to file further evidence”, the Appellant would
F seek leave to amend the Notice of Opposition as well as the Notice of F
Motion in order to “put “non-use” in issue before the Court”, (in other
G G
words, to address the issue that the Respondent’s “Shelter Lounge” closed
H down in 2016 although there was evidence from the Respondent that it was H
planning to open another lounge under the Opposed Mark).
I I
J J
34. Such position was maintained in the Appellant’s oral
K submissions at the hearing with the Appellant asking for leave from the K
Court to amend the Notice of Opposition.
L L
M M
35. In this regard, it was pointed out by the Respondent that no
N
summons has ever been taking out in respect of an application to amend the N
Notice of Opposition, nor has the Appellant alerted either the Respondent
O O
or the Court in respect of the exact terms of any intended amendments.
P P
36. Having considered both parties’ oral and written submissions,
Q Q
the Court agrees with the Respondent that without any formal application
R (accompanied by evidence in support) being made, the Court is not in a R
position to deal properly with any application regarding the amendment of
S S
the Notice of Opposition.
T T
U U
V V
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A A
37. In the circumstances, this decision deals only with the
B B
Summons relating to the filing of further evidence in the appeal.
C C
D
D. RELEVANT LEGAL PRINCIPLES D
E E
D1. The Court’s approach in relation to an appeal from the Registrar
F F
G 38. For the purpose of determining the Summons (that is, whether G
and what further evidence should be placed before the court hearing the
H H
substantive appeal), it is relevant for the Court first to bear in mind the
I approach which the court hearing the substantive appeal should take as it I
has a bearing on the Court’s evaluation of the potential significance of the
J J
further evidence to be adduced.
K K
L 39. Order 55, rule 3(1) of the Rules of the High Court (Cap. 4A) L
(the “RHC”) sets out that an appeal to the Court of First Instance from the
M M
Registrar shall be by way of rehearing.
N N
O
40. In this regard, the case of Vita Green Health Products Co Ltd O
v Vitasoy International Holdings Ltd (unrep, HCMP 593/2014, 7 January
P P
2015) sets out the relevant legal principles with regard to the Court’s
Q approach in relation to an appeal from the Registrar at §§38 to 42, which Q
are set out as follows:
R R
“38. Section 84(1) of the Ordinance provides that an appeal lies
to the court from any decision or order of the Registrar under
S the Ordinance. Section 85 goes on to provide that the court S
may, for the purpose of determining any question in the exercise
T
of its original or appellate jurisdiction under the Ordinance, T
make any order or exercise any other power which the Registrar
U U
V V
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A A
could have made or exercised for the purpose of determining
B that question. B
C 39. An appeal from the Registrar to the Court of First Instance is C
a rehearing, not a review. Nevertheless, the court is not
exercising a function as though it were a first instance court
D deciding on registration by reference to whatever might be the D
factual circumstances pertaining as at the date of the hearing of
E the motion by which the appeal is brought: see Lion Capital LLP E
v Registrar of Trade Mark [2011] 1 HKLRD 272 at paragraphs
21 and 25, per Deputy High Court Judge Coleman SC.
F F
40. The following guidance was given by Rogers VP in Re
G NAKED [2010] 1 HKLRD 382 at paragraph 22 in relation to the G
approach which the court should adopt in an appeal from a
decision of the Registrar:
H H
“In my view, the correct approach is that the Registrar’s opinion
I I
has to be fully and carefully considered. The Registrar has very
particular experience. Any departure from the way in which the
J Registrar exercised his discretion has to be made upon a sound J
basis after giving full and most careful consideration to the
Registrar’s views and reasons. The exercise of discretion by the
K K
Registrar should not be overruled simply because the court itself
might have come to a different conclusion. Essentially,
L therefore, a similar approach should be taken to the exercise of L
discretion by the Registrar as by a judge.”
M M
41. This reflects the current English approach regarding an
appeal from a decision of the registrar to the Chancery Division
N of the High Court or to an “appointed person” (usually drawn N
from a small panel of Queen’s Counsel practising in the
O Chancery Division and having special experience of trade mark O
law) under sections 76 and 77 of the Trade Marks Act 1994. In
Reef Trade Mark [2003] RPC 5 at paragraph 28, Robert Walker
P LJ (as he then was) stated as follows: P
Q “… the hearing officer had to make what he himself referred to Q
as a multi-factorial comparison, evaluating similarity of marks,
similarity of goods and other factors in order to reach
R R
conclusions about likelihood of confusion and the outcome of a
notional passing-off claim. It is not suggested that he was not
S experienced in this field, and there is nothing in the Civil S
Procedure Rules to diminish the degree of respect which has
traditionally been shown to a hearing officer’s specialised
T T
experience… On the other hand the hearing officer did not hear
any oral evidence. In such circumstances an appellate court
U should in my view show a real reluctance, but not the highest U
V V
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A A
degree of reluctance, to interfere in the absence of a distinct and
B material error of principle.” B
C 42. In summary, the court should be slow to reverse the decision C
of an experienced registrar on a question which consists largely
of a value judgment, but interference may be justified where, for
D example, the registrar erred in principle, took into consideration D
matters which he ought not to have considered, or omitted to
E take into consideration matters which he ought to have been E
considered: see Lion Capital LLP v Registrar of Trade Mark
[2011] 1 HKLRD 272 at paragraphs 20, 21 and 24, per Deputy
F High Court Judge Coleman SC.” F
G G
41. In summary, the Court bears in mind that whilst the appeal is a
H H
rehearing and not a review, the court hearing the substantive appeal is not
I exercising a function as though it were a first instance court deciding on I
registration. Generally speaking, the court hearing the substantive appeal
J J
should be slow to reverse the decision of the registrar, who has very
K particular experience, on a question which consists largely of a value K
judgment. Rather, the court’s role in the appeal is to look into the original
L L
decision to see if there are material errors of principle such that it should
M intervene. M
N N
D2. Granting leave to adduce further evidence in an appeal
O O
P P
42. For an appeal against the decision of the registrar, section 85
Q of the Ordinance provides as follows: Q
R R
“The court may, for the purpose of determining any question in
the exercise of its original or appellate jurisdiction under this
S S
Ordinance, make any order or exercise any other power which
the Registrar could have made or exercised for the purpose of
T determining that question.” T
U U
V V
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A A
43. In terms of the procedures for the appeal, Order 55, rule 7(2)
B B
of the RHC provides for the court’s power to receive further evidence on a
C question of fact, and the evidence may be given in such manner as the court C
may direct either by oral examination in court, by affidavit, by deposition
D D
taken before an examiner or in some other manner.
E E
F 44. In the case of Re CSS Jewellery Co Ltd [2010] 1 HKC 563, A F
Cheung J (as he then was) took the view at §90 that when determining
G G
whether to admit further evidence in appeals from the Registrar:
H H
“I agree that in this regard, the Ladd v Marshall conditions are
I I
not applicable in an appeal from the Registrar to the Court of
Instance. On the other hand, one cannot assume that leave to
J adduce further evidence is to be had for the asking.” J
K K
45. Furthermore, given the nature of an appeal as explained in
L §§39 to 41 above, an appellant does not have an absolute right to adduce L
new evidence. In this regard, Au-Yeung J had set out the relevant
M M
principles in the case of Gemology Headquarters International, LLC v
N Gemological Institute of America, Inc (unrep, HCMP 1456/2014, 15 July N
2014) at §§3 to 4 as follows:
O O
P P
“3. The principles for granting leave to adduce further
evidence have been set out in the case of Hunt-Wesson Inc’s
Q Trade Mark Application [1996] RPC 233 at 242 (the “Swiss Q
Miss” case) decided by Laddie J. In summary, the following
factors are relevant to the exercise of the court’s discretion:
R R
(a) Whether the evidence could have been filed earlier and, if so,
S S
how much earlier.
T T
(b) If it could have been, what explanation for the late filing has
been offered to explain the delay.
U U
V V
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A A
B (c) The nature of the mark. B
C (d) The nature of the objections to it. C
D (e) The potential significance of the new evidence. D
E (f) Whether or not the other side will be significantly prejudiced E
by the admission of the evidence in a way which cannot be
compensated, eg by an order for costs.
F F
4. Further, in Dualit Ltd v Rowlett Catering Appliances Ltd
G G
[1999] FSR 865, by the same learned Judge, it has been said
that the onus was on the applicant to justify the exercise of the
H court’s discretion in its favour, and merely showing the evidence H
sought to be introduced was relevant is not enough. At page
870 of the decision, it is stated that thus:
I I
“… it is not enough simply to allow in any evidence which can be
J J
argued to be relevant and in effect to allow in any evidence
which is relevant. If such a low hurdle is imposed, other
K applicants and opponents will no doubt look at the decision K
adverse to them in the Registry, redesign their evidence and start
again on appeal. But proceedings before the Registry are not a
L dry run to test out the evidence to see which parts can be L
criticised so that the evidence can then be perfected for the
M purpose of the proper run before the High Court. It is important M
for parties to realise that the function of the Registry is to
examine applications and to consider oppositions, and that they
N must put before the Registry the material which is to be relied N
upon in support of their cases.
O O
In my view, it is just as important that it is brought home to
litigants that they must put the best evidence available to them
P P
before the Registry as it is to ensure that the appeal is a fair
resolution of the dispute between the parties. It appears to me,
Q therefore, that it is still necessary for the court to consider the Q
issue of how important the evidence is, whether it could have
been put in earlier and why it was not and the weight that
R R
evidence is likely to have at the appeal.”
S S
46. At §18 of Gemology Headquarters International, Au-Yeung
T T
J further observed that “an error of judgment on the part of the appellant in
U U
V V
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A A
deciding what evidence to put before the Registrar... is not a ground for
B B
seeking leave to adduce fresh evidence on appeal”.
C C
D
E. DISCUSSION D
E E
E1. Explanation offered by the Appellant for the late filing of the evidence
F F
G 47. With reference to the factors summarised by Au-Yeung J in G
Gemology Headquarters International, it is clear that the evidence now put
H H
forward by the Appellant, save in respect of materials which post-dated the
I hearing before the Registrar, could have been put forward before the I
Registrar.
J J
K K
48. In this regard, the main reason provided by the Appellant for
L the late filing of the evidence is the purported incompetence of Mr Pang L
who handled the matter at the opposition stage.
M M
N N
49. The Court notes that Counsel for the Appellant in his oral
O
submissions did mention that Choi Yiu Ying (“Mr Choi”), the shareholder O
and director of the Appellant and the deponent of Choi’s 1 Affirmation
st
P P
and Choi’s 2nd Affirmation, took Mr Pang to be a ‘trade mark attorney’ and
Q referred to §48 of Choi’s 1st Affirmation as regards the trust placed by him Q
in Mr Pang and the deference given by him to Mr Pang’s advice. Further,
R R
as noted in §24 above, the Appellant’s submission to the Court was that the
S Appellant was under the impression that Mr Pang was a legal counsel who S
had the competency in opposing the Application on behalf of the
T T
Appellant.
U U
V V
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A A
B B
50. However, such overall submission appears to be contradicted
C by the evidence, (namely, Choi’s 1st Affirmation), put forward by the C
Appellant in support of the Summons.
D D
E E
51. The Appellant sets out in §51 of Choi’s 1st Affirmation that:
F F
G
“I was taken by surprise that there was a competing application G
by Shelter Lounge…Mr. Pang then said that in light of this
competing application, we should oppose the Application first,
H rather than pursuing with our own application filed by Profit H
Ocean. I asked Mr. Pang if we should seek further legal advice
from a solicitor or counsel for the opposition proceedings. Mr.
I I
Pang said that we had a very good case given our established
goodwill and use of our Shelter mark and that he could handle
J the case himself…and would liaise with my staff where J
necessary and I had nothing to worry about. I trusted Mr Pang
at that time.” (Emphasis added)
K K
L 52. The Appellant further sets out in §54 of Choi’s 1st Affirmation L
that:
M M
N N
“…Mr. Pang would reply saying everything was under control
and the proceedings were pending at the Trade Mark Registry.
O Finally, he said that the actual hearing of the Opposition O
proceedings would be held on 8 June 2016. I asked him again if
P
we should engage solicitors/counsel to appear at the hearing P
and make representations on our behalf as Shelter Lounge was
legally represented. He reassured me that as “an attorney”, he
Q knew what to do in our best interests. Much to my regret, I Q
misplaced my trust in him once again.” (Emphasis added)
R R
53. Whilst this Court recognizes that both the Notice of
S S
Opposition and Pang’s Statutory Declaration contain reference to Mr Pang
T as “an attorney”, given the evidence put forward by the Appellant as set T
out in §§51 and 52 above and even in the case where the Appellant was
U U
V V
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A A
misled into thinking that Mr Pang had the competency in opposing the
B B
Application, by reason of the Appellant’s evidence the Court is not
C convinced that the Appellant was misled into thinking that Mr Pang was C
legally qualified.
D D
E E
54. In other words, whilst it might be unfortunate on the part of
F the Appellant in engaging Mr Pang (who worked for Times Intellectual F
Property (Hong Kong) Limited which, according to §48 of Choi’s 1 st
G G
Affirmation, was a company “offering trademark application service”),
H the Court considers the evidence put forward by the Appellant as set out in H
§§51 and 52 above reflects that the Appellant made the decision not to
I I
engage legal representation at the opposition stage.
J J
K 55. In any event and even assuming that the Court is incorrect in K
reaching the conclusion that the Appellant was aware that Mr Pang was not
L L
in fact legally qualified, the Court is similarly not satisfied that
M “incompetence of counsel” is, in the present circumstances, an adequate M
explanation in itself justifying the late filing of evidence.
N N
O O
56. It appears to the Court that the present scenario falls fairly and
P squarely within the situation contemplated in §18 of Gemology P
Headquarters International, namely that there was an error of judgment on
Q Q
the part of the appellant in deciding what evidence to put before the
R Registrar. R
S S
57. The Respondent put forward the Court of Appeal decision of
T T
Chan Koon Nam v Ng Man Sum (unrep, CACV 281/2011, 5 March 2013)
U
as an authority suggesting that the failure of a party to adduce evidence U
V V
- 25 -
A A
relying on the advice of the legal advisors could not constitute a special
B B
ground for such evidence to be adduced. The Court of Appeal in that case
C did not see why the incompetence of lawyers should be a factor C
distinguishing that case from the case of Dr Kwong Kwok Hay v Medical
D D
Council of Hong Kong (No 2) [2007] 4 HKC 446, another Court of Appeal
E decision in which the court refused to give leave to admit fresh evidence in E
the appeal.
F F
G G
58. Relevantly, the Court notes that Dr Kwong Kwok Hay is a
H decision based on the principles set out in Ladd v Marshall, which in the H
context of an appeal from the Registrar to the Court of First Instance (by
I I
way of a rehearing) are not applicable. Indeed, the Court also bears in mind
J that Order 55, rule 7(2) of the RHC provides the power for the court in an J
appeal to receive further evidence on questions of fact.
K K
L L
59. However, the Court has not lost sight of the fact that even in
M such a rehearing, the court is not to exercise a function as though it were a M
first instance court and that even given the wide power provided to the
N N
court, a party late in adducing evidence cannot assume that leave to adduce
O further evidence is simply ‘to be had for the asking’. O
P P
60. Striking an overall balance and bearing in mind both the
Q Q
authorities on this subject and those relevant factors set out in §§ 58 and 59
R above, this Court does not consider there to be circumstances in the present R
case justifying the exercise of discretion to admit the further evidence
S S
purely by reason of any alleged incompetence of Mr Pang.
T T
U U
V V
- 26 -
A A
61. Furthermore, just as the Court of Appeal in Chan Koon Nam
B B
expressed scepticism (at §38) with regard to the defendant’s allegation that
C he failed to disclose the relevant documents as he was not advised by his C
lawyer to do so, in reaching its conclusion, the Court also has scepticism
D D
with regard to the level of reliance which Mr Choi said he allegedly placed
E on Mr Pang. E
F F
62. Mr Choi is a qualified civil engineer (as stated in §3 of Choi's
G G
1st Affirmation) who established Shelter Bar in 2002 and later became the
H Chief Executive Officer of the “Shelter Census Group” in 2006. H
I I
63. As the Court of Appeal put it in §38 of Chan Koon Nam when
J J
stating that it does not think “it would require a lot of experience for a
K litigant in the defendant’s position to know the documents relevant to K
support his case and which he should provide to his lawyers”, the Court
L L
similarly does not think that Mr Choi was not in a position to appreciate the
M possibility of the potential relevance of at least some of the documents M
which the Appellant now seeks to adduce as further evidence, especially
N N
when Mr Choi himself admitted at §49 of Choi’s 1st Affirmation that Mr
O Pang had, as far as he could remember, once asked for information such as O
the name of the company which the Appellant would like to use to hold the
P P
trademark and details of the design of the Shelter Mark.
Q Q
R 64. As it was the Appellant’s main point of contention at the R
opposition stage (and indeed at the appeal stage too) that the Appellant has
S S
obtained goodwill by way of the extensive use of the Shelter Mark from
T 2002, the Court is sceptical of the fact that no one within the Appellant T
(either Mr Choi or the staff entrusted by Mr Choi to handle the relevant
U U
V V
- 27 -
A A
matters) ever gave thought as to whether to provide documents regarding
B B
the Shelter Bar at the Henry House Premises such as its menus or photo
C showing the lightbox design (see §25a and b above) to Mr Pang to be used C
for the purposes of the opposition.
D D
E E
65. Notably, according to Mr Choi, Mr Pang had also told him
F that “we had a very good case given our established goodwill and use of F
our Shelter mark” (see §51 of Choi’s 1st Affirmation). The Court can
G G
therefore infer that Mr Choi was indeed aware that whether there was
H established goodwill and use of the Shelter Mark would be matters relevant H
to the opposition of the Application.
I I
J J
66. These observations of the Court also go to addressing the
K point put forward by the Appellant that the Appellant had satisfied the K
assessment which the Court of Appeal undertook in §42 of Chan Koon
L L
Nam, namely that “[a]pplying an objective standard”, it can be said that
M the Appellant “had exercised “reasonable diligence”” regarding the M
“production of relevant documents” to support its case. For the reasons
N N
explained in §§61 to 65 above, the Court disagrees.
O O
P 67. In summary, the Court is not satisfied that any reliance on the P
part of the Appellant on Mr Pang and/or any incompetence on the part of
Q Q
Mr Pang constitute circumstances in themselves which justify the Court
R exercising its discretion in favour of the Appellant. R
S S
T T
U U
V V
- 28 -
A A
E2. Potential significance of the new evidence
B B
C C
68. The Court now turns to evaluating the potential significance
D
of the new evidence which the Appellant seeks to file, having regard to the D
Opposed Mark and the other relevant marks in question and also the nature
E E
of the Appellant’s objections.
F F
69. In terms of the nature of the Appellant’s objections, based on
G G
the Notice of Motion, the Appellant relies on three grounds under the
H H
Ordinance, being section 11(4)(b) (namely, the Opposed Mark is likely to
I
deceive the public), section 11(5)(b) (namely, the Application was made in I
bad faith) and section 12(5)(b) (namely, a trade mark shall not be
J J
registered by virtue of an earlier right).
K K
70. However, the Statement of Grounds enclosed to the Notice of
L L
Opposition, as it currently stands (i.e. without any amendments being
M M
made thereto), contains no reference to the ground under section 12(5)(b).
N
The Notice of Opposition also contains an additional ground under section N
11(4)(a) of the Ordinance (namely, the Opposed Mark is contrary to
O O
accepted principles of morality), which ground the Court understands the
P Appellant is no longer pursuing. P
Q Q
71. In this regard, rule 16 of the Trade Marks Rules (Cap. 559A)
R provides for the filing of a notice of opposition including a statement of the R
grounds of opposition and in the context of an opposition to registration,
S S
such statement of grounds constitutes the pleadings which identify and
T T
define the issues between the parties and any amendment of which requires
U
an exercise of discretion by the Registrar. U
V V
- 29 -
A A
B B
72. For the sake of completeness, Choi’s 2 nd
Affirmation does
C refer to intended amendments to both the Notice of Opposition and the C
Notice of Motion to address the issue of “non-use”, (namely, the fact that
D D
the Respondent’s “Shelter Lounge” has closed down in 2016), if the Court
E finds in favour of the Appellant in terms of the Summons. E
F F
73. However, for the purpose of the Summons and as there is no
G G
application by way of summons before the Court which relates to the
H amendment of the Notice of Opposition and/or the Notice of Motion, the H
Court will only evaluate the significance of the new evidence based on the
I I
two grounds set out in the Notice of Opposition which are still pursued by
J the Appellant. J
K K
74. As regards the various marks with which the present case is
L L
concerned, the Notice of Opposition makes reference only to the Shelter
M Census Group Mark, (but not the Shelter Mark), and its usage since August M
2011.
N N
O O
75. Pang’s Statutory Declaration refers to how the Appellant
P “has used the trade mark “Shelter” since 2002” and the Respondent P
“should, in no doubt, has the knowledge of [the Appellant’s] extensive use
Q Q
of the trade mark “Shelter” in Hong Kong”. However, essentially only 6
R pages of newspaper clippings of articles in 2002, (i.e. when Shelter first R
opened), were exhibited.
S S
T T
76. It is not disputed that in order to determine bad faith, (i.e. the
U absolute ground provided under section 11(5)(b) of the Ordinance), the U
V V
- 30 -
A A
court must ascertain what the Respondent knew about the matters in
B B
question and then decide whether the knowledge of the Respondent was
C such that the Application would be regarded as made in bad faith by C
persons adopting the proper standards.
D D
E E
77. In making an assessment of the Respondent’s knowledge,
F (and a determination of the issue of bad faith), therefore, the relevant point F
in time must be the date of the Application, namely 23 April 2013.
G G
H H
78. However, and putting aside for the time being the issue that
I
the Shelter Mark was not pleaded at all in the Notice of Opposition, the I
Court has doubts concerning the relevance or significance of the further
J J
evidence which the Appellant seeks to adduce and how it serves to show or
K suggest the knowledge of the Respondent. K
L L
79. Amongst the new evidence which the Appellant seeks to
M adduce, this Court takes the view that all materials relevant to “Shelter M
N
Italian Bar and Restaurant” located at the Hysan Place Premises, which N
was only opened after the Application was made, are not and should not be
O O
relevant to the issue of the Respondent’s knowledge (and hence the
P determination of the issue of bad faith). P
Q Q
80. As regards the Shelter Bar at the Henry House Premises
R which ceased operation sometime in 2013, amongst the further evidence R
exhibited to Choi’s 1st Affirmation, only the menus of Shelter Bar from
S S
2002 to 2013 and a photo showing the lightbox design of Shelter Bar are
T T
particularly relevant. Apart from what was already exhibited to Pang’s
U
Statutory Declaration, the Appellant does not seek to adduce any further U
V V
- 31 -
A A
evidence, (for example, by way of newspaper or magazine articles), to
B B
support its contention that Shelter Bar has “obtained goodwill by way of
C the extensive use of the “trade mark “Shelter” in the area of food and C
beverage restaurant area”.
D D
E E
81. In the Court’s opinion, both the menus and the lightbox at
F Henry House are things which only patrons of Shelter Bar at the Henry F
House Premises or visitors of Henry House would come across
G G
respectively. It does not necessarily follow that these items could serve to
H show that the Respondent would have knowledge of the existence of H
Shelter Bar, especially in the case where it was and is recognized both by
I I
the Registrar, (making reference to the case of Royal Enfield Trade Marks
J [2002] R.P.C. 24 at §31), and the Court that bad faith is a serious allegation J
which should not be lightly made and should not be upheld unless it is
K K
distinctively proved and this will rarely be possible by a process of
L inference. L
M M
82. The Court will make the same observations as set out in §81
N N
with regard to the financial statements of the companies which operated
O Shelter Bar from 2002 to 2013. In any event, this Court notes that the O
Registrar has recognized in §48 of the Statement of Reasons for Decision
P P
that “it appears very likely that the [Appellant’s] business is ongoing at all
Q material times up until 2013” and that “[c]hances, and the only chances, Q
are the [Appellant’s] business is profitable, given the apparent continuity
R R
of the business” although “no relevant turnover figures have been
S provided”. It would appear to the Court that the Appellant is now seeking S
to adduce the financial statements to address this comment previously
T T
made by the Registrar.
U U
V V
- 32 -
A A
B B
83. There was additionally one article entitled “Street Kings”
C mentioning the Shelter Census Group, (and it was, notably, the only piece C
of evidence which the Appellant seeks to produce with regard to the
D D
“Shelter Census Group”), which, according to Choi’s 1 Affirmation, was
st
E published back in August 2008, namely 4.5 years before the Application E
was made. In the Court’s opinion, this single article provides little, if any,
F F
assistance to the court hearing the substantive appeal in terms of
G determining the Respondent’s knowledge as at the time when making the G
H
Application. H
I I
84. As regards the correspondence with various developers from
J 2014 to 2017 regarding various business proposals or projects, whilst it J
may potentially serve to show that the Appellant has an established
K K
business by 2014 to 2017:
L L
a. Such correspondence post-dated the Application;
M b. Notably, such correspondence mostly came from staff of M
“Shelter Group”. Whilst the relationship between “Shelter
N N
Group” and “Shelter Census Group” has not been
O particularly or clearly explained to the Court, the signature O
blocks of staff of “Shelter Group” did not contain the Shelter
P P
Census Mark but a mark which was different from both the
Q Shelter Census Mark and the Shelter Mark. In any event, the Q
Court would point out at this juncture that to date, the
R R
Appellant does not seek to adduce any evidence which relates
S S
to the usage of the Shelter Census Group Mark, the only mark
T
which was referred to in the Notice of Opposition; and T
U U
V V
- 33 -
A A
c. Most importantly, the Court also notes from the signature
B B
blocks of staff of “Shelter Group” that there were other
C businesses (with names which do not bear the word “Shelter” C
at all) under “Shelter Group” and if anything, in this Court’s
D D
view the correspondence serves more to show that “Shelter
E Group” had an established business by 2014 to 2017, but not E
what goodwill Shelter Bar had established by the date of the
F F
Application.
G G
H 85. As for the other evidence which is enclosed to Choi’s 1st H
Affirmation and which the Appellant seeks to adduce but is not specifically
I I
mentioned above by the Court, for the avoidance of doubt, the Court is
J similarly of the view that it has no or little significance as to the issue of the J
Respondent’s knowledge.
K K
L L
86. The Court now turns to the other ground, section 11(4)(b) of the
M Ordinance, (namely, the Opposed Mark is likely to deceive the public), set M
out in the Notice of Opposition. The Court notes that the Appellant’s case
N N
in relation to section 11(4)(b) of the Ordinance has the following
O particulars / aspects: O
a. In Pang’s Statutory Declaration, it was essentially stated that
P P
the Opposed Mark and the Shelter Mark are “similar”. It
Q appears to the Court that the gist of the Appellant’s complaint Q
is that the “distinctive element” of the Opposed Mark is
R R
“Shelter”, which is identical to the Shelter Mark “by way of
S
meaning and pronunciation” and hence the Application is to S
T
“share and steal” the goodwill arising from “the name of T
“Shelter”;
U U
V V
- 34 -
A A
b. According to the Appellant’s written submissions before the
B B
Court, it appears that the Appellant is suggesting that because
C the Appellant’s “Shelter” business, (it is not clear whether the C
Appellant is referring to the Shelter Bar and/or “Shelter
D D
Italian Bar and Restaurant” which was only opened after the
E Application was made), and the Respondent’s “Shelter E
Lounge” are both in the food and beverage industry and that
F F
they both have the word “Shelter” in their names, then it is
G “inevitable” for the public to be “confused”. The Appellant G
therefore seems to suggest that as long as a trade mark
H H
registration relates to a restaurant in Hong Kong Island,
I (when the Appellant’s business is also in Hong Kong Island), I
and the restaurant’s name includes the word “Shelter”, then
J J
an opposition on the part of the Appellant ought to succeed on
K the ground of section 11(4)(b); and K
L c. Amongst the new evidence which the Appellant seeks to L
adduce, there is “clear evidence that the public was indeed
M M
confused”.
N N
O
87. It is the Respondent’s position that the Appellant’s case under O
section 11(4)(b) of the Ordinance is built on a false premise and whilst the
P P
Appellant has provided the Court with its written submissions in reply to
Q the Respondent’s written submissions, notably, the Appellant has not Q
responded to this issue nor has it provided the Court with authorities which
R R
support its contention as set out in §86 a and b above.
S S
T
88. Furthermore, in elaborating on the significance of the further T
evidence to be adduced, the Court notes that the Appellant makes reference
U U
V V
- 35 -
A A
to both section 7(1) and section 12(3)(c) of the Ordinance which concern
B B
causing confusion on the part of the public. However, it is noted that
C neither the Notice of Opposition nor the Notice of Motion has pleaded the C
relative ground under section 12(3) of the Ordinance. It is also noted by the
D D
Court that “deception” and “confusion” appear to be two distinct concepts
E under the Ordinance, with deceiving the public being an absolute ground E
under section 11(4)(b) of the Ordinance and causing confusion on the part
F F
of the public being a relative ground under section 12(3) of the Ordinance.
G G
H 89. In other words, bearing mind the substance of the Appellant’s H
case under section 11(4)(b) of the Ordinance, the Court is not satisfied as to
I I
how any of the further evidence which the Appellant now seeks to adduce
J will show deception on the part of the Respondent and assist those aspects J
of the Appellant’s case, (as summarised by the Court in §86 above), under
K K
section 11(4)(b) of the Ordinance.
L L
M 90. For the sake of completeness, the Appellant in particular M
highlights for the Court that such evidence, (as set out in §25 l and m
N N
above), which goes to the “actual confusion by the public” between the
O Appellant’s mark and the Opposed Mark “is crucial in supporting the O
[Appellant’s] grounds of opposition based on the likelihood of confusion,
P P
deception, bad faith as well as passing off”. The Court disagrees.
Q Q
R 91. Putting aside the issue that as matters currently stand, the R
pleadings at the opposition stage and at the appeal stage do not cover either
S S
issues concerning “likelihood of confusion” or “passing off”, the Court
T queries the weight which should be given to such evidence in showing T
confusion, deception, bad faith or passing off. As mentioned in §25 l
U U
V V
- 36 -
A A
above, the Openrice.com review of “Shelter Italian Bar and Restaurant”
B B
in October 2014 was prepared by someone who was invited by “Shelter
C Group” to visit “Shelter Italian Bar and Restaurant”. As the reviewer C
attended the “Shelter Italian Bar and Restaurant” pursuant to an invitation
D D
of the “Shelter Group”, any suggestion on the part of the reviewer that he
E or she was confused appears to be rather self-serving, especially bearing in E
mind that when the review was uploaded, the Appellant had already
F F
opposed the Application.
G G
H 92. The evidence set out in §25 m, namely the online article H
posted on Sassyhongkong.com regarding a complimentary tea set
I I
giveaway, suffers the same issue. Whilst “Shelter Italian Bar &
J Restaurant” was wrongly labelled as “Shelter Lounge” in the heading of J
the article, the giveaway appears to be some form of collaboration between
K K
Sassyhongkong.com and “Shelter Italian Bar & Restaurant” and hence,
L readers who wish to enter into the giveaway were asked to click into L
another Sassyhongkong.com hyperlink. In these circumstances, the Court
M M
queries whether this article could serve as crucial evidence in establishing
N “actual confusion by the public”. N
O O
E3. Whether the Respondent would be significantly prejudiced
P P
Q Q
93. Even though the Respondent’s evidence in opposition to the
R Summons has not specifically touched on the issue of prejudice, it is not R
difficult for the Court to foresee how prejudice might be caused to the
S S
Respondent if this Court were to find in favour of the Appellant in respect
T of the Summons. T
U U
V V
- 37 -
A A
94. Relevantly, the Respondent may have to file new evidence in
B B
response to the further evidence adduced by the Appellant, (and indeed the
C Respondent has reserved its right to do so in its evidence filed in opposition C
of the Summons). The Appellant submits that because the Respondent will
D D
have the chance to file evidence in response to its further evidence, no
E prejudice would arise. The Court does not see the force of the Appellant’s E
argument, as the filing of further evidence would not only delay the
F F
hearing of the substantive appeal but also involve the incurrence of further
G costs. G
H H
95. The Court agrees with Au-Yeung J at §14 of Gemology
I I
Headquarters International that to allow a party who loses the opposition
J stage to redesign its evidence having regard to the adverse decision against J
it and adduce new evidence on appeal would be violating the principle set
K K
out in the case of Dualit and would render proceedings before the Registrar
L a dry run. The fact that the Appellant now seeks to adduce financial L
statements of the companies operating Shelter Bar, (see §82 above), to
M M
address the Registrar’s comment made in the Statement of Reasons for
N Decision is an example. N
O O
96. The Appellant also contends in its written submissions that
P P
most of the evidence was placed before the Registrar and the remainder is
Q evidence which directly relates to the opposition as to which no prejudice Q
arises or should arise. The Court does not agree as it is simply not correct
R R
that most of the evidence was placed before the Registrar. Relevantly, the
S Court notes that approximately one lever arch file of documents was S
placed before the Registrar and the Appellant is now seeking to adduce
T T
U U
V V
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A A
further evidence which amounts to three and a half lever arch files of
B B
documents.
C C
D
97. As regards the contention on the part of the Appellant that D
there is no prejudice which could not be compensated by an order for costs,
E E
the Court agrees with the observation made by Au-Yeung J in §20 of
F Gemology Headquarters International that the factor of whether or not F
there is prejudice which cannot be compensated for example by an order
G G
for costs does not mean to override the other relevant factors. In other
H words, a party seeking to adduce new evidence cannot simply “buy an H
opportunity” which is neither fair nor just, and would cause both delay and
I I
unnecessary costs to be incurred.
J J
K 98. Lastly, it appears to the Court that the fact that the K
Respondent’s “Shelter Lounge” has closed is also neither here nor there in
L L
terms of the issue of prejudice.
M M
N
F. ADDITIONAL EVIDENCE N
O O
99. During the course of the hearing the Court drew to the
P attention of those representing the Appellant that paragraph 60 of Choi’s P
1st Affirmation made reference to copies of photos being shown and
Q Q
produced to him, but the same were not exhibited. Subsequent to the
R hearing an additional affirmation on behalf of the Appellant was affirmed R
by Woo Choi Fong Celestine and leave to file the same was sought. The
S S
Court hereby grants leave so to file such affirmation and dispenses with
T T
service of the same.
U U
V V
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A A
G. CONCLUSION
B B
C C
100. For the above reasons, the Appellant has not justified the
D
exercise of the Court’s discretion in favour of the Appellant, and the D
Summons is therefore dismissed.
E E
F 101. There is no reason why costs should not follow the event. The F
Court therefore makes a costs order nisi that the Appellant does pay the
G G
Respondent’s costs of and occasioned by the Summons, with such costs to
H H
be taxed if not agreed with certificate for counsel. The costs order nisi shall
I
become absolute in the absence of any application to vary the same within I
14 days as from the date of this decision.
J J
K 102. It remains for the Court to thank Counsel for their able K
assistance.
L L
M M
N N
O ( Brian Gilchrist ) O
Deputy High Court Judge
P P
Q Q
Mr Osmond Lam and Ms Jacqueline Ka Ki Chan, instructed by Tung, Ng,
R
Tse & Heung, for the Appellant R
Mr Anson Yu Yat Wong, instructed by Lau, Wong & Chan, for the
S
Respondent S
T T
U U
V V
HCMP 3591/2016
A A
[2022] HKCFI 1049
B IN THE HIGH COURT OF THE B
HONG KONG SPECIAL ADMINISTRATIVE REGION
C C
COURT OF FIRST INSTANCE
D MISCELLANEOUS PROCEEDINGS NO 3591 OF 2016 D
E E
IN THE MATTER OF the Trade Marks
F F
Ordinance (Cap 559)(the “Ordinance”)
G
and G
IN THE MATTER OF the Application
H No.302585962 by Shelter Lounge H
Limited (the “Applicant”) to register the
I following trade mark in series I
J J
K K
L L
M M
N N
O O
P P
Q Q
R R
(the “Mark”) in Class 43 in the name of
S S
Shelter Lounge Limited (the
“Application”)
T T
U U
V V
- 2 -
A A
IN THE MATTER OF an Appeal
B against the Registrar’s dismissal of the B
Opposition by Ocean Concept Holdings
C Limited (the “Opponent”) of the C
Application (the “Appeal”)
D D
E ____________________ E
F F
BETWEEN
G OCEAN CONCEPT HOLDINGS LIMITED Appellant G
(Opponent)
H H
and
I I
SHELTER LOUNGE LIMITED Respondent
J J
(Applicant)
________________
K K
L
Before: Deputy High Court Judge Gilchrist in Chambers L
Date of Hearing: 20 September 2017
M Date of Decision: 13 April 2022 M
___________________
N N
DECISION
O ___________________ O
P P
A. Introduction
Q Q
R R
1. On 23 April 2013, the Respondent filed an application
S (Application No. 302585962, the “Application”) with the Registrar of S
Trade Marks (the “Registrar”) to register a trademark (the “Opposed
T T
Mark”) in class 43 for “services for providing food and drink; temporary
U accommodation”. U
V V
- 3 -
A A
2. On 26 August 2013, the Appellant opposed the Application
B B
by filing a Notice of Opposition together with a Statement of Grounds.
C C
D
3. On 8 June 2016, a hearing in respect of the opposition was D
held before the Hearing Officer acting for the Registrar (hereinafter
E E
referred to as the Registrar).
F F
4. On 1 December 2016, the Registrar handed down the
G G
Statement of Reasons rejecting all grounds of opposition relied on by the
H H
Appellant.
I I
5. The Appellant filed a Notice of Motion on 29 December 2016
J J
(the “Notice of Motion”) to appeal against the Registrar’s decision.
K K
L 6. On 3 February 2017, the Appellant made an application by L
way of a summons seeking leave to file further evidence on appeal (the
M M
“Summons”), such application being opposed by the Respondent. In
N simple terms, the main reason offered by the Appellant as to why further N
evidence has to be filed was that the Appellant was not legally represented
O O
before the Registrar, nor had it been provided with proper legal advice as to
P the basis upon which the Application should have been opposed, or the P
evidence which should have been adduced in order to oppose the
Q Q
Application.
R R
S 7. The parties have agreed by consent that the Notice of Motion S
is to be dealt with after the Summons is disposed of. The Court herein is
T T
U U
V V
- 4 -
A A
therefore only asked to decide with respect to the Summons but not the
B B
Notice of Motion.
C B. BACKGROUND AND THE PARTIES’ RESPECTIVE POSITIONS C
D D
B1. Background
E E
F 8. This Court should preface matters by pointing out that the F
facts summarized in this sub-section are drawn from the evidence filed by
G G
the parties both at the opposition stage and for the purpose of the
H
Summons. Relevantly, the Affirmation of Choi Yiu Ying (“Choi’s 1st H
I
Affirmation”) filed by the Appellant in this appeal refers to a substantial I
amount of additional information not placed before the Registrar and
J J
which forms the subject matter of the Summons. This Court’s
K determination of the Summons is set out below in Sections E and G below K
but for the purpose of setting out the background, this Court will also
L L
include information from Choi’s 1st Affirmation.
M M
N
9. The Appellant, Ocean Concept Holdings Limited, began N
operating a food and beverage business under the name “Shelter” in 2002
O O
making use of the following logo:
P P
Q Q
(hereinafter referred to as the “Shelter Mark”).
R R
S S
10. “Shelter” started off as an “upstairs” bar (“Shelter Bar”)
T located at 27/F, Henry House, Causeway Bay, Hong Kong (the “Henry T
House Premises”).
U U
V V
- 5 -
A A
B B
11. In July 2006, the shareholder and director of the Appellant
C decided to join forces with a friend (who was at that time operating bars C
under the names of “Census” and “C3” respectively) to merge their
D D
existing bar businesses together under the umbrella of the “Shelter Census
E Group”. They expanded their business to other areas of the food and E
beverage industry in Hong Kong as well as in Macau.
F F
G G
12. The Appellant registered the following mark with respect to
H the “Shelter Census Group” in Mainland China in class 43 in June 2010 H
and in class 35 in March 2012:
I I
J J
K K
L L
M (hereinafter referred to as the “Shelter Census Group Mark”). M
N N
13. As pleaded in the Appellant’s Statement of Grounds, the
O O
Shelter Census Group Mark has been used since August 2011.
P P
14. In early-2013, the Appellant was approached by Hysan
Q Q
Development Company Limited to establish a bar and restaurant at its then
R newly-developed property in Causeway Bay, namely Hysan Place (the R
S
“Hysan Place Premises”) and a tenancy agreement was signed in March S
2013. Shelter Bar ceased its operation in 2013 at the Henry House
T T
Premises although it is not clear as to exactly when it ceased its operation.
U U
V V
- 6 -
A A
15. The Respondent, Shelter Lounge Limited, made the
B B
Application in April 2013 to register the Opposed Mark as follows:
C C
D D
E E
F F
G G
16. According to Choi’s 1st Affirmation, an application
H H
(Application No. 302589274) was made by a company then known as
I Profit Ocean Holdings Limited, but subsequently re-named as Choi’s I
Brothers Catering Holdings Limited, (a shelf company used “for the sake
J J
of convenience”), in respect of the Shelter Mark on 25 April 2013. Such
K application led to the discovery by the Appellant of the Application. K
L L
17. In or about July 2013, the Respondent’s business “Shelter
M M
Lounge” was granted its licence by the Food and Environmental Hygiene
N Department. N
O O
18. On 31 October 2013, “Shelter Italian Bar and Restaurant”
P P
began its operation at the Hysan Place Premises.
Q Q
R 19. On 12 March 2014, the Appellant made an application R
(Application No. 30291319) in respect of the Shelter Mark, but the Trade
S S
Marks Registry informed the Appellant of the Application which was
T pending and stated that the outcome of the Appellant’s application would T
depend on the Application.
U U
V V
- 7 -
A A
B B
20. In or around late-2016, the Respondent ceased operation of
C “Shelter Lounge” in Sheung Wan. C
D D
B2. The Appellant’s position at the opposition stage
E E
F F
21. In opposing the Application, the Appellant put forward in the
G Statement of Grounds (which contains only two paragraphs) enclosed to G
the Notice of Opposition:-
H H
a. The fact that the Shelter Census Group Mark was registered in
I Mainland China in difference classes since 2010 and that the I
same has been used since August 2011;
J J
b. Sections 11(4)(a) of the Trade Marks Ordinance (Cap. 559)
K K
(the “Ordinance”) (that a trade mark shall not be registered if
L it is contrary to accepted principles of morality); L
c. Section 11(4)(b) of the Ordinance (that a trade mark shall not
M M
be registered if it is likely to deceive the public); and
N N
d. Section 11(5)(b) of the Ordinance (that the Application was
O
made in bad faith); O
P P
as the grounds of opposition. Only reference to the Shelter Census Group
Q Mark was made and there was no mention of the Shelter Mark. Q
R R
22. In the Statutory Declaration of Mr Pang Tak Hong (“Mr
S S
Pang”) dated 14 May 2014 who represented himself as the “Attorney of
T Times Intellectual Property (Hong Kong) Limited” (“Pang’s Statutory T
U U
V V
- 8 -
A A
Declaration”), the Appellant put forward the following assertions /
B B
evidence including:
C a. The Appellant “has used the “trade mark “Shelter” since C
2002” and has “obtained goodwill by way of the extensive use
D D
of the “trade mark “Shelter” in the area of food and beverage
E restaurant area”; E
F b. To show that the Respondent “should, in no doubt, has the F
knowledge of [the Appellant’s] extensive use of the trade
G G
mark “Shelter” in Hong Kong”, materials such as the tenancy
H agreements from 2007 to 2013, the various licences and H
business registrations from 2002 to 2013 and in particular 6
I I
pages of newspaper clippings of articles in 2002 (i.e. when
J Shelter Bar was first opened) were produced; J
c. The Opposed Mark is “similar” to the “Shelter trade mark”
K K
and the Application therefore “violates section 11(4)(a),
L 11(4)(b) and 5(b)” of the Ordinance; L
M d. The word “Shelter” is the distinctive element of the Opposed M
Mark, which is identical to the Appellant’s ““Shelter” trade
N N
mark by way of meaning and pronunciation”; and
O e. The Shelter Census Group Mark was registered in class 43 O
since 2010, which was the same as the class to which the
P P
Application relates, and in class 35 since 2012.
Q Q
R B3. The Appellant’s position in this appeal R
S S
23. In summary, the Appellant put forward the following
T T
submissions / grounds of appeal in the Notice of Motion dated 29
U December 2016: U
V V
- 9 -
A A
a. The Appellant maintains the “likely to deceive the public”
B B
ground as set out in section 11(4)(b) of the Ordinance. It is the
C Appellant’s position that the Registrar erred in ruling that the C
Opposed Mark will not “be reasonably likely to cause
D D
deception and confusion among the public” and that the
E Registrar, inter alia: (i) erred in not finding that the Appellant E
had acquired substantial goodwill and reputation in its
F F
business under the Shelter Mark and (ii) erred in not finding
G the word “Shelter” used in Class 43 activities distinctive and G
in particular distinctive to the Appellant’s business;
H H
b. The Appellant also maintained the “bad faith” ground as set
I I
out in section 11(5)(b) of the Ordinance and that the Registrar
J
erred in ruling that the Application was not made in bad faith. J
The Appellant also made the point that given the established
K K
goodwill and reputation acquired by the Appellant by 2013,
L the Application was “dishonest”; and L
c. The Appellant now maintains the ground pursuant to section
M M
12(5)(b) of the Ordinance that a trade mark shall not be
N registered by virtue of an earlier right. Whilst this ground was N
not put before the Registrar, the Appellant’s position is that
O O
the Registrar “could have and should have refused the
P Application by virtue of section 12(5)(b) of the Ordinance”. P
Q Q
The Notice of Motion makes no mention of section 11(4)(a) of the
R R
Ordinance which is one of the grounds set out in the Notice of Opposition.
S S
T 24. Both in the Notice of Motion and in Choi’s 1st Affirmation, T
the Appellant also makes the point that the Summons ought to be
U U
V V
- 10 -
A A
successful as it was not legally represented before the Registrar but relied
B B
on Mr Pang. It is the Appellant’s submission that the Appellant was under
C the impression that Mr Pang was a legal counsel who had the competency C
in opposing the Application on behalf of the Appellant and in the
D D
circumstances, the Appellant ought to be allowed to file further evidence
E on appeal and with the benefit of such further evidence, the Court would E
reach the conclusion that the Application ought to be refused.
F F
G G
B4. The further evidence which the Appellant now seeks to file
H H
I
25. It is helpful to set out the more pertinent further evidence I
which the Appellant now seeks to file:
J J
K Regarding “Shelter” bar at the Henry House Premises K
L a. Menus of Shelter Bar from 2002 to 2013 bearing the Shelter L
Mark;
M M
b. A photo showing the lightbox design of “Shelter” bar at
N Henry House, which according to the 2 nd Affirmation of Choi N
Yiu Ying filed on 19 April 2017 (“Choi’s 2nd Affirmation”)
O O
was put in place at Henry House in as early as 2002;
P P
c. Financial statements of the companies which operated Shelter
Q Bar from 2002 to 2013, in order to show the turnover of Q
Shelter Bar.
R R
Regarding the “Shelter Census Group”
S d. One article mentioning the “Shelter Census Group” (which S
T
this Court understands from Choi’s 1st Affirmation was from T
August 2008);
U U
V V
- 11 -
A A
Regarding “Shelter Italian Bar and Restaurant” at the Hysan Place
B B
Premises
C e. Various corporate documents relating to the company which C
operated “Shelter Italian Bar and Restaurant” at the Hysan
D D
Place Premises in 2016-2017;
E E
f. Contractual and license documents with respect to the
F operation of “Shelter Italian Bar and Restaurant”; F
g. Financial statements of the company which operated “Shelter
G G
Italian Bar and Restaurant” in order to show its turnover for
H the period ended 31 March 2014; H
I
h. Social media page of “Shelter Italian Bar and Restaurant” I
with regard to its grand opening in October 2013;
J J
i. Photos of the lightbox shown at Hysan Place and photos taken
K outside the Hysan Place Premises during the renovation of K
“Shelter Italian Bar and Restaurant”. The Court notes that
L L
the word “Shelter” as shown on the lightbox and at the
M renovation site bears slight differences from the Shelter Mark M
which the Shelter Bar used in 2002 to 2013;
N N
j. VIP Card issued by “Shelter Italian Bar and Restaurant”,
O O
which shows that it is part of the “Shelter Group” (without
P displaying the Shelter Census Group Mark); P
k. various media clippings for “Shelter Italian Bar and
Q Q
Restaurant” from October 2013 to April 2016;
R l. An Openrice.com review of “Shelter Italian Bar and R
Restaurant” in October 2014, which the Appellant seeks to
S S
use to demonstrate the confusion by the public as regards
T T
“Shelter Italian Bar and Restaurant” and the “Shelter
U
Lounge” operated by the Respondent. This Court notes that U
V V
- 12 -
A A
the writer of the review was invited by “Shelter Group” to
B B
visit “Shelter Italian Bar and Restaurant”;
C m. Another online article posted on Sassyhongkong.com in July C
2014 regarding a promotion of “Shelter Italian Bar and
D D
Restaurant” which was wrongly labelled as a promotion from
E “Shelter Lounge”. Readers of the article were invited to click E
a Sassyhongkong.com link if they wished to enter a
F F
complimentary tea set giveaway from “Shelter Italian Bar
G and Restaurant”; G
H n. The award given by Hong Kong Tatler to “Shelter” (namely H
“Shelter Italian Bar and Restaurant”) in 2015;
I I
Regarding businesses related to the Appellant
J J
o. Correspondence with developers from 2014 to 2017
K regarding various business proposals / projects; K
L Regarding “Shelter Lounge” operated by the Respondent L
p. Photos taken outside “Shelter Lounge” showing that it had
M M
closed down.
N N
Regarding trade mark applications
O O
q. Materials regarding the registration of a trade mark similar to
P that used by “Shelter Italian Bar and Restaurant” (which, as P
pointed out in §25 i above, is slightly different from the
Q Q
Shelter Mark) in Macau in 2015;
R r. Materials regarding a failed trade mark application in respect R
of the Shelter Mark on 25 April 2013; and
S S
s. Materials regarding a pending trade mark application in
T T
respect of the Shelter Mark by the Appellant on 12 March
U
2014. U
V V
- 13 -
A A
B5. The Respondent’s position at the opposition stage
B B
C C
26. The Respondent denied having prior knowledge of the
D
Appellant’s Shelter Census Group Mark registered in Mainland China, and D
denied that the Application was made in bad faith.
E E
F 27. In this regard, the Respondent maintains that the trade mark F
registration system in Hong Kong serves to provide territorial support. In
G G
other words, the fact that the Shelter Census Group Mark was registered in
H H
Mainland China does not constitute any basis for opposing the Application
I
in Hong Kong. I
J J
28. The Respondent also denies that the Opposed Mark would be
K contrary to accepted principles of morality and/or likely to deceive the K
public. In this regard, it is the Respondent’s position that:
L L
a. There was no evidence from the Appellant that the Appellant
M M
has obtained any goodwill in respect of the Shelter Census
N Group Mark in Hong Kong; N
b. The Opposed Mark is completely different from the Shelter
O O
Census Group Mark, whether visually, phonetically or
P conceptually; P
Q c. The services registered under the Shelter Census Group Mark Q
were not identical or were different in nature to that to which
R R
the Opposed Mark relates; and
S d. The fact that the Shelter Census Group Mark was registered S
only in Mainland China shows that the Appellant’s services
T T
are intended for customers in Mainland PRC. On the other
U U
V V
- 14 -
A A
hand, the Application was made in Hong Kong, a different
B B
market;
C and by reason of points a to d above, there can be no likelihood of C
confusion arising from the use of the Opposed Mark.
D D
E E
B6. The Respondent’s position with respect to the Summons
F F
G 29. The Respondent opposes the appeal. The Respondent also G
opposes the Summons and filed evidence, namely the Affirmation of Lui
H H
Hing Yip (the manager of the Respondent), in opposition. For the purposes
I of the Summons, it suffices to set out that: I
a. It is the Respondent’s position that as the Appellant only
J J
pleaded the Shelter Census Group Mark but not the Shelter
K Mark in its Statement of Grounds at the opposition stage (see K
§21 above), the Appellant was and is not entitled to rely on
L L
evidence which is irrelevant to the Shelter Census Group
M M
Mark;
N b. The further evidence which the Appellant seeks leave to file N
relates to the Shelter Mark but not the Shelter Census Group
O O
Mark and the Appellant is not entitled to rely on such further
P evidence; P
c. The further evidence to support the goodwill and reputation
Q Q
acquired came after the “Shelter Italian Bar and Restaurant”
R was opened and in any event it does not show that the R
Respondent had knowledge of the Appellant and/or the
S S
Shelter Mark prior to the Application;
T T
d. The Appellant made the conscious decision of not engaging
U legal representation at the opposition stage; and U
V V
- 15 -
A A
e. Whilst the Appellant relies on section 11(4)(b) of the
B B
Ordinance as one of the grounds, the further evidence which
C the Appellant seeks to adduce is irrelevant to this ground. C
D D
C. ISSUES FOR THIS COURT TO DETERMINE
E E
F 30. As noted above, the present Summons relates to the filing of F
further evidence in the appeal.
G G
H H
31. Notwithstanding this, the written submissions lodged by the
I Appellant, under the heading “Details of the Applications”, asked the I
Court to give leave to amend the Notice of Opposition pursuant to Practice
J J
Direction 22.1. In the written submissions of the Appellant, the Appellant
K also asked this Court to reach the conclusion that: K
a. Leave be granted to the Appellant to file further evidence;
L L
b. Leave be granted to amend the Notice of Opposition to
M M
include section 12(5)(b) of the Ordinance as a ground for
N opposition; N
c. The Registrar be directed to refuse the registration of the
O O
Opposed Mark to which the Application relates; and
P P
d. The costs of and occasioned by the appeal and of the
Q opposition proceedings be paid to the Appellant, to be taxed if Q
not agreed.
R R
S S
32. In this regard, the Notice of Motion of the Appellant states
T
that “[i]nsofar as it is required, the [Appellant] will seek leave to amend T
U U
V V
- 16 -
A A
the Notice of Opposition to properly include section 12(5)(b) of the
B B
Ordinance as a ground for opposition”.
C C
D
33. This position of the Appellant was repeated in Choi’s 2 nd D
Affirmation. Choi’s 2 Affirmation also states that “[i]n the event leave is
nd
E E
granted [to the Appellant] to file further evidence”, the Appellant would
F seek leave to amend the Notice of Opposition as well as the Notice of F
Motion in order to “put “non-use” in issue before the Court”, (in other
G G
words, to address the issue that the Respondent’s “Shelter Lounge” closed
H down in 2016 although there was evidence from the Respondent that it was H
planning to open another lounge under the Opposed Mark).
I I
J J
34. Such position was maintained in the Appellant’s oral
K submissions at the hearing with the Appellant asking for leave from the K
Court to amend the Notice of Opposition.
L L
M M
35. In this regard, it was pointed out by the Respondent that no
N
summons has ever been taking out in respect of an application to amend the N
Notice of Opposition, nor has the Appellant alerted either the Respondent
O O
or the Court in respect of the exact terms of any intended amendments.
P P
36. Having considered both parties’ oral and written submissions,
Q Q
the Court agrees with the Respondent that without any formal application
R (accompanied by evidence in support) being made, the Court is not in a R
position to deal properly with any application regarding the amendment of
S S
the Notice of Opposition.
T T
U U
V V
- 17 -
A A
37. In the circumstances, this decision deals only with the
B B
Summons relating to the filing of further evidence in the appeal.
C C
D
D. RELEVANT LEGAL PRINCIPLES D
E E
D1. The Court’s approach in relation to an appeal from the Registrar
F F
G 38. For the purpose of determining the Summons (that is, whether G
and what further evidence should be placed before the court hearing the
H H
substantive appeal), it is relevant for the Court first to bear in mind the
I approach which the court hearing the substantive appeal should take as it I
has a bearing on the Court’s evaluation of the potential significance of the
J J
further evidence to be adduced.
K K
L 39. Order 55, rule 3(1) of the Rules of the High Court (Cap. 4A) L
(the “RHC”) sets out that an appeal to the Court of First Instance from the
M M
Registrar shall be by way of rehearing.
N N
O
40. In this regard, the case of Vita Green Health Products Co Ltd O
v Vitasoy International Holdings Ltd (unrep, HCMP 593/2014, 7 January
P P
2015) sets out the relevant legal principles with regard to the Court’s
Q approach in relation to an appeal from the Registrar at §§38 to 42, which Q
are set out as follows:
R R
“38. Section 84(1) of the Ordinance provides that an appeal lies
to the court from any decision or order of the Registrar under
S the Ordinance. Section 85 goes on to provide that the court S
may, for the purpose of determining any question in the exercise
T
of its original or appellate jurisdiction under the Ordinance, T
make any order or exercise any other power which the Registrar
U U
V V
- 18 -
A A
could have made or exercised for the purpose of determining
B that question. B
C 39. An appeal from the Registrar to the Court of First Instance is C
a rehearing, not a review. Nevertheless, the court is not
exercising a function as though it were a first instance court
D deciding on registration by reference to whatever might be the D
factual circumstances pertaining as at the date of the hearing of
E the motion by which the appeal is brought: see Lion Capital LLP E
v Registrar of Trade Mark [2011] 1 HKLRD 272 at paragraphs
21 and 25, per Deputy High Court Judge Coleman SC.
F F
40. The following guidance was given by Rogers VP in Re
G NAKED [2010] 1 HKLRD 382 at paragraph 22 in relation to the G
approach which the court should adopt in an appeal from a
decision of the Registrar:
H H
“In my view, the correct approach is that the Registrar’s opinion
I I
has to be fully and carefully considered. The Registrar has very
particular experience. Any departure from the way in which the
J Registrar exercised his discretion has to be made upon a sound J
basis after giving full and most careful consideration to the
Registrar’s views and reasons. The exercise of discretion by the
K K
Registrar should not be overruled simply because the court itself
might have come to a different conclusion. Essentially,
L therefore, a similar approach should be taken to the exercise of L
discretion by the Registrar as by a judge.”
M M
41. This reflects the current English approach regarding an
appeal from a decision of the registrar to the Chancery Division
N of the High Court or to an “appointed person” (usually drawn N
from a small panel of Queen’s Counsel practising in the
O Chancery Division and having special experience of trade mark O
law) under sections 76 and 77 of the Trade Marks Act 1994. In
Reef Trade Mark [2003] RPC 5 at paragraph 28, Robert Walker
P LJ (as he then was) stated as follows: P
Q “… the hearing officer had to make what he himself referred to Q
as a multi-factorial comparison, evaluating similarity of marks,
similarity of goods and other factors in order to reach
R R
conclusions about likelihood of confusion and the outcome of a
notional passing-off claim. It is not suggested that he was not
S experienced in this field, and there is nothing in the Civil S
Procedure Rules to diminish the degree of respect which has
traditionally been shown to a hearing officer’s specialised
T T
experience… On the other hand the hearing officer did not hear
any oral evidence. In such circumstances an appellate court
U should in my view show a real reluctance, but not the highest U
V V
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A A
degree of reluctance, to interfere in the absence of a distinct and
B material error of principle.” B
C 42. In summary, the court should be slow to reverse the decision C
of an experienced registrar on a question which consists largely
of a value judgment, but interference may be justified where, for
D example, the registrar erred in principle, took into consideration D
matters which he ought not to have considered, or omitted to
E take into consideration matters which he ought to have been E
considered: see Lion Capital LLP v Registrar of Trade Mark
[2011] 1 HKLRD 272 at paragraphs 20, 21 and 24, per Deputy
F High Court Judge Coleman SC.” F
G G
41. In summary, the Court bears in mind that whilst the appeal is a
H H
rehearing and not a review, the court hearing the substantive appeal is not
I exercising a function as though it were a first instance court deciding on I
registration. Generally speaking, the court hearing the substantive appeal
J J
should be slow to reverse the decision of the registrar, who has very
K particular experience, on a question which consists largely of a value K
judgment. Rather, the court’s role in the appeal is to look into the original
L L
decision to see if there are material errors of principle such that it should
M intervene. M
N N
D2. Granting leave to adduce further evidence in an appeal
O O
P P
42. For an appeal against the decision of the registrar, section 85
Q of the Ordinance provides as follows: Q
R R
“The court may, for the purpose of determining any question in
the exercise of its original or appellate jurisdiction under this
S S
Ordinance, make any order or exercise any other power which
the Registrar could have made or exercised for the purpose of
T determining that question.” T
U U
V V
- 20 -
A A
43. In terms of the procedures for the appeal, Order 55, rule 7(2)
B B
of the RHC provides for the court’s power to receive further evidence on a
C question of fact, and the evidence may be given in such manner as the court C
may direct either by oral examination in court, by affidavit, by deposition
D D
taken before an examiner or in some other manner.
E E
F 44. In the case of Re CSS Jewellery Co Ltd [2010] 1 HKC 563, A F
Cheung J (as he then was) took the view at §90 that when determining
G G
whether to admit further evidence in appeals from the Registrar:
H H
“I agree that in this regard, the Ladd v Marshall conditions are
I I
not applicable in an appeal from the Registrar to the Court of
Instance. On the other hand, one cannot assume that leave to
J adduce further evidence is to be had for the asking.” J
K K
45. Furthermore, given the nature of an appeal as explained in
L §§39 to 41 above, an appellant does not have an absolute right to adduce L
new evidence. In this regard, Au-Yeung J had set out the relevant
M M
principles in the case of Gemology Headquarters International, LLC v
N Gemological Institute of America, Inc (unrep, HCMP 1456/2014, 15 July N
2014) at §§3 to 4 as follows:
O O
P P
“3. The principles for granting leave to adduce further
evidence have been set out in the case of Hunt-Wesson Inc’s
Q Trade Mark Application [1996] RPC 233 at 242 (the “Swiss Q
Miss” case) decided by Laddie J. In summary, the following
factors are relevant to the exercise of the court’s discretion:
R R
(a) Whether the evidence could have been filed earlier and, if so,
S S
how much earlier.
T T
(b) If it could have been, what explanation for the late filing has
been offered to explain the delay.
U U
V V
- 21 -
A A
B (c) The nature of the mark. B
C (d) The nature of the objections to it. C
D (e) The potential significance of the new evidence. D
E (f) Whether or not the other side will be significantly prejudiced E
by the admission of the evidence in a way which cannot be
compensated, eg by an order for costs.
F F
4. Further, in Dualit Ltd v Rowlett Catering Appliances Ltd
G G
[1999] FSR 865, by the same learned Judge, it has been said
that the onus was on the applicant to justify the exercise of the
H court’s discretion in its favour, and merely showing the evidence H
sought to be introduced was relevant is not enough. At page
870 of the decision, it is stated that thus:
I I
“… it is not enough simply to allow in any evidence which can be
J J
argued to be relevant and in effect to allow in any evidence
which is relevant. If such a low hurdle is imposed, other
K applicants and opponents will no doubt look at the decision K
adverse to them in the Registry, redesign their evidence and start
again on appeal. But proceedings before the Registry are not a
L dry run to test out the evidence to see which parts can be L
criticised so that the evidence can then be perfected for the
M purpose of the proper run before the High Court. It is important M
for parties to realise that the function of the Registry is to
examine applications and to consider oppositions, and that they
N must put before the Registry the material which is to be relied N
upon in support of their cases.
O O
In my view, it is just as important that it is brought home to
litigants that they must put the best evidence available to them
P P
before the Registry as it is to ensure that the appeal is a fair
resolution of the dispute between the parties. It appears to me,
Q therefore, that it is still necessary for the court to consider the Q
issue of how important the evidence is, whether it could have
been put in earlier and why it was not and the weight that
R R
evidence is likely to have at the appeal.”
S S
46. At §18 of Gemology Headquarters International, Au-Yeung
T T
J further observed that “an error of judgment on the part of the appellant in
U U
V V
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A A
deciding what evidence to put before the Registrar... is not a ground for
B B
seeking leave to adduce fresh evidence on appeal”.
C C
D
E. DISCUSSION D
E E
E1. Explanation offered by the Appellant for the late filing of the evidence
F F
G 47. With reference to the factors summarised by Au-Yeung J in G
Gemology Headquarters International, it is clear that the evidence now put
H H
forward by the Appellant, save in respect of materials which post-dated the
I hearing before the Registrar, could have been put forward before the I
Registrar.
J J
K K
48. In this regard, the main reason provided by the Appellant for
L the late filing of the evidence is the purported incompetence of Mr Pang L
who handled the matter at the opposition stage.
M M
N N
49. The Court notes that Counsel for the Appellant in his oral
O
submissions did mention that Choi Yiu Ying (“Mr Choi”), the shareholder O
and director of the Appellant and the deponent of Choi’s 1 Affirmation
st
P P
and Choi’s 2nd Affirmation, took Mr Pang to be a ‘trade mark attorney’ and
Q referred to §48 of Choi’s 1st Affirmation as regards the trust placed by him Q
in Mr Pang and the deference given by him to Mr Pang’s advice. Further,
R R
as noted in §24 above, the Appellant’s submission to the Court was that the
S Appellant was under the impression that Mr Pang was a legal counsel who S
had the competency in opposing the Application on behalf of the
T T
Appellant.
U U
V V
- 23 -
A A
B B
50. However, such overall submission appears to be contradicted
C by the evidence, (namely, Choi’s 1st Affirmation), put forward by the C
Appellant in support of the Summons.
D D
E E
51. The Appellant sets out in §51 of Choi’s 1st Affirmation that:
F F
G
“I was taken by surprise that there was a competing application G
by Shelter Lounge…Mr. Pang then said that in light of this
competing application, we should oppose the Application first,
H rather than pursuing with our own application filed by Profit H
Ocean. I asked Mr. Pang if we should seek further legal advice
from a solicitor or counsel for the opposition proceedings. Mr.
I I
Pang said that we had a very good case given our established
goodwill and use of our Shelter mark and that he could handle
J the case himself…and would liaise with my staff where J
necessary and I had nothing to worry about. I trusted Mr Pang
at that time.” (Emphasis added)
K K
L 52. The Appellant further sets out in §54 of Choi’s 1st Affirmation L
that:
M M
N N
“…Mr. Pang would reply saying everything was under control
and the proceedings were pending at the Trade Mark Registry.
O Finally, he said that the actual hearing of the Opposition O
proceedings would be held on 8 June 2016. I asked him again if
P
we should engage solicitors/counsel to appear at the hearing P
and make representations on our behalf as Shelter Lounge was
legally represented. He reassured me that as “an attorney”, he
Q knew what to do in our best interests. Much to my regret, I Q
misplaced my trust in him once again.” (Emphasis added)
R R
53. Whilst this Court recognizes that both the Notice of
S S
Opposition and Pang’s Statutory Declaration contain reference to Mr Pang
T as “an attorney”, given the evidence put forward by the Appellant as set T
out in §§51 and 52 above and even in the case where the Appellant was
U U
V V
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A A
misled into thinking that Mr Pang had the competency in opposing the
B B
Application, by reason of the Appellant’s evidence the Court is not
C convinced that the Appellant was misled into thinking that Mr Pang was C
legally qualified.
D D
E E
54. In other words, whilst it might be unfortunate on the part of
F the Appellant in engaging Mr Pang (who worked for Times Intellectual F
Property (Hong Kong) Limited which, according to §48 of Choi’s 1 st
G G
Affirmation, was a company “offering trademark application service”),
H the Court considers the evidence put forward by the Appellant as set out in H
§§51 and 52 above reflects that the Appellant made the decision not to
I I
engage legal representation at the opposition stage.
J J
K 55. In any event and even assuming that the Court is incorrect in K
reaching the conclusion that the Appellant was aware that Mr Pang was not
L L
in fact legally qualified, the Court is similarly not satisfied that
M “incompetence of counsel” is, in the present circumstances, an adequate M
explanation in itself justifying the late filing of evidence.
N N
O O
56. It appears to the Court that the present scenario falls fairly and
P squarely within the situation contemplated in §18 of Gemology P
Headquarters International, namely that there was an error of judgment on
Q Q
the part of the appellant in deciding what evidence to put before the
R Registrar. R
S S
57. The Respondent put forward the Court of Appeal decision of
T T
Chan Koon Nam v Ng Man Sum (unrep, CACV 281/2011, 5 March 2013)
U
as an authority suggesting that the failure of a party to adduce evidence U
V V
- 25 -
A A
relying on the advice of the legal advisors could not constitute a special
B B
ground for such evidence to be adduced. The Court of Appeal in that case
C did not see why the incompetence of lawyers should be a factor C
distinguishing that case from the case of Dr Kwong Kwok Hay v Medical
D D
Council of Hong Kong (No 2) [2007] 4 HKC 446, another Court of Appeal
E decision in which the court refused to give leave to admit fresh evidence in E
the appeal.
F F
G G
58. Relevantly, the Court notes that Dr Kwong Kwok Hay is a
H decision based on the principles set out in Ladd v Marshall, which in the H
context of an appeal from the Registrar to the Court of First Instance (by
I I
way of a rehearing) are not applicable. Indeed, the Court also bears in mind
J that Order 55, rule 7(2) of the RHC provides the power for the court in an J
appeal to receive further evidence on questions of fact.
K K
L L
59. However, the Court has not lost sight of the fact that even in
M such a rehearing, the court is not to exercise a function as though it were a M
first instance court and that even given the wide power provided to the
N N
court, a party late in adducing evidence cannot assume that leave to adduce
O further evidence is simply ‘to be had for the asking’. O
P P
60. Striking an overall balance and bearing in mind both the
Q Q
authorities on this subject and those relevant factors set out in §§ 58 and 59
R above, this Court does not consider there to be circumstances in the present R
case justifying the exercise of discretion to admit the further evidence
S S
purely by reason of any alleged incompetence of Mr Pang.
T T
U U
V V
- 26 -
A A
61. Furthermore, just as the Court of Appeal in Chan Koon Nam
B B
expressed scepticism (at §38) with regard to the defendant’s allegation that
C he failed to disclose the relevant documents as he was not advised by his C
lawyer to do so, in reaching its conclusion, the Court also has scepticism
D D
with regard to the level of reliance which Mr Choi said he allegedly placed
E on Mr Pang. E
F F
62. Mr Choi is a qualified civil engineer (as stated in §3 of Choi's
G G
1st Affirmation) who established Shelter Bar in 2002 and later became the
H Chief Executive Officer of the “Shelter Census Group” in 2006. H
I I
63. As the Court of Appeal put it in §38 of Chan Koon Nam when
J J
stating that it does not think “it would require a lot of experience for a
K litigant in the defendant’s position to know the documents relevant to K
support his case and which he should provide to his lawyers”, the Court
L L
similarly does not think that Mr Choi was not in a position to appreciate the
M possibility of the potential relevance of at least some of the documents M
which the Appellant now seeks to adduce as further evidence, especially
N N
when Mr Choi himself admitted at §49 of Choi’s 1st Affirmation that Mr
O Pang had, as far as he could remember, once asked for information such as O
the name of the company which the Appellant would like to use to hold the
P P
trademark and details of the design of the Shelter Mark.
Q Q
R 64. As it was the Appellant’s main point of contention at the R
opposition stage (and indeed at the appeal stage too) that the Appellant has
S S
obtained goodwill by way of the extensive use of the Shelter Mark from
T 2002, the Court is sceptical of the fact that no one within the Appellant T
(either Mr Choi or the staff entrusted by Mr Choi to handle the relevant
U U
V V
- 27 -
A A
matters) ever gave thought as to whether to provide documents regarding
B B
the Shelter Bar at the Henry House Premises such as its menus or photo
C showing the lightbox design (see §25a and b above) to Mr Pang to be used C
for the purposes of the opposition.
D D
E E
65. Notably, according to Mr Choi, Mr Pang had also told him
F that “we had a very good case given our established goodwill and use of F
our Shelter mark” (see §51 of Choi’s 1st Affirmation). The Court can
G G
therefore infer that Mr Choi was indeed aware that whether there was
H established goodwill and use of the Shelter Mark would be matters relevant H
to the opposition of the Application.
I I
J J
66. These observations of the Court also go to addressing the
K point put forward by the Appellant that the Appellant had satisfied the K
assessment which the Court of Appeal undertook in §42 of Chan Koon
L L
Nam, namely that “[a]pplying an objective standard”, it can be said that
M the Appellant “had exercised “reasonable diligence”” regarding the M
“production of relevant documents” to support its case. For the reasons
N N
explained in §§61 to 65 above, the Court disagrees.
O O
P 67. In summary, the Court is not satisfied that any reliance on the P
part of the Appellant on Mr Pang and/or any incompetence on the part of
Q Q
Mr Pang constitute circumstances in themselves which justify the Court
R exercising its discretion in favour of the Appellant. R
S S
T T
U U
V V
- 28 -
A A
E2. Potential significance of the new evidence
B B
C C
68. The Court now turns to evaluating the potential significance
D
of the new evidence which the Appellant seeks to file, having regard to the D
Opposed Mark and the other relevant marks in question and also the nature
E E
of the Appellant’s objections.
F F
69. In terms of the nature of the Appellant’s objections, based on
G G
the Notice of Motion, the Appellant relies on three grounds under the
H H
Ordinance, being section 11(4)(b) (namely, the Opposed Mark is likely to
I
deceive the public), section 11(5)(b) (namely, the Application was made in I
bad faith) and section 12(5)(b) (namely, a trade mark shall not be
J J
registered by virtue of an earlier right).
K K
70. However, the Statement of Grounds enclosed to the Notice of
L L
Opposition, as it currently stands (i.e. without any amendments being
M M
made thereto), contains no reference to the ground under section 12(5)(b).
N
The Notice of Opposition also contains an additional ground under section N
11(4)(a) of the Ordinance (namely, the Opposed Mark is contrary to
O O
accepted principles of morality), which ground the Court understands the
P Appellant is no longer pursuing. P
Q Q
71. In this regard, rule 16 of the Trade Marks Rules (Cap. 559A)
R provides for the filing of a notice of opposition including a statement of the R
grounds of opposition and in the context of an opposition to registration,
S S
such statement of grounds constitutes the pleadings which identify and
T T
define the issues between the parties and any amendment of which requires
U
an exercise of discretion by the Registrar. U
V V
- 29 -
A A
B B
72. For the sake of completeness, Choi’s 2 nd
Affirmation does
C refer to intended amendments to both the Notice of Opposition and the C
Notice of Motion to address the issue of “non-use”, (namely, the fact that
D D
the Respondent’s “Shelter Lounge” has closed down in 2016), if the Court
E finds in favour of the Appellant in terms of the Summons. E
F F
73. However, for the purpose of the Summons and as there is no
G G
application by way of summons before the Court which relates to the
H amendment of the Notice of Opposition and/or the Notice of Motion, the H
Court will only evaluate the significance of the new evidence based on the
I I
two grounds set out in the Notice of Opposition which are still pursued by
J the Appellant. J
K K
74. As regards the various marks with which the present case is
L L
concerned, the Notice of Opposition makes reference only to the Shelter
M Census Group Mark, (but not the Shelter Mark), and its usage since August M
2011.
N N
O O
75. Pang’s Statutory Declaration refers to how the Appellant
P “has used the trade mark “Shelter” since 2002” and the Respondent P
“should, in no doubt, has the knowledge of [the Appellant’s] extensive use
Q Q
of the trade mark “Shelter” in Hong Kong”. However, essentially only 6
R pages of newspaper clippings of articles in 2002, (i.e. when Shelter first R
opened), were exhibited.
S S
T T
76. It is not disputed that in order to determine bad faith, (i.e. the
U absolute ground provided under section 11(5)(b) of the Ordinance), the U
V V
- 30 -
A A
court must ascertain what the Respondent knew about the matters in
B B
question and then decide whether the knowledge of the Respondent was
C such that the Application would be regarded as made in bad faith by C
persons adopting the proper standards.
D D
E E
77. In making an assessment of the Respondent’s knowledge,
F (and a determination of the issue of bad faith), therefore, the relevant point F
in time must be the date of the Application, namely 23 April 2013.
G G
H H
78. However, and putting aside for the time being the issue that
I
the Shelter Mark was not pleaded at all in the Notice of Opposition, the I
Court has doubts concerning the relevance or significance of the further
J J
evidence which the Appellant seeks to adduce and how it serves to show or
K suggest the knowledge of the Respondent. K
L L
79. Amongst the new evidence which the Appellant seeks to
M adduce, this Court takes the view that all materials relevant to “Shelter M
N
Italian Bar and Restaurant” located at the Hysan Place Premises, which N
was only opened after the Application was made, are not and should not be
O O
relevant to the issue of the Respondent’s knowledge (and hence the
P determination of the issue of bad faith). P
Q Q
80. As regards the Shelter Bar at the Henry House Premises
R which ceased operation sometime in 2013, amongst the further evidence R
exhibited to Choi’s 1st Affirmation, only the menus of Shelter Bar from
S S
2002 to 2013 and a photo showing the lightbox design of Shelter Bar are
T T
particularly relevant. Apart from what was already exhibited to Pang’s
U
Statutory Declaration, the Appellant does not seek to adduce any further U
V V
- 31 -
A A
evidence, (for example, by way of newspaper or magazine articles), to
B B
support its contention that Shelter Bar has “obtained goodwill by way of
C the extensive use of the “trade mark “Shelter” in the area of food and C
beverage restaurant area”.
D D
E E
81. In the Court’s opinion, both the menus and the lightbox at
F Henry House are things which only patrons of Shelter Bar at the Henry F
House Premises or visitors of Henry House would come across
G G
respectively. It does not necessarily follow that these items could serve to
H show that the Respondent would have knowledge of the existence of H
Shelter Bar, especially in the case where it was and is recognized both by
I I
the Registrar, (making reference to the case of Royal Enfield Trade Marks
J [2002] R.P.C. 24 at §31), and the Court that bad faith is a serious allegation J
which should not be lightly made and should not be upheld unless it is
K K
distinctively proved and this will rarely be possible by a process of
L inference. L
M M
82. The Court will make the same observations as set out in §81
N N
with regard to the financial statements of the companies which operated
O Shelter Bar from 2002 to 2013. In any event, this Court notes that the O
Registrar has recognized in §48 of the Statement of Reasons for Decision
P P
that “it appears very likely that the [Appellant’s] business is ongoing at all
Q material times up until 2013” and that “[c]hances, and the only chances, Q
are the [Appellant’s] business is profitable, given the apparent continuity
R R
of the business” although “no relevant turnover figures have been
S provided”. It would appear to the Court that the Appellant is now seeking S
to adduce the financial statements to address this comment previously
T T
made by the Registrar.
U U
V V
- 32 -
A A
B B
83. There was additionally one article entitled “Street Kings”
C mentioning the Shelter Census Group, (and it was, notably, the only piece C
of evidence which the Appellant seeks to produce with regard to the
D D
“Shelter Census Group”), which, according to Choi’s 1 Affirmation, was
st
E published back in August 2008, namely 4.5 years before the Application E
was made. In the Court’s opinion, this single article provides little, if any,
F F
assistance to the court hearing the substantive appeal in terms of
G determining the Respondent’s knowledge as at the time when making the G
H
Application. H
I I
84. As regards the correspondence with various developers from
J 2014 to 2017 regarding various business proposals or projects, whilst it J
may potentially serve to show that the Appellant has an established
K K
business by 2014 to 2017:
L L
a. Such correspondence post-dated the Application;
M b. Notably, such correspondence mostly came from staff of M
“Shelter Group”. Whilst the relationship between “Shelter
N N
Group” and “Shelter Census Group” has not been
O particularly or clearly explained to the Court, the signature O
blocks of staff of “Shelter Group” did not contain the Shelter
P P
Census Mark but a mark which was different from both the
Q Shelter Census Mark and the Shelter Mark. In any event, the Q
Court would point out at this juncture that to date, the
R R
Appellant does not seek to adduce any evidence which relates
S S
to the usage of the Shelter Census Group Mark, the only mark
T
which was referred to in the Notice of Opposition; and T
U U
V V
- 33 -
A A
c. Most importantly, the Court also notes from the signature
B B
blocks of staff of “Shelter Group” that there were other
C businesses (with names which do not bear the word “Shelter” C
at all) under “Shelter Group” and if anything, in this Court’s
D D
view the correspondence serves more to show that “Shelter
E Group” had an established business by 2014 to 2017, but not E
what goodwill Shelter Bar had established by the date of the
F F
Application.
G G
H 85. As for the other evidence which is enclosed to Choi’s 1st H
Affirmation and which the Appellant seeks to adduce but is not specifically
I I
mentioned above by the Court, for the avoidance of doubt, the Court is
J similarly of the view that it has no or little significance as to the issue of the J
Respondent’s knowledge.
K K
L L
86. The Court now turns to the other ground, section 11(4)(b) of the
M Ordinance, (namely, the Opposed Mark is likely to deceive the public), set M
out in the Notice of Opposition. The Court notes that the Appellant’s case
N N
in relation to section 11(4)(b) of the Ordinance has the following
O particulars / aspects: O
a. In Pang’s Statutory Declaration, it was essentially stated that
P P
the Opposed Mark and the Shelter Mark are “similar”. It
Q appears to the Court that the gist of the Appellant’s complaint Q
is that the “distinctive element” of the Opposed Mark is
R R
“Shelter”, which is identical to the Shelter Mark “by way of
S
meaning and pronunciation” and hence the Application is to S
T
“share and steal” the goodwill arising from “the name of T
“Shelter”;
U U
V V
- 34 -
A A
b. According to the Appellant’s written submissions before the
B B
Court, it appears that the Appellant is suggesting that because
C the Appellant’s “Shelter” business, (it is not clear whether the C
Appellant is referring to the Shelter Bar and/or “Shelter
D D
Italian Bar and Restaurant” which was only opened after the
E Application was made), and the Respondent’s “Shelter E
Lounge” are both in the food and beverage industry and that
F F
they both have the word “Shelter” in their names, then it is
G “inevitable” for the public to be “confused”. The Appellant G
therefore seems to suggest that as long as a trade mark
H H
registration relates to a restaurant in Hong Kong Island,
I (when the Appellant’s business is also in Hong Kong Island), I
and the restaurant’s name includes the word “Shelter”, then
J J
an opposition on the part of the Appellant ought to succeed on
K the ground of section 11(4)(b); and K
L c. Amongst the new evidence which the Appellant seeks to L
adduce, there is “clear evidence that the public was indeed
M M
confused”.
N N
O
87. It is the Respondent’s position that the Appellant’s case under O
section 11(4)(b) of the Ordinance is built on a false premise and whilst the
P P
Appellant has provided the Court with its written submissions in reply to
Q the Respondent’s written submissions, notably, the Appellant has not Q
responded to this issue nor has it provided the Court with authorities which
R R
support its contention as set out in §86 a and b above.
S S
T
88. Furthermore, in elaborating on the significance of the further T
evidence to be adduced, the Court notes that the Appellant makes reference
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A A
to both section 7(1) and section 12(3)(c) of the Ordinance which concern
B B
causing confusion on the part of the public. However, it is noted that
C neither the Notice of Opposition nor the Notice of Motion has pleaded the C
relative ground under section 12(3) of the Ordinance. It is also noted by the
D D
Court that “deception” and “confusion” appear to be two distinct concepts
E under the Ordinance, with deceiving the public being an absolute ground E
under section 11(4)(b) of the Ordinance and causing confusion on the part
F F
of the public being a relative ground under section 12(3) of the Ordinance.
G G
H 89. In other words, bearing mind the substance of the Appellant’s H
case under section 11(4)(b) of the Ordinance, the Court is not satisfied as to
I I
how any of the further evidence which the Appellant now seeks to adduce
J will show deception on the part of the Respondent and assist those aspects J
of the Appellant’s case, (as summarised by the Court in §86 above), under
K K
section 11(4)(b) of the Ordinance.
L L
M 90. For the sake of completeness, the Appellant in particular M
highlights for the Court that such evidence, (as set out in §25 l and m
N N
above), which goes to the “actual confusion by the public” between the
O Appellant’s mark and the Opposed Mark “is crucial in supporting the O
[Appellant’s] grounds of opposition based on the likelihood of confusion,
P P
deception, bad faith as well as passing off”. The Court disagrees.
Q Q
R 91. Putting aside the issue that as matters currently stand, the R
pleadings at the opposition stage and at the appeal stage do not cover either
S S
issues concerning “likelihood of confusion” or “passing off”, the Court
T queries the weight which should be given to such evidence in showing T
confusion, deception, bad faith or passing off. As mentioned in §25 l
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A A
above, the Openrice.com review of “Shelter Italian Bar and Restaurant”
B B
in October 2014 was prepared by someone who was invited by “Shelter
C Group” to visit “Shelter Italian Bar and Restaurant”. As the reviewer C
attended the “Shelter Italian Bar and Restaurant” pursuant to an invitation
D D
of the “Shelter Group”, any suggestion on the part of the reviewer that he
E or she was confused appears to be rather self-serving, especially bearing in E
mind that when the review was uploaded, the Appellant had already
F F
opposed the Application.
G G
H 92. The evidence set out in §25 m, namely the online article H
posted on Sassyhongkong.com regarding a complimentary tea set
I I
giveaway, suffers the same issue. Whilst “Shelter Italian Bar &
J Restaurant” was wrongly labelled as “Shelter Lounge” in the heading of J
the article, the giveaway appears to be some form of collaboration between
K K
Sassyhongkong.com and “Shelter Italian Bar & Restaurant” and hence,
L readers who wish to enter into the giveaway were asked to click into L
another Sassyhongkong.com hyperlink. In these circumstances, the Court
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queries whether this article could serve as crucial evidence in establishing
N “actual confusion by the public”. N
O O
E3. Whether the Respondent would be significantly prejudiced
P P
Q Q
93. Even though the Respondent’s evidence in opposition to the
R Summons has not specifically touched on the issue of prejudice, it is not R
difficult for the Court to foresee how prejudice might be caused to the
S S
Respondent if this Court were to find in favour of the Appellant in respect
T of the Summons. T
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A A
94. Relevantly, the Respondent may have to file new evidence in
B B
response to the further evidence adduced by the Appellant, (and indeed the
C Respondent has reserved its right to do so in its evidence filed in opposition C
of the Summons). The Appellant submits that because the Respondent will
D D
have the chance to file evidence in response to its further evidence, no
E prejudice would arise. The Court does not see the force of the Appellant’s E
argument, as the filing of further evidence would not only delay the
F F
hearing of the substantive appeal but also involve the incurrence of further
G costs. G
H H
95. The Court agrees with Au-Yeung J at §14 of Gemology
I I
Headquarters International that to allow a party who loses the opposition
J stage to redesign its evidence having regard to the adverse decision against J
it and adduce new evidence on appeal would be violating the principle set
K K
out in the case of Dualit and would render proceedings before the Registrar
L a dry run. The fact that the Appellant now seeks to adduce financial L
statements of the companies operating Shelter Bar, (see §82 above), to
M M
address the Registrar’s comment made in the Statement of Reasons for
N Decision is an example. N
O O
96. The Appellant also contends in its written submissions that
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most of the evidence was placed before the Registrar and the remainder is
Q evidence which directly relates to the opposition as to which no prejudice Q
arises or should arise. The Court does not agree as it is simply not correct
R R
that most of the evidence was placed before the Registrar. Relevantly, the
S Court notes that approximately one lever arch file of documents was S
placed before the Registrar and the Appellant is now seeking to adduce
T T
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A A
further evidence which amounts to three and a half lever arch files of
B B
documents.
C C
D
97. As regards the contention on the part of the Appellant that D
there is no prejudice which could not be compensated by an order for costs,
E E
the Court agrees with the observation made by Au-Yeung J in §20 of
F Gemology Headquarters International that the factor of whether or not F
there is prejudice which cannot be compensated for example by an order
G G
for costs does not mean to override the other relevant factors. In other
H words, a party seeking to adduce new evidence cannot simply “buy an H
opportunity” which is neither fair nor just, and would cause both delay and
I I
unnecessary costs to be incurred.
J J
K 98. Lastly, it appears to the Court that the fact that the K
Respondent’s “Shelter Lounge” has closed is also neither here nor there in
L L
terms of the issue of prejudice.
M M
N
F. ADDITIONAL EVIDENCE N
O O
99. During the course of the hearing the Court drew to the
P attention of those representing the Appellant that paragraph 60 of Choi’s P
1st Affirmation made reference to copies of photos being shown and
Q Q
produced to him, but the same were not exhibited. Subsequent to the
R hearing an additional affirmation on behalf of the Appellant was affirmed R
by Woo Choi Fong Celestine and leave to file the same was sought. The
S S
Court hereby grants leave so to file such affirmation and dispenses with
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service of the same.
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A A
G. CONCLUSION
B B
C C
100. For the above reasons, the Appellant has not justified the
D
exercise of the Court’s discretion in favour of the Appellant, and the D
Summons is therefore dismissed.
E E
F 101. There is no reason why costs should not follow the event. The F
Court therefore makes a costs order nisi that the Appellant does pay the
G G
Respondent’s costs of and occasioned by the Summons, with such costs to
H H
be taxed if not agreed with certificate for counsel. The costs order nisi shall
I
become absolute in the absence of any application to vary the same within I
14 days as from the date of this decision.
J J
K 102. It remains for the Court to thank Counsel for their able K
assistance.
L L
M M
N N
O ( Brian Gilchrist ) O
Deputy High Court Judge
P P
Q Q
Mr Osmond Lam and Ms Jacqueline Ka Ki Chan, instructed by Tung, Ng,
R
Tse & Heung, for the Appellant R
Mr Anson Yu Yat Wong, instructed by Lau, Wong & Chan, for the
S
Respondent S
T T
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