TRADE MARKS ORDINANCE (CAP. 559)
APPLICATION FOR REVOCATION OF TRADE MARK NO.302728440AA
MARK:
CLASS: 30
APPLICANT: CHANG, MEI-HUA (張美華)
OWNER: CHANG RONG HOLDINGS LIMITED
STATEMENT OF REASONS FOR DECISION
1. On 30 May 2019, CHANG, MEI-HUA ( 張美華) (the “Applicant”) filed an application (the “Revocation Application”) to the Registrar of Trade Marks (the “Registrar”) to revoke the registration of the following trade mark (Trade Mark No. 302728440AA) in respect of the goods for which the mark is registered on the ground of non-use under section 52(2)(a) of the Trade Marks Ordinance (Cap. 559) (the “Ordinance”):
(the “Subject Mark”)
2. The registered owner of the Subject Mark is CHANG RONG HOLDINGS LIMITED (the “Registered Owner”). The actual date of registration of the Subject Mark is 5 May 2015.
3. The Subject Mark is registered in respect of the following goods in Class 30 (“Subject Goods”):
Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast,
- 1 - baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; tea-based beverages; fruit flavoured tea; fruit tea; herb tea; aromatic tea; black sugar ginger tea; instant powder for making tea; tea essences; tea extracts; dietetic foods, not medical purposes; confectionary and cookies spices; crackers; instant noodles; all included in Class 30.
4. A date for hearing the Revocation Application was fixed to take place before me on 17 February 2021. Both parties did not file any Form T12 (notice of attendance at hearing) within the prescribed period. They are treated as not intending to appear at the hearing under Rule 74(5) of the Trade Marks Rules Cap 559 sub leg (the “TM Rules”). By virtue of Rule 75(b)(i) of the TM Rules, I will proceed to decide on the Revocation Application without a hearing.
Relevant legal provisions
5. The relevant parts of section 52 of the Ordinance are set out below:
“(2) The registration of a trade mark may be revoked on any of the following grounds, namely –
(a) that the trade mark has not been genuinely used in Hong Kong by the owner or with his consent, in relation to the goods or services for which it is registered, for a continuous period of at least 3 years, and there are no valid reasons for non-use (such as import restrictions on, or other governmental requirements for, goods or services protected by the trade mark);
(8) For the purposes of subsection (2)(a), the 3-year period may begin at any time on or after the actual date on which particulars of the trade mark were entered in the register under section 47(1) (registration).”
Pleadings
6. According to the Statement of Case (“Statement of Case”) filed by the Applicant, the Applicant has caused TrademarkCN Co. Ltd., an intellectual property agency in Hong Kong to conduct investigations regarding the use of the Subject Mark in respect of the Subject Goods in Hong Kong, and contends that there has been no bona fide use of the Subject Mark on the Subject Goods in Hong Kong by the Registered Owner for a period of at least 3 years prior to 30 May 2019, and there are no valid reasons for such non-use. The Applicant claims that the registration of the Subject Mark
- 2 - should be revoked pursuant to section 52(2)(a) of the Ordinance.
7. The Registered Owner filed a Counter-statement (“Counter-statement”) on 28 November 2019 together with evidence of use. In the Counter-statement, the Registered Owner avers that the Subject Mark was first registered by MANYWINE LIMITED (“MANY WINE”) in Hong Kong, and was later transferred to the Registered Owner on 15 April 2019. Since 2015, the Subject Mark has been put into genuine use in respect of the Subject Goods in Hong Kong by MANYWINE and the Registered Owner and/or through its distributor, Canzone (HK) Company Limited (“Canzone”), and Subject Goods are distributed in physical retail stores in Hong Kong. Such use has continued up to the date of the Counter-statement.
Three-year period of non-use and the relevant time to consider
8. In the Form T6 filed together with the Statement of Case, the proposed effective date of revocation was stated to be 30 May 2019.
9. Under section 52(2)(a) of the Ordinance, the registration of a trade mark may be revoked if the trade mark has not been genuinely used in Hong Kong for a continuous period of at least three years. As it is the case of the Applicant that the registration of the Subject Mark should be revoked with effect from 30 May 2019, the relevant period that I have to consider is the three-year period beginning from 30 May 2016 and ending on 29 May 2019 (the “Relevant Period”).
10. The provision of section 52(5) of the Ordinance does not appear to apply in the present case, and in any event, the Applicant has not indicated that it seeks to rely on section 52(5).
Burden of proving use
11. Section 82(1) of the Ordinance provides that “if, in any civil proceedings under this Ordinance in which the owner of a registered trade mark is a party, a question arises as to the use to which the trade mark has been put, the burden of proving that use shall lie with the owner”. Accordingly, the burden of proving that the Subject Mark has been put to genuine use in Hong Kong in relation to the Subject Goods during the Relevant Period lies with the Registered Owner.
- 3 - Evidence in support of the Revocation Application
12. The Applicant’s evidence in support of the Revocation Application consists of a statutory declaration made by the Applicant on 27 May 2019 in Taiwan (“Applicant’s Declaration”) with exhibits marked 1 to 6.
13. The Applicant avers that an internet search is conducted on two internet search engines, namely Google and Yahoo! Hong Kong, on the name of the Registered Owner with no relevant search results available. A print-out of the said search results dated 15 May 2019 is produced at Exhibit 1.
14. The Applicant further used the words “CHANG RONG 黑金傳奇” and “MANY WINE 黑金傳奇” to conduct searches on the two search engines and avers that there is no result showing the Registered Owner or its predecessor is related to “黑金傳 奇”, i.e. the Subject Mark. A print-out of the said search results dated 15 May 2019 is produced at Exhibit 2. The Applicant avers that in the search result in Exhibit 2, a product with the name of the Subject Mark is located in the website of “ZSTORE”. The Registered Owner is not the product’s manufacturer/distributor in Hong Kong according to the product information on the website and there is no information relating to the Registered Owner and/or “MANY WINE” found. A print-out of the ZTORE website page dated 15 May 2019 showing the said product is produced at Exhibit 3.
15. The Applicant also conducted a search for the name of the Registered Owner and “MANYWINE” on the Hong Kong Trade Development Council’s website but no relevant information could be found. A print-out of the search results on the said website dated 15 May 2019 is produced at Exhibit 4.
16. The Applicant avers that a search for “黑金” on the website of PARKnSHOP supermarket (https://www.parknshop.com/en/) also shows no relevant result. A print- out of the search result on the said website dated 15 May 2019 is produced at Exhibit 5.
17. The Applicant avers that TrademarkCN Co. Ltd was appointed between 10 to 20 May 2019 to conduct field inquiries in several supermarket chain stores (including CR Vanguard, Wellcome, PARKnSHOP, Bonjour Cosmetics) in different locations, including Tsim Sha Tsui and Tai Po and no product relating to the Registered Owner is found. The Applicant further avers that in some stores, black sugar ginger tea
- 4 - products (黑糖薑母茶) showing the name of the Subject Mark were found but the manufacturer and/or distributor shown on those products is not the Registered Owner and/or its predecessor. Photos of the shops in which the Applicant’s agent visited and products bearing the Subject Mark are produced at Exhibit 6.
18. In the premises, the Applicant believes that the Subject Mark has not been genuinely used by the Registered Owner or with its consent for a continuous period of at least 3 years prior to the date of the filing of the Revocation Application.
The Registered Owner’s evidence of use
19. The Registered Owner’s evidence of use consists of a statutory declaration of Ng Chi Fai, the director of Canzone, declared on 28 November 2019 (“Ng’s Declaration”) with exhibits marked A to G.
20. Ng avers that the Registered Owner is a company incorporated in the British Virgin Islands. Canzone is incorporated in Hong Kong and is the Registered Owner’s distributor. A copy of the certificate of incorporation of the Registered Owner (with the Chinese name 榮記控股有限公司) in the British Virgin Islands dated 25 April 2017 and the business registration certificate of Canzone in Hong Kong for 18 March 2019 to 17 March 2020 are produced at Exhibit A. Copies of (i) a confirmation letter dated 24 September 2019 issued by the Registered Owner authorizing Canzone to distribute products bearing the name “黑金傳奇” in Hong Kong and Macau from May 2019 onwards; and (ii) a licence letter dated 1 January 2014 issued by MANYWINE authorizing Canzone to use the trade mark “黑金傳奇” under classes 30 and 32 are produced at Exhibit B.
21. Canzone also listed products bearing the Subject Mark on its website. A print-out of Canzone’s website dated 27 November 2019 showing black sugar ginger tea products (黑糖薑母茶) bearing the Subject Mark is produced at Exhibit C.
22. Ng avers that Subject Goods bearing the Subject Mark are sold in the shops of Lung Fung Group and Best Mart 360. The annual sales of the Subject Goods under the Subject Mark in Hong Kong from 2015 to the first 10 months of 2019 range from HK$400,000 to HK$2,000,000.1 Copies of invoices, statements and delivery notes issued by Canzone to Lung Fung Group, Ciao International Limited, SASA Cosmetics Co., Ltd and Videocom Technology (HK) Limited from November 2016
1 Paragraph 9 of Ng’s Declaration.
- 5 - to October 2019 are produced at Exhibit D. The invoices concern products including 黑糖薑母茶, 黑糖茶, 黑糖, Red Date & Longan Tea, Black Sugar Wax Gourd Tea, and 黑糖玫瑰四物飲 in the name of the Subject Mark. Photos of retail shops of Best Mart 360 and 龍豐藥粧 displaying 黑糖薑母茶 and 黑糖玫瑰四物茶 products bearing the Subject Mark are produced at Exhibit E.
23. Ng avers that the annual expenditure on promoting the Subject Goods bearing the Subject Mark in Hong Kong from 2015 to the first 10 months of 2019 range from HK$30,000 to HK$50,000. 2 Marketing activities include advertisements and promotional line-up with Best Mart 360 and the Hong Kong Professional Teachers’ Union. Photos of the activities with Best Mart 360 in 2018 and with the Hong Kong Professional Teachers’ Union (undated) are produced at Exhibit F, with 黑糖薑母 茶, 桂圓茶 and 黑糖玫瑰四物飲 products shown in the photos. Photos of promotion booths in 冬季美食節 and 秋日蟹節 in 2015 are produced at Exhibit G, with 黑 糖薑母茶, 桂圓茶, 牛蒡茶, 黑糖玫瑰四物飲, 菊花茶 and 海燕窩 products shown in the photos.
Genuine use
24. The policy of providing for the revocation of a registered trade mark on ground of non-use has been discussed in the case of Brands Inc Ltd. Kabushiki Kaisha Regal Corp [2006] HKEC 2313 (“Brands”). After considering various decisions of the European Court of Justice and the UK courts, Barma J stated (at paragraph 14):
“The policy behind the requirement that a trade mark, once registered, should be used in order to justify its continued registration is stated in Ansul,3 at paragraph 37 of the judgment. It is that the purpose of trade mark is to enable its owner to create or preserve a market for goods or services produced or supplied by him. It does so by granting to the owner the exclusive right to use the mark in that market, and the ability to stop others from using the mark in respect of their own goods or services. However, where the mark is not in fact used for this purpose, it ceases to achieve this purpose. There is then no longer any justification for preventing others from using it.”
25. Further, as a trade mark and the rights that are conferred by it are essentially territorial in nature, what is relevant for the purpose of deciding whether or not the owner should be entitled to retain the mark and its associated rights is use as a trade mark
2 Paragraph 12 of Ng’s Declaration. 3 Ansul BV v Ajax Brandbeveiliging BV [2005] Ch 97
- 6 - in the territory in respect of which it is registered (Brands, paragraph 15).
26. What constitutes genuine use has been considered in a number of cases including Ansul, La Mer Technology Inc v Laboratoires Goemar SA [2004] F.S.R. 38 (“La Mer”), Laboratoire de La Mer Trade Mark [2006] F.S.R. 5 (“Laboratoire”) and Brands. According to these cases:
(i) There is genuine use of a trade mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services (La Mer, paragraph 27).
(ii) Genuine use does not include token use for the sole purpose of preserving the rights conferred by that mark (La Mer, paragraph 27).
(iii) It entails use of the mark on the market for the goods or services protected by that mark and not just internal use by the undertaking concerned (Ansul, paragraph 37).
(iv) Use of the mark must relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns (Ansul, paragraph 37).
(v) When assessing whether use of a trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real in the course of trade, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (La Mer, paragraph 27).
(vi) Even if use of a mark is not quantitatively significant, it may be sufficient to qualify as genuine use if it is deemed to be justified, in the economic sector concerned, for the purpose of preserving or creating market share for the goods or services protected by the mark (La Mer, paragraph 21).
- 7 - (vii) What matters are the objective circumstances of each case, and not the owner’s commercial intention, purpose or motivation (Laboratoire, paragraph 34).
(viii) There is no requirement that the mark must have come to the attention of the end user or consumer. The retail or end user market is not the only relevant market on which a mark is used for the purpose of determining whether use of the mark is genuine (Laboratoire, paragraph 32).
(ix) What is essential (other than where section 52(3)(b) of the Ordinance is applicable) is that the mark should have been used by being exposed to third parties (other than the owner or his licensees or agents) on a market in Hong Kong for goods or services of a type in respect of which the mark was registered. The need for exposure on such a market follows from the fact that to be used as a trade mark, the mark must be used in such a way as to act as a badge of origin, or a guarantee of the source or origin of the relevant goods or services (Brands, paragraph 18).
The present case
27. The question that I have to consider here is whether the Registered Owner can demonstrate by objective and solid evidence that the Subject Mark has been genuinely used in relation to the Subject Goods in Hong Kong during the Relevant Period. In determining whether there has been genuine use of a mark, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real in the course of trade, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark.
28. I have outlined the evidence filed by the Registered Owner in paragraphs 20 to 23 above. It is the Registered Owner’s case that the Subject Mark has been genuinely used for the Subject Goods in Hong Kong by the Registered Owner/its predecessor or through its distributor Canzone. Having regard to:
(a) the sale of 黑糖薑母茶, 黑糖茶, 黑糖, Red Date & Longan Tea, Black Sugar Wax Gourd Tea and 黑糖玫瑰四物飲 products bearing the Subject Mark by
- 8 - Canzone to various retailers in Hong Kong as evidenced by the copies of invoices at Exhibit D to Ng’s Declaration;
(b) the display of 黑糖薑母茶 and 黑糖玫瑰四物茶 products bearing the Subject Mark at the shops of various retailers in Hong Kong as evidenced by the photos produced at Exhibit E to Ng’s Declaration; and
(c) the display of 黑糖薑母茶, 桂圓茶 and 黑糖玫瑰四物飲 products bearing the Subject Mark in promotional activities as evidenced by the photos produced at Exhibit F to Ng’s Declaration,
I am satisfied that Subject Mark has been put into genuine use by the Registered Owner or with its consent in relation to “tea, sugar; tea-based beverages; fruit flavoured tea; fruit tea; herb tea; aromatic tea; black sugar ginger tea; instant powder for making tea; tea essences; tea extracts; dietetic foods, not medical purposes” (“Excepted Goods”) during the Relevant Period.
29. Notwithstanding the above findings, the evidence contains nothing which can show that the Subject Mark has been used by the Registered Owner in respect of any of the Subject Goods other than the Excepted Goods (collectively, the “Other Goods”) during the Relevant Period.
Partial revocation
30. Section 52(6) of the Ordinance provides as follows :
“Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only.”
31. In paragraph 12-122 of Kerly’s Law of Trade Marks and Trade Names (16th ed.), the learned author referred to the UK approach to partial revocation which was summarized by the Appointed Person (Richard Arnold QC) in Nirvana Trade Mark (UK Trade Marks Registry case: BL O-262-06) as follows:
“(1) The tribunal’s first task is to find as a fact what goods or services there has been genuine use of the trade mark in relation to during the relevant period: Decon v Fred Baker at [24]; Thomson v Norwegian at [30].
- 9 - (2) Next the tribunal must arrive at a fair specification having regard to the use made: Decon v Fred Baker at [23]; Thomson v Norwegian at [31].
(3) In arriving at a fair specification, the tribunal is not constrained by the existing wording of the specification of goods or services, and in particular is not constrained to adopt a blue- pencil approach to that wording: MINERVA at 738; Decon v Fred Baker at [21]; Thomson v Norwegian at [29].
(4) In arriving at a fair specification, the tribunal should strike a balance between the respective interests of the proprietor, other traders and the public having regard to the protection afforded by a registered trade mark: Decon v Fred Baker at [24]; Thomson v Norwegian at [29]; ANIMAL at [20].
(5) In order to decide what is a fair specification, the tribunal should inform itself about the relevant trade and then decide how the average consumer would fairly describe the goods or services in relation to which the trade mark has been used: Thomson v Norwegian at [31]; West v Fuller at [53].
(6) In deciding what is a fair description, the average consumer must be taken to know the purpose of the description: ANIMAL at [20].
(7) What is a fair description will depend on the nature of the goods, the circumstances of the trade and the breadth of use proved: West v Fuller at [58]; ANIMAL at [20].
(8) The exercise of framing a fair specification is a value judgment: ANIMAL at [20].
To which he added a further point:
(9) It is for the Tribunal to frame a fair specification and not the parties.”
32. Based on the evidence of the Registered Owner, I find that there has been genuine use of the Subject Mark in respect of the Excepted Goods in the Subject Goods. There has not been any use of the Subject Mark in relation to the Other Goods, and it is clear that these items are not identical to and extend unduly beyond the scope of the Excepted Goods. Bearing the foregoing principles in mind, I consider that “tea, sugar; tea-based beverages; fruit flavoured tea; fruit tea; herb tea; aromatic tea; black sugar ginger tea; instant powder for making tea; tea essences; tea extracts; dietetic foods, not medical purposes” is a fair description of the goods for which the Subject
- 10 - Mark had been used.
33. The registration of the Subject Mark is accordingly to be revoked in respect of “Coffee, cocoa, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking- powder; salt, mustard; vinegar, sauces (condiments); spices; ice; confectionary and cookies spices; crackers; instant noodles” with effect from 30 May 2019 . The specification, after the partial revocation as ordered, is to read “tea, sugar; tea-based beverages; fruit flavoured tea; fruit tea; herb tea; aromatic tea; black sugar ginger tea; instant powder for making tea; tea essences; tea extracts; dietetic foods, not medical purposes; all included in Class 30”.
Costs
34. The Applicant has prayed for a full revocation which has only been successful in part. As each side has achieved a measure of success, each should bear its own costs. I therefore make no order as to costs.
(Emily WONG) for Registrar of Trade Marks 23 June 2021
- 11 -