Trade Marks Ordinance (Cap

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.

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