中國平安保險(xiǎn)(集團(tuán))股份有限公司

1、.- PAGE 20 -：.；FACV No. 26 of 2021IN THE COURT OF FINAL APPEAL OF THEHONG KONG SPECIAL ADMINISTRATIVE REGIONFINAL APPEAL NO. 26 OF 2021 (CIVIL)(ON APPEAL FROM CACV NO. 291 OF 2006)_IN THE MATTER of Sections 52, 53 and 57 of the Trade Marks Ordinance, Cap. 559 of the Laws of Hong KongandIN THE MATTER

2、 of Hong Kong Trade Mark Nos. 300065196 for “PING AN and 300065213 for “平安 registered in Classes16, 35, 36, 38, 41 and 42 in the name of 中國平安保險(xiǎn)(集團(tuán))股份 (“the Respondent)andIN THE MATTER of an application by PING AN SECURITIES LIMITED (“the Applicant) for a declaration of invalidity of the registration

3、 of Hong Kong Trade Mark Nos. 300065196 in Class 36 and 300065213 in Class 36 and/or for rectification of the Register of Trade Marks in respect thereof_Between :PING AN SECURITIES LIMITEDApplicant (Appellant)and中國平安保險(xiǎn)(集團(tuán))股份Respondent(Respondent)_Court :Mr Justice Bokhary PJ, Mr Justice Chan PJ, Mr

4、Justice Ribeiro PJ, Mr Justice Litton NPJ and Mr Justice Gault NPJDates of Hearing :22 and 23 April 2021Date of Judgment :12 May 2021J U D G M E N TMr Justice Bokhary PJ :I agree with the judgment of Mr Justice Gault NPJ and would therefore allow the appeal with costs here and below. Not in regard t

5、o the merits but in connection with the preparation of the papers, we indicated at the hearing that we would consider calling upon the appellants solicitors to show cause under Order62 rule8 of the Rules of the High Court. We have decided not to adopt that course. Why we had contemplated it appears

6、from the judgment of Mr Justice Litton NPJ. Mr Justice Chan PJ :I agree with the judgment of Mr Justice Gault NPJ.Mr Justice Ribeiro PJ :I agree with the judgment of Mr Justice Gault NPJ. Mr Justice Litton NPJ :I agree with Mr Justice Gault NPJ and wish to elaborate briefly upon the aspect of the ca

7、se mentioned in para. 42 of his judgment.It is never appropriate for a court to embark upon an independent search for evidence, whatever form that takes. To have done so as the Court of Appeal did in this case was quite irregular.In this Court MrJohn Yan SC, with admirable restraint, submitted that

8、the irregularity had cast a shadow of prejudice over the proceedings; this distorted the result. There is much strength in this submission. But as the irregularity has not been put forward by Counsel as an independent ground of appeal, I say no more about it beyond expressing my regret.CostsAs menti

9、oned in Mr Justice Bokhary PJs judgment, the question of a costs order under Order 62 rule 8 was briefly mentioned in the course of the hearing.The documentary evidence (including affidavits) lodged for the purpose of this appeal comes to a total of 1,272 pages. Amongst them are the following : (1)

10、“CMT-9 exhibited to the affirmation of Chan Man Tin, Michael, comprising 389 pages, described as copies of some (not all) of the client statements of the applicant from 1993 to 2004, and (2) “STP-17 exhibited to an affirmation of Sze Tsai Ping, Michael, being 191 pages of records of share transactio

11、ns made through the applicant in the month of March 2003; this was said to be in proof of the fact that the applicant had made numerous transactions on behalf of 1,253 clients in that month and those 191 sheets were illustrative of that fact.Exhibits “CMT-9 and “STP-17 add up to a total of 580 pages

12、, produced for no other purpose than to illustrate the fact that the applicant had acted as broker in a number of transactions over the specified periods. These are hard facts over which there could have been no dispute. They are matters which could have been easily agreed between the solicitors. Mo

13、reover, those pages proved nothing; they did not cover all the transactions and were merely illustrative of the points already made in the affirmations. In the course of the hearing this Court expressed concern over the wastage of cost incurred in the preparation of the appeal. Whilst the solicitors

14、 for the appellant had the carriage of the appeal and were primarily responsible for preparing the appeal bundles, we were told by counsel that the bundles had in fact been agreed by the other side prior to the hearing. In that sense, the responsibility for those 580 pages of material being put befo

15、re the court was shared by the parties solicitors.The time has come to remind solicitors that, as officers of the court, they have a duty to minimize wastage, and to save costs as far as possible. A Master of the High Court, in discharge of his function in the taxation of costs, has the power under

16、Ord.62 r.8(1) of the Rules of the High Court to direct a solicitor to indemnify his own client against wasted costs payable by him. It would be salutary to see this power being exercised in an appropriate case.Mr Justice Gault NPJ :IntroductionThe appellant applied for a declaration of invalidity of

17、 two Hong Kong trade mark registrations. They stand in a name of the respondent, 中國平安保險(xiǎn)(集團(tuán))股份. They are number 300065196 for the trade mark PING AN and number 300065213 for平安, both in class 36 and registered in respect of the services stated in Chinese characters as “財(cái)務(wù)；金融事務(wù)；房地產(chǎn)事務(wù) (translated as “fi

18、nance, financial affairs and real estate affairs). The declaration of invalidity is sought only in respect of the services “financial affairs and monetary affairs. The two Trade Mark registrations were granted on applications made on 20August 2003. As is common ground between the parties, that it is

19、 the material date at which their validity is to be determined. The Trade Marks Ordinance, Cap.559 (“the Ordinance), draws upon the Trade Marks Act 1994 (UK) which, in turn, was enacted to implement the 1988 Directive of the Council of the European Union relating to trade marks. The previous United

20、Kingdom and Hong Kong trade mark laws were changed significantly. One area of change was in relation to conflicts between marks, registered or sought to be registered and competing rights acquired by prior use. Under the present law, as relevant to this case, registration of a trade mark may be refu

21、sed, or declared invalid, because of prior use of a conflicting unregistered mark or sign only if its use in Hong Kong is liable to be prevented by virtue of the law of passing off. That is the basis of the challenge to the validity of the registrations in this case. Section 53 of the Ordinance pres

22、cribes grounds for invalidity. The relevant parts of that section read :“(5) the registration of a trade mark may also be declared invalid on the ground - that there is an earlier right in relation to which the condition set out in section 12 (5) (relative grounds for refusal of registration) is sat

23、isfied.(8)Where the grounds of invalidity exist in respect of only some of the goods or services for which the trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only.Section 12(5)(a) is the relevant provision and reads :“(5) a trade mark shall not

24、be registered if, or to the extent that, its use in Hong Kong is liable to be prevented (a)by virtue of any rule of law protecting an unregistered trade mark or other sign used in the course of trade or business (in particular, by virtue of the law of passing off); The issue for determination theref

25、ore is whether, at 20 August 2003, use of the trade marks PING AN and平安by the respondent was liable to be prevented by virtue of the law of passing off. The appellant claims prior rights in unregistered names consisting of, or incorporating PING ON, PING AN and平安in its business and that of its prede

26、cessor in the provision of stockbroking and financial services.The elements of the tort of passing off relevant in this case are not in dispute. The plaintiff must establish a goodwill (in the country or region) in a business in the supply of goods or services distinguished by a name or mark that ha

27、s been, or likely will be, damaged by conduct of the defendant that is misleading or deceptive to the public. No one is entitled to represent his goods or services as those of, or connected with, another whose goods or services are known in the market. These elements, as formulated by Lord Oliver in

28、 the well-known JIF case Reckitt & Colman Products Limited v. the Borden 1990 RPC 341, 406, 1990 1 All ER 873, 880., have been repeatedly relied upon. Having said that the questions which arise are, in general, questions of fact, he said : “The law of passing off can be summarised in one short gener

29、al proposition, no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the good

30、s or services which he supplies in the mind of the purchasing public by association with the identifying get-up (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the pu

31、blic, such that the get-up is recognised by the public as distinctive specifically of the plaintiffs goods or services. Second, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services o

32、ffered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiffs identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public

33、is accustomed to rely on a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Third, he must demonstrate that he suffers or, in a quia timet action, that he is l

34、ikely to suffer damage by reason of the erroneous belief engendered by the defendants misrepresentation that the source of the defendants goods or services is the same as the source of those offered by the plaintiff.In the context of a challenge to trade mark registrations, there may be no actual co

35、nduct of the defendant at the material date of application for registration. For that reason it is necessary to postulate any normal and fair use that may be made of the trade marks and to determine whether that would constitute passing off. Examples of such notional passing off approach in this con

36、text are to be found in the REEF REEF Trade Mark 2002 RPC 387., WILD CHILD WILD CHILD Trade Mark 1998 RPC 455. and DIXY FRIED CHICKEN Dixy Fried Chickens (Euro) Ltd v. Dixy Fried Chicken (Stratford) Ltd 2003 EWHC 2902 (Ch). cases.Mr John Yan SC, who appeared with Mr Philips Wong for the appellant, i

37、nvited the Court to approach the assessment of the issue of likelihood of confusion (Lord Olivers second element) by reference to the criteria under the European Union Directive in respect of eligibility for registration and infringement as might be applicable under the Ordinance. He cited passages

38、from the judgment of Jacob LJ in Reed Executive Plc v. Reed Business Information Limited 2004 RPC 40. referring to the similarities between the considerations identified in the Directive and those in passing off. While acknowledging that the “global assessment test is, in substance, the same as the

39、requirement in passing off to consider the likelihood of false representation or deception in all the circumstances, I consider it unnecessary to draw into the well-established principles of the law of passing off, directives for the interpretation of European trade mark statutes. The Court of First

40、 InstanceThe matter was tried in the Court of First Instance before Deputy High Court Judge Gill Judgment of HCMP 2788/2004 dated 3 August 2006. who decided in favour of the appellant and made a declaration of invalidity in respect of both registrations. In his judgment, he reviewed the documentary

41、evidence (there having been no cross-examination) against a formulation of the law of passing off taken from Kerlys Law of Trade Marks and Trade Names, 14th edition, 15-016 to the effect that nobody has the right to represent his services as those of somebody else, whereby prospective customers may

42、be deceived. He added that whether there is misrepresentation and deception depends not on any preconceived formula but whether, on the evidence and surrounding circumstances, this can be made out in any given case.The judge went on to state :“The claimant must show that on or by the relevant date t

43、he mark or marks had, within its country or region of activity, become by user distinctive to it in the minds of those dealing in the claimants business. If such reputation is thus established, the effect is that the claimant acquires a quasi-proprietory right to the exclusive use of the mark in rel

44、ation to goods or services of that kind. Thus the use by another of that mark or one deceptively similar becomes an invasion of that right, for it is likely to induce customers to buy from him and divert prospective business from the claimant.The reference in this passage to “a quasi-proprietary rig

45、ht to the exclusive use of the mark was criticized in the Court of Appeal and strictly is not correct. There is no property in the mark though the goodwill attracted by the mark is a proprietary right. That, however, gives no exclusivity in the use of the mark but only the entitlement to restrain mi

46、srepresentation or deceptive use damaging to the goodwill.The judge accepted that, although incorporated in 1993, the appellant was entitled to rely on the business history of its predecessor, a partnership founded in 1970. That partnership engaged in the provision of financial services as sharebrok

47、ers and was a founding member of the Far East Stock Exchange and later a member of the Stock Exchange of Hong Kong Limited. It was registered originally under the name in Chinese characters of 平安股票公司and in English Ping On & Company. “Ping On is the transliteration of the first two characters in the

48、Cantonese dialect and translates to mean “peace and “peaceful. The next two characters translate to mean “stocks and shares and the final two mean “company. Due to the passage of time, records of performance of the partnership in the 1970s and 1980s were not available but particulars that were avail

49、able for the following years demonstrate that the partnership acquired a substantial reputation and goodwill in Hong Kong in financial services having continuously provided those services since 1970.The judge then referred to the incorporation of the appellant in March 1993 under the name in Chinese

50、 characters平安股票. This is the same as the partnership name with the addition of two characters signifying limited liability. The English version of the company name then used was Ping On Securities Limited. The judge found that the company took over the operation of the former partnership, occupying

51、the same office, employing the same dealers and staff and serving the same clientele who were given notice of the change of name.The judge recorded from the evidence that during the course of the following decade, the appellant undertook significant business for its clients and he referred to the re

52、cords showing that in 1998, the company turned over more than $7billion representing an income of more than $22million.There was a change of name of the appellant in 2003, following acquisition of the controlling interest in the company by “an established group known as the Baron Group. The judge sa

53、id :“13.The new management chose, with the approval of the HKSE and the Securities and Futures Commission (SFC) to change the name as recorded in both English and Chinese. The characters signifying “stocks and shares were replaced by two characters meaning securities. In English the name became Ping

54、 An Securities Limited. Michael Sze (Mr Sze) who at the changeover became the applicants managing director, a position he holds to this day, adduced evidence to explain why. The characters translating to mean securities described the function of the applicant in a more up to date way than the former

55、 stocks and shares regarded now to be somewhat old fashioned. The change of the English version was to bring to the name the transliteration in Putonghua of the Chinese characters by which over the years the applicant and its predecessor have been known, to recognize the change of ownership of the a

56、pplicant, but also the growing use of Mandarin or Putonghua in place of the Cantonese dialect in Hong Kong, particularly in professional and business circles.After the change of name, the appellant continued to operate as before. The judge referred to the evidence of Mr Chan, a director and the one

57、responsible for dealing accounts and operations of the company, that its principal business included security trading in listed securities, debt securities, the organizing of IPOs, the placing and underwriting of securities, nominee services and transfer of securities for a client list in Hong Kong

58、which exceeded 3,000names. In 2003 the turnover was $859million, by 2004 it was in excess of $2billion.There was evidence from Mr Henry Lee who has 16 years experience in the securities and financial service sector in Hong Kong. He has no connection with the appellant. He described the appellant as

59、one of the veteran securities companies in Hong Kong, more often than not referred to by brokers and others who trade as平安, PING ON or PING AN. The appellant is the only licensee registered as using those names in relation to regulated financial services in Hong Kong.On that evidence, the judge made

60、 these express findings : “52.The applicant has by acquisition and use in its own name had the use of the marks Ping On and 平安 in engaging in financial services in Hong Kong. Its predecessor was a founding member of the FESE. Continuous trading since then has resulted in a substantial turnover and c