深圳市景旺電子股份有限公司 v Kinwong LLC [2022] HKTMR 26

William Tse and Kristy K Y Wong acted for the applicant in 深圳市景旺電子股份有限公司 v Kinwong LLC [2022] HKTMR 26, a decision handed down by the Registrar of Trade Marks (“the Registrar”) on 18 August 2022.

This case concerns an opposition to the applicant’s registration of trade mark (“Subject Mark”) in respect of Class 9 goods brought by a former business partner of the applicant on the ground of, amongst other things, s11(5)(b) of the Trade Marks Ordinance (Cap 559).

At the crux of the opponent’s allegation of “bad faith” was whether the applicant had abandoned the Subject Mark, following a 3-day hearing, the Registrar held that the applicant had not abandoned the mark and that even if it had, it does not mean that the opponent would be at liberty to use the Subject Mark without first seeking consent from the applicant. Accordingly, the Registrar dismissed the s11(5)(b) ground of opposition.

The present case also raises the question as to the admissibility of a foreign judgment in hearings before the Registrar. It is well-established that a judgment and factual finding of another court or tribunal in earlier proceedings, whether civil or criminal, is inadmissible in subsequent proceedings, unless the party against whom the finding is sought to be deployed is bound by it by reason of an estoppel per rem judicatam.

Here, the opponent opposed the admissibility of a US judgment introduced by the applicant. The Registrar agreed with the applicant that since the latter did not seek to rely on the findings of the foreign judgment but only to rely on the evidence given therein, such evidence could be admissible in the present proceedings as hearsay evidence.

The Chinese decision can be found here.