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TRADE MARKS ORDINANCE (CAP. 559) APPLICATION FOR REVOCATION OF TRADE MARK 300219951 MARK :
CLASS :
3
APPLICANT :
LABORATOIRE NUXE
REGISTERED PROPRIETOR :
HEALTHCORP TRADING LIMITED
STATEMENT OF REASONS FOR DECISION
1. Laboratoire Nuxe (“the applicant”) applied to the Registrar of Trade Marks
on 22 September 2009 to revoke the registration of the trade mark “Bio-Beauty” in
class 3 under the Trade Marks Ordinance (Cap. 559) (“the Ordinance”) on the ground
of non-use (the “application”). The trade mark was registered, at the time the
application for revocation was filed, in the name of Healthcorp Trading Limited (“the
registered proprietor”).
2. The hearing of the application took place before me on 4 December 2012.
Mr. Dominic W.H. Pun, Counsel, instructed by Messrs. Woo Kwan Lee & Lo,
represented the applicant. Mr. Ling Chun Wai, Counsel, instructed by Messrs.
Cheung & Liu, represented the registered proprietor.
Ground for revoking the trade mark
3. The application for revocation is made under section 52(2)(a) of the
Ordinance on the ground that the trade mark has not been genuinely used in Hong
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Kong by the registered proprietor or with his consent, in relation to the goods for
which it is registered.
Three-year period of non-use
4. Under section 52(2)(a) of the Ordinance, the registration may be revoked if
the trade mark has not been used for a continuous period of at least three years. The
application filed on 22 September 2009 seeks revocation to take effect from 17
September 2008.
Registration
5. The registration that the applicant applies to revoke is the trade mark below:
(the “subject mark”) which has been registered with registration number 300219951 in
class 3 in respect of ‘cosmetics products; skin care, body care, hair care and face care
preparations; all included in Class 3’ (“the registered goods”). The filing date of the
application for registration of the subject mark, which is deemed to be also the date of
registration, is 24 May 2004.
Applicant’s evidence in support of the application
6. The applicant’s evidence in support of the application filed pursuant to Rule
36 of the Trade Marks Rules, Cap. 559A (the “Rules”) consists of a statutory
declaration of Man Chi Hung Edward declared on 18 September 2009. Man Chi Hung
is the Operation Manager of a private investigation company which received
instruction from Messrs. Cabinet Sueur & L’Helgoualch in Paris, France to conduct an
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investigation on the use or non-use of the subject mark. Man Chi Hung’s statutory
declaration sets out the process and results of the investigation.
7. What Man Chi Hung found out from his investigation, in essence, are the
following:-
(i) The registered proprietor was one of the associated companies of Hanison
Construction Holdings Limited (“Hanison”). Hanison was a construction
company providing building construction services, whereas the registered
proprietor was dealing with health food and drink products. Both of the
companies had office in the building of Sha Tin Industrial Centre, 5-7 Yuen
Shun Circuit, Sha Tin, New Territories, Hong Kong.
(ii) The said premises of the registered proprietor was its headquarter and all its
products were only being sold in the registered proprietor’s retail shops.
(iii) The retail shops were trading under the name “HealthPlus”, located in
various shopping arcades and Mass Transit Railway stations all over Hong
Kong, with the fleet shop located at St. Teresa’s Hospital where all of the
registered proprietor’s products were shown.
(iv) At the fleet shop located at St. Teresa’s Hospital, a set of “Bio-Beauty”
Facial Device which included a facial device machine, a case and a bottle of
aloe lotion was seen behind the display window, and which was priced
HK$640 per set. It was revealed by a saleslady there that the aloe lotion was
a free gift for the facial device and was not for sale separately. The saleslady
also revealed that customers could use other brands of lotion instead of the
aloe lotion with the “Bio-Beauty” Facial Device. No catalogue of the “Bio-
Beauty” Facial Device was available.
8. The applicant did not file any additional evidence under Rule 38 of the Rules.
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Registered proprietor’s evidence
9. The registered proprietor’s evidence of use filed pursuant to Rule 37 of the
Rules consists of a statutory declaration of Chung Lai Ling (MaryAnne Chung)
declared on 22 March 2010 (“Chung’s statutory declaration”). Chung Lai Ling is the
General Manager of the registered proprietor, she held that position only from 1
January 2010, but before that, she had been the Senior Manager of Care and Health
Limited which, being the wholesale team of health division, was another company
within the Hanison group of companies primarily responsible for Hanison’s retail
operations, including those of the registered proprietor’s. She had free access to the
registered proprietor’s records, and made the statutory declaration under the
authorisation of the registered proprietor.
10. According to Ms. Chung, the Hanison group of companies had expanded
from the construction and construction related businesses in Hong Kong to the trading
of health products. The Hanison group commenced retail of health products in 2003,
selling health supplements, healthcare equipment and traditional Chinese medicine.
Exhibit “CLL-1” to Chung’s statutory declaration is a print-out of extracts from
Hanison’s corporate website including a group structure chart.
11. It is claimed that the registered proprietor’s business in Bio-Beauty products
commenced in or around 2004, and the Bio-Beauty mark had been used by the
registered proprietor as its brand for a combination box set consisting of the following
items:-
(a) a two piece box set bearing the Bio-Beauty brand;
(b) a facial massaging device bearing the Bio-Beauty brand;
(c) a separate cover for the device (in a different colour) bearing the Bio-Beauty
brand;
(d) a facial lotion for use with the device;
(e) a separate cloth carrying case for the device and lotion;
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(f) an instruction leaflet; and
(g) a warranty card.
Exhibit “CLL-2” to Chung’s statutory declaration is an original Bio-Beauty box set
which includes an Instruction Manual.
12. Ms. Chung emphasised that the Bio-Beauty product is always sold as a box
set consisting of the facial device and the lotion to be used with the device, and an
essential aspect of the device is that it must be used with a lotion. Ms Chung
acknowledged that there is no Bio-Beauty branded product sold as a device on its own,
and neither is there a Bio-Beauty product sold as a lotion on its own. It follows
therefore there is no sales record of any Bio-Beauty lotions alone, and neither is there
any advertising or promotion of any Bio-Beauty lotions alone.1
13. Chung’s statutory declaration provides a list of retail shops selling the Bio-
Beauty sets in Hong Kong, which includes the “Health Plus” outlet at St. Teresa’s
Hospital. Ms. Chung claimed that the registered proprietor has continuously sold the
Bio-Beauty sets since 2005 through its own retail outlets, and not through any third
party outlets.
14. Sales figures in Hong Kong for the Bio-Beauty sets from 2005 to 2009 were
given in Chung’s statutory declaration. Sales volume ranges from the highest of 349
sets in 206 to the lowest of 38 sets in 2009, the corresponding sales figures in Hong
Kong Dollars reveal that the price remained steady over the years at around HK$650
per set. Exhibit “CLL-3” to Chung’s statutory declaration contains copies of the
electronic versions of sales invoices in respect of the Bio-Beauty sets.
15. Ms. Chung further provided estimated amounts of annual expenditures for
2004 to 2009 on advertising and promotion in respect of the Bio-Beauty sets. Exhibit
“CLL-4” to Chung’s statutory declaration contains a promotional leaflet that the
registered proprietor has produced for the purpose of promoting the Bio-Beauty sets.
1 All these admissions or acknowledgements were made in paragraphs 4 to 6 of Chung’s statutory declaration.
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16. Exhibit “CLL-5” to Chung’s statutory declaration contains copies of sales
invoices in respect of supplies received from Tina Concept Company Limited, a
company from which the registered proprietor is said to have sourced its lotion
products for the Bio-Beauty sets.
17. The rest of Chung’s statutory declaration deal with matters in reply to Man
Chi Hung’s statutory declaration. I do not propose to summarize them here but may
deal with them in the latter parts of this decision as and when required by the context.
Decision
18. Revocation of the registration of a trade mark is provided for under section
52 of the Ordinance. In particular, section 52(2)(a) provides that the registration of a
trade mark may be revoked where “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”.
19. Section 52(8) provides that 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), i.e., the actual date of
registration of the trade mark.
20. In the present case, the actual date of registration of the subject mark is 24
May 2004. The application filed on 22 September 2009 seeks revocation to take effect
from 17 September 2008, which is the date when Man Chi Hung visited the outlet at
Teresa’s Hospital. For the purposes of the present proceedings, I need to look at the
three-year period beginning on 17 September 2005 to ascertain whether or not the
subject mark has been “genuinely” used in Hong Kong.
21. Section 82(1) of the Ordinance states : ‘if in any civil proceedings under this
Ordinance in which the owner of a registered trade mark is a party, a question arises as
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to the use to which the trade mark has been put, the burden of proving that use shall lie
with the owner’. The result is that in an application to revoke for non-use, the onus of
proof of use is on the owner, which in the present context is the registered proprietor.
There is no dispute between the parties on that.
Use of the subject mark in Hong Kong
22. I have summarised the evidence filed by both parties in paragraphs 6 to 17
above. The applicant’s evidence, comprising only the statutory declaration of Man
Chi Hung, simply contains matters gathered from investigations conducted by
professional agents whose source of instructions ultimately rested with the applicant.
Whilst what had been raised in Man Chi Hung’s statutory declaration constitutes a
preliminary case to require the registered proprietor to prove use of the subject mark,
what really matters in this proceedings, as decreed by sections 52(2)(a), 52(8) and
82(1) of the Ordinance, is whether the registered proprietor has adduced sufficient
evidence to show that the subject mark had been genuinely used in Hong Kong during
the three-year period counting from 17 September 2005. I therefore do not intend to
delve deeply into the applicant’s evidence.
23. As far as the registered proprietor’s evidence is concerned, Chung’s statutory
declaration and the exhibits thereto are challenged on two fronts. The first front is that
the sales evidence tendered by the registered proprietor is insufficient to show that the
subject mark had been genuinely used by the registered proprietor or with its consent
in Hong Kong during the three-year period. The second front is that, even if the first
front failed, which means that the subject mark can be taken to have been genuinely
used by the registered proprietor or with its consent on certain goods of the registered
proprietor, it is nevertheless not the case that the subject mark had been used on the
registered goods.
24. On the first front, Mr. Dominic Pun, counsel for the applicant, pointed out
that of the 6 invoices adduced in Exhibit “CCL-3”, only 2 were issued within the
three-year period beginning on 17 September 2005, and that the invoices were all
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issued by a RetailCorp Limited, rather than by the registered proprietor. I will deal
with the second point first.
25. It is true that in Chung’s statutory declaration, the sales invoices in Exhibit
“CCL-3” are alleged to be in respect of “Healthcorp sales of the Bio-Beauty Sets” but
there was no explanation for the anomaly that they were issued by RetailCorp Limited
instead of the registered proprietor, and indeed RetailCorp Limited was not mentioned
by Ms. Chung at all in her statutory declaration. At the hearing, Mr. Ling Chun Wai,
counsel for the registered proprietor, drew my attention to the case Einstein Trade
Mark [2007] R.P.C. 23, a decision of the Appointed Person,2 to argue that there was
implied consent of the registered proprietor for the sales of the Bio-Beauty sets, which
bear the subject mark, by RetailCorp Limited.
26. In my view, the Einstein Trade Mark case, which examined and analysed the
legislative history leading to the adoption and application of the concept of use “by the
proprietor or with his consent” in the context of section 46(1) of the Trade Marks Act
1994, is just as applicable to the same concept in section 52(2) of the Ordinance, and
hence could assist Mr. Ling in the following respect – that the proprietor of a trade
mark could defeat an application for revocation on the ground of non-use by relying
on the fact that goods had been sold under his trade mark by a person (such as a
licensee) with whom he was “economically linked” and could do so without showing
that he had exercised control over the goods in question. It follows that what the
applicant needs to show in order to prove the required consent in the present case, is
just that goods had been sold under the subject mark by RetailCorp Limited with
which the registered proprietor was “economically linked”.
27. Mr Ling relied on the following to show that the registered proprietor and
RetailCorp Limited are economically linked:-
(i) the group structure chart of Hanison in Exhibit “CLL-1” which shows
RetailCorp Limited and the registered proprietor are both hundred percent
2 The “Appointed Person” is a person appointed by the Lord Chancellor to hear and decide appeals from the UK Trade Marks Registry’s Tribunal.
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owned by the Health Products Business of and within the Hanison group of
companies;
(ii) the address and fax number printed on the invoices are the same address and
fax number as appearing in the warranty card which is in the name of the
registered proprietor and included in the Bio-Beauty box set; and
(iii) the registered proprietor is obviously in a position to produce sales figures
and the invoices in question from the company’s records in relation to the
use of the subject mark.
There is no contrary evidence to hint that the relationship between the registered
proprietor and RetailCorp Limited might be anything otherwise.
28. As far as the above evidence goes, the registered proprietor and RetailCorp
Limited can be regarded as “economically linked” entities, and in the absence of
cross-examination or evidence to the contrary, following the principle of the Einstein
Trade Mark case, this is sufficient to prove the required consent. I hold that
RetailCorp Limited used the subject mark with the consent of the registered proprietor
in relation to the Bio-Beauty box sets.
29. I now come back to the first point, which essentially asks whether the
evidence filed by the registered proprietor can sufficiently show that the subject mark
had been genuinely used with the registered proprietor’s consent in Hong Kong within
the three-year period beginning on 17 September 2005.
30. Of the 6 invoices adduced in Exhibit “CCL-3”, only 2 fall within the three-
year period. The two falling within the period are dated 8 May 2008 and 24 July
2008, whereas those outside the period are all dated within the first half of 2009. Mr
Ling submitted that the reason for including the latter is to cater for all eventualities,
including the case where section 52(4) and 52(5) of the Ordinance were to be invoked.
In gist, the combined effect of section 52(4) and 52(5) is that registration of a trade
mark shall not be revoked on the non-use ground if the use of the mark in question is
commenced or resumed after the expiry of the 3-year period and before the application
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for revocation is made, but disregarding any use commenced or resumed after the
expiry of the 3-year period but within the period of 3 months before the making of the
application for revocation. In the present case, the three-year period end on 16
September 2008 and the subject application for revocation was made on 22 September
2009; the 4 invoices, which all dated within the first half of 2009, just fall within the
interim period in between.
31. Nonetheless, I will first see whether the 2 invoices falling within the three-
year period are sufficient to prove for genuine use. It is not in dispute that genuine use
does not subsist in merely putting the mark on a few goods and importing them for a
non-commercial purpose, and it is imperative to examine with care that the use is
neither private nor just for internal use by the undertaking concerned, but has as its
essential aim the preservation or creation of market share for the goods that it protects
(see for example La Mer Technology Inc v Laboratoratoires Goemar SA [2004] FSR
38).3
32. As far as the 2 invoices dated in 2008 are concerned, they are sufficient, in
my view, to show that real commercial transactions involving “Bio-Beauty” Facial
Device were carried out. Each invoice evidences sale of just one set of “Bio Beauty
Device”, the customers were one “Walk-In Customer at CEN” and one named
individual. The two devices sold were both shown to be originally priced at
HK$1,280, but after discount one was sold at HK$640 and the other at HK$608. All
this has no conflict with, if not corroborative of, what Man Chi Hung has found out
from his investigation, viz., “Bio-Beauty” Facial Device can be bought at around
HK$640 per set at certain retail shops in Hong Kong around the time he made a visit
to the fleet shop located at St. Teresa’s Hospital, which was on 17 September 2008.
33. Indeed, what Chung Lai Ling alleged in her statutory declaration about the
mode of operation of the “Bio-Beauty” Facial Device business and what Man Chi
3 Further guidance as to the meaning of genuine use can be found in Ansul BV v Ajax Brandeveiliging BV [2003] RPC 40 and La Mer Technology Inc v Laboratoratoires Goemar SA [2004] FSR 38 (referred to below as “La Mer”), and judgments of the European Court of Justice (“ECJ”) which have been considered and applied by the Court of Appeal of England and Wales in Laboratoire De La Mer [2006] FSR 5.
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Hung found out from his visits to the registered proprietor’s office and shop virtually
coincide; in particular, the photographs exhibited as “MCHE-6” to Man Chi Hung’s
statutory declaration show that the facial device set clearly depicts the brand name,
namely, “Bio-Beauty” on the front of the package, and the set is composed of the
facial device and a lotion – this apparently is the same as the original Bio-Beauty box
set shown in Exhibit “CLL-2” to Chung’s statutory declaration, which I reproduce
below:-
34. Mr. ling emphasized that the applicant did not file any additional evidence
under Rule 38 of the Rules to challenge the evidence given by Ms. Chung, and he
drew my attention to the case Pan World Brands Ltd v Tripp Ltd (Extreme Trade
Mark) [2008] R.P.C. 2, also a decision of the Appointed Person, to counter Mr. Pun’s
challenge on the probative value of Ms. Chung’s evidence.
35. In gist, Mr. Pun’s criticisms of Ms. Chung’s evidence, apart from the second
front of challenge that I will deal with later, are mostly of two types. The first type
alleges the scarcity or insufficiency of evidence showing when, how and where the
“Bio-Beauty” products, as depicted in Exhibit “CLL-2” to Chung’s statutory
declaration, were marketed and advertised. The second type alleges that what had
been said in Chung’s statutory declaration in relation to the advertising, promotion and
sale of the Bio-Beauty box sets in Hong Kong, were merely assertions without
corroborative evidence.
36. I think Mr. Ling has rightly pointed to the relevant passages in Pan World
Brands case to keep these criticisms of Mr. Pun in perspective. Mr. Pun cited another
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Appointed Person case Advanced Perimeter Systems Ltd v Keycorp Ltd (Multisys
Trade Mark) [2012] R.P.C. 14 to press for his point that the less extensive the
evidence of use relied on is, the more solid it must be. I do not find the Pan World
Brands case and the Advanced Perimeter Systems case essentially differ as far as the
principles of evaluating evidence of use are concerned, and given that the latter case is
about evaluation of evidence of use in the context of goodwill and misrepresentation,
whereas the former is exactly on revocation for non-use, I will focus on the Pan World
Brands case. The following is extract of the relevant passages of the case:-
“26 Basing herself upon the last sentence of this passage, counsel for the proprietor
submitted that, if a proprietor filed evidence under rule 31(3) [similar to Rule 37(2) & (4) of
the Rules] which established an arguable case of use of the trade mark and the applicant for
revocation did not file any evidence under rule 31A(1) [similar to Rule 38(1) of the Rules],
then it would be very difficult for the application to succeed. In my judgment this
submission goes too far: as I believe Kitchin J. makes clear, the fact that the proprietor's
evidence establishes an arguable defence to the application does not necessarily mean that
the defence will succeed if the evidence is unchallenged.
27 On the other hand, I consider that counsel for the proprietor was right to emphasise that
the procedure gives the applicant the opportunity to investigate and challenge the
proprietor's rule 31(3) evidence. Furthermore, where, as in the present case, the proprietor
files a further round of evidence under rule 31A(3) , the applicant has a second opportunity
to investigate and challenge the proprietor's evidence. Still further, even if the applicant
chooses not to file any evidence in response, it has the opportunity in an appropriate case to
crossexamine the proprietor's witness(es) at the hearing.
28 I would add that I regard this procedure as consistent with my analysis of the burden of
proof in paragraph 24 above, and in particular as confirming that the evidential burden may
shift during the course of the proceedings and that deciding whether or not there has been
genuine use purely on the basis of the burden of proof should be the counsel of last resort.
…….
What constitutes evidence of use?
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31 Basing himself upon the first three sentences of the passage I have quoted from MOO
JUICE, counsel for the applicant submitted (1) that a mere assertion of use of a trade mark
by a witness did not constitute evidence of use sufficient to defeat an application [for
revocation] for non-use, and (2) it followed that mere testimony from a representative of the
proprietor was not enough and such testimony had to be supported either by documentary
records or corroborated by an external witness. I accept submission (1) but not submission
(2). Kitchin J.'s statement that “bare assertion” would not suffice must be read in its context,
which was that it had been submitted to him that it was sufficient for the proprietor to give
evidence stating “I have made genuine use of the trade mark”. A statement by a witness with
knowledge of the facts setting out in narrative form when, where, in what manner and in
relation to what goods or services the trade mark has been used would not in my view
constitute bare assertion. As counsel for the applicant accepted, it might not be possible for a
trade mark proprietor to produce documentary evidence: for example all the records might
have been destroyed in a fire. In such circumstances I do not see anything in either the
Directive, the 1994 Act or the 2000 Rules which would require the proprietor to adduce
evidence from an external witness (which is not to say that it might not be advisable for the
proprietor to do so).
……
Unchallenged evidence
…….
35 In my judgment the learned editors of Phipson are correct to say that the rule [referring
to the general rule that requires challenge in cross-examination] is not an inflexible one.
There are at least two well-established exceptions to it. The first is that, as the speech of
Lord Herschell L.C. in Browne v Dunn makes clear, it may not be necessary to cross-
examine on a point if the witness has been given full notice of it before making his
statement. As I pointed out in BRUTT Trade Marks [2007] R.P.C. 19 at [23], this may be
significant in registry proceedings where evidence is given sequentially. The second is that a
court is not obliged to accept a witness's evidence in the absence of cross-examination if it is
obviously incredible: see National Westminster Bank plc v Daniel [1993] 1 WLR 1453.
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36 Where, however, evidence is given in a witness statement filed on behalf of a party to
registry proceedings which is not obviously incredible and the opposing party has neither
given the witness advance notice that his evidence is to be challenged nor challenged his
evidence in cross-examination nor adduced evidence to contradict the witness's evidence
despite having had the opportunity to do so, then I consider that the rule in Brown v Dunn
applies and it is not open to the opposing party to invite the tribunal to disbelieve the
witness's evidence.”
37. I would say that many of the above discussed scenarios are vaguely
reminiscent of the present proceedings, in particular, the state of the unchallenged
evidence in the present case convince me that the rule in Brown v Dunn should apply:
it is not open to the applicant to invite this tribunal to disbelieve the factual part of Ms
Chung’s evidence which, after all, is not obviously incredible and as I have indicated
above (see paragraph 32), consistent with, if not corroborated by, what Man Chi Hung
found out from his visits to the registered proprietor’s office and retail shop. The
alleged absence of real evidence showing the particulars as to when, how and where
the “Bio-Beauty” products were marketed and advertised has to be looked at in
context. If, which I agree, what Ms Chung said in her statutory declaration is not
obviously incredible, the particulars had virtually been covered in paragraphs 3 to 11
of Chung’s statutory declaration by the statements and figures therein. I do not find
them to constitute bare assertions.
38. I therefore hold that the Bio-Beauty sets bearing the subject mark and sold
by RetailCorp Limited with implied consent of the registered proprietor had genuine
commercial purposes. The sales effected, even though they are not considerable,
constitute use which objectively is such as to create or preserve an outlet for the
products concerned. With that I now turn to consider the second front of challenge by
Mr. Pun to the registered proprietor’s evidence.
39. Mr. Pun submitted that the use of the subject mark on the “Bio-Beauty” sets
is in relation to and confined only to the facial device alone, and since facial device is
not an item among the registered goods (which I have set out in paragraph 5 above),4 4 Mr. Pun submitted that facial device would be within either Class 7 or Class 8 according to the 8th
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the subject mark has not been genuinely used in Hong Kong by the registered
proprietor or with his consent, in relation to the goods for which it is registered, for the
relevant three-year period. Mr. Pun in particular pointed out that the subject mark had
not been used in relation to the bottle of lotion as contained in the Bio-Beauty sets.
40. The bases on which Mr. Pun argue the above are the following:-
(a) in the instruction manual, the subject mark is being used to refer to the “Bio-
Facial device”, the “Bio-Beauty” professional facial machine and “Bio-
Beauty 美容手機”;
(b) in the invoices, the subject mark is being used to refer to “Bio-Beauty
Device” and “Bio-Beauty 美容手機”;
(c) in the promotional leaflet, the subject mark is being used to refer to “Bio-
Beauty 美容手機”, “個人專用 Bio 美容儀器”, and all references to the
subject mark in the leaflet are to the facial device alone;
(d) in paragraph 5 of Chung’s statutory declaration, Ms Chung said, “There is no
Bio-Beauty branded product sold as a device on its own, and neither is there
a Bio-Beauty branded product sold as a lotion on its own”;
(e) Paragraph 18 of Man Chi Hung’s statutory declaration contains the
following statements: - “The saleslady answered that ‘Bio-Beauty’ was only
used on the facial device as shown in the shop window. I asked whether the
aloe lotion would be sold separately and the saleslady replied in the negative.
The saleslady revealed that the aloe lotion was a free gift for the facial
device and it was not for sale. Further, the saleslady informed me that
customers could use other brands of lotion instead of the aloe lotion with the
‘Bio-Beauty’ Facial Device.”
edition (2001) of the Nice Classification established by Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, in any event not within Class 3. On the other hand, it does not seem to be in dispute that facial lotion is among the registered goods in Class 3.
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41. Before going into the veracity of these allegations, I would like to first
establish what are the relevant and applicable principles of evaluation in the
circumstances. In this connection, the case much relied on by Mr. Pun is the decision
of the Court of Justice of the European Communities (the “CJEC”) in Silberquelle
GmbH v Maselli-Strickmode GmbH (C-495/07) [2009] E.T.M.R. 28.
42. That case concerns an application for revocation on the ground of non-use.
The owner of the registered word mark WELLNESS (which is the mark in question) is
an undertaking that manufactures and sells clothing. In the context of the sale of its
clothing, the owner used its mark to designate an alcohol-free drink which was handed
out as a gift in bottles marked “WELLNESS-DRINK”, along with the clothing sold.
In its promotional documents, the owner made reference to the free gifts labelled with
the WELLNESS mark. The owner has not used its mark for drinks sold separately.
The question of whether use of a mark on goods which the proprietor of the trade
mark gives, free of charge, to purchasers of his other goods after conclusion of the
purchase contract constitutes genuine use in the context of an application for
revocation on the ground of non-use was referred to the CJEC for a preliminary ruling.
43. The CJEC ruled that where the proprietor of a mark affixes that mark to
items that it gives, free of charge, to purchasers of its goods, it does not make genuine
use of that mark in respect of the class covering those items. Before making this
ruling, the court expressly made it clear that the ruling essentially concerned a case
that is different from one in which the proprietor of a mark sells promotional items in
the form of souvenirs or other derivative products, and the court expressly adopted the
reasons set out in the Advocate General’s Opinion. To understand the rationale for the
ruling, I set out below the relevant extracts of the Advocate General’s Opinion:-
“AG48 Accordingly, the basic premiss means that a trade mark proprietor must place his
goods bearing the mark on the relevant market for those goods, which, in the main
proceedings, is the non-alcoholic drinks market; if trade mark proprietors did not act in that
manner, their goods would not be distinguishable from others. The consumer receives the
WELLNESS drink as a free gift when he purchases clothing and, as such, the consumer
does not perform any conscious act of acquiring the bottled drink by comparing it with other
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similar, substitutable ones; it follows that the trade mark is not strengthened vis-à-vis
competitors' marks because of the customer's preference.
AG49 In those circumstances, the trade mark for the soft drink remains outside the reference
market and, therefore, it does not compete with other marks, and so there is no impediment
to the appropriation of the mark by third parties, since its use on the bottles is a mere tool, a
nice gesture to increase the consumer's loyalty to the WELLNESS mark in the clothing
sector. However, the soft drinks market is unaware of [the owner’s] product and its mark. It
appears unlikely that someone who, as a result of buying WELLNESS clothes, takes a liking
to the drink, would be prepared to spend money on more clothes which they do not need
simply to receive the drink. However, even if someone were to act in that way, their
purchases would not increase the market share of the trade mark in the soft drinks market,
although it would do so on the clothing market, which fits perfectly with the role [the owner]
assigned to the drink: as an advertisement to publicise its core business, that is, fashion.
…….
AG52 …. It has been argued that merely placing a registered trade mark on promotional
items given as a gift, such as pens and T-shirts, does not satisfy the requirements of genuine
use on the grounds that it has no connection with the product for which the application for
trade mark protection was made.
AG53 Although the situation described is reasonably similar to the one in the main
proceedings, it is possible that the guidance it provides may not be fully transposable to the
present case, since the protection afforded by the mark in this case extends to the category of
goods handed out as a free gift. However, I am largely persuaded by the argument, to the
extent that I believe that it is applicable to the present case because, in the absence of a link
with the market, as I explained above, the bottles of soft drink bearing the WELLNESS-
DRINK mark become an advertisement which is completely unconnected with the soft
drinks market.”
44. In my view, if that case could assist, it is in the rationale as expressed in the
above quoted Advocate General’s Opinion, rather than following literally the wording
of the ruling of the CJEC, as after all, what falls to be decided in the present case is
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whether the lotion should be considered as a free gift, not that after accepting that it is
a free gift, whether affixing of the mark on it would make genuine use of that mark. If
I may summarize the rationale, what is crucial is to look at the relevant market for the
goods in question and see whether there is a link between the way the mark is put to
use and that market. Mr. Ling also referred me to Paras.10-071 to 10-073 of Kerly’s
Law of Trade Marks & Trade Names (15th Edition)(“Kerly”) where, commenting on
the Silberquelle case, it is said that “This judgment does not mean that use on
promotional items can never constitute genuine use. The test is whether the proprietor
of the mark is using the mark in order to create an outlet for the goods in question.”
45. Mr Ling also referred me to the Merc case5 as an example showing that it is
possible for a car manufacturer to produce clothing items and sold them, and
maintained trade mark registrations separately for the goods of vehicles and the goods
of clothing. I do not think that case could help very much, bearing in mind that after
all, whether the subject mark has been used on the facial lotion, which is the item of
goods the present proceedings is concerned about, is a question to be decided upon the
own facts of the present case.
46. In the light of the above discussion, I now come back to examine Mr. Pun’s
bases of the allegation that the subject mark on the “Bio-Beauty” sets is confined to
the facial device alone. I shall discuss in the order as set out in paragraph 40 above:-
(a) in strict literal sense, the subject mark can be said to be referring to the “Bio-
Facial device”, the “Bio-Beauty” professional facial machine and “Bio-
Beauty 美容手機” in the instruction manual. This is not surprising at all
given that the very essence of the instruction manual is to describe how the
facial device is to be operated. In passing it is noted that step no. 5 of the
“Operation” has the following description: “Apply cleansing lotion or
[essence] directly onto the face or cotton pad”. This shows the facial device
must be used with certain cleansing lotion;
5 Daimlerchrysler AG v Javid Alavi (t/a Merc) [2001] R.P.C. 42 at 813,
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(b) in the invoices, “Bio-Beauty Device” and “Bio-Beauty 美容手機” appear as
an item under the description/contents column (“內容” is the actual wording
used). A description in invoices is usually just a general or generic
description of the goods involved, however I am more concerned with what
was actually bought and sold under the invoices. In the light of the
circumstances as discussed above, and according to Chung’s statutory
declaration, what was actually bought and sold should be the Bio-Beauty box
sets as shown in Exhibit “CLL-2” to Chung’s statutory declaration;
(c) in the case of the promotional leaflet, the claim that all references to the
subject mark in the leaflet are to the facial device alone is subject to dispute.
On the cover page, whilst “美容手機” appears immediately below the mark
, the words “有效提升護膚品功能 ” (meaning that it
effectively enhance the function of the skin care product) are displaced at the
bottom part; on page 2, photo of the whole Bio-Beauty set, including the
bottle of lotion, is depicted; on page 3, the facial device is depicted with the
bottle of lotion just beside it at a slightly behind position; the rest of the
promotional leaflet explains why can enhance the function
of the skin care product and describe how one should use the
product. All this suggest, if anything, the opposite to the
claim, viz., embraces not just the facial device but the Bio-
Beauty set sold as a whole, in particular, on page 10 of the promotional
leaflet, a large picture of the bottle of lotion was depicted, and aloe lotion (特
效蘆薈保濕精華素) was expressly listed as one of the component items of
;
(d) the statement of Ms Chung in paragraph 5 of her statutory declaration
accepted that the lotion was sold only as part of the Bio-Beauty set, it was
never sold on its own;
(e) as far as the statements of the saleslady as recorded in paragraph 18 of Man
Chi Hung’s statutory declaration were concerned, Ms Chung confirmed that
the subject mark was only used on the packaging and on the facial device but
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not on the lotion bottle, and the lotion in the Bio-Beauty set was not sold
separately. She pointed out that the subject mark was separately used as
printed advertising and promotional materials for the Bio-Beauty sets. There
was no comment on the statements that the aloe lotion was a free gift and
that customers could use other brands of lotion instead of the aloe lotion in
the Bio-Beauty box set. I would emphasis again that whether the lotion
should be considered as a free gift is a question of fact to be decided in the
present proceedings.
47. Following from all of the above, what should by now become clear is this:-
within the relevant period, the subject mark had been used on the packaging of the
Bio-Beauty sets which had the appearance as shown in Exhibit “CLL-2” to Chung’s
statutory declaration, containing essentially the facial device, an instruction manual on
how to operate the device and a bottle of lotion. The subject mark also appears on the
facial device and the instruction manual, but not on the bottle of lotion. Promotional
leaflets bearing the subject mark, however, were available and in my view as
discussed above, the subject mark was used in relation to the “Bio-Beauty” set as a
whole, which contains also the lotion, even though the facial machine is a major
component of the set.
48. In the light of the above, I agree that Mr. Ling’s submission, viz., that the
subject mark had been genuinely used on the lotion – which as contained in a bottle
that did not bear the subject mark but nonetheless formed an integral part of the Bio-
Beauty set which had the subject mark appearing conspicuously on the front of the
packaging that hold all of the items inside – is a closer connotation of what consumers,
in actual circumstances, would perceive to be the case, rather than the free gift mental
picture as suggested by the applicant’s side. With that I reject Mr. Pun’s point that use
of the subject mark on the “Bio-Beauty” sets does not extend to the lotion. The lotion
is, after all, part of the whole box set that consumers purchased. Consumers, whether
through reading the promotional leaflets or seeing the actual packaging of the “Bio-
Beauty” sets on display at the “HealthPlus” retail shops or outlets, came to know that
purchasing of the “Bio-Beauty” facial device would necessarily include getting the
lotion as well, as these two were bought and sold as a whole within the same box set
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and there is no other way known to get each of the items comprising the box set
separately and individually. Even though there is no information available what
portion of costs the lotion would make up in the price of the “Bio-Beauty” set, I do not
think consumers would perceive the lotion as just a free gift, nor as a promotional item.
This is more so given that facial lotion is an indispensable item in the essential
operation of the facial device. The analysis I have done above in relation to the
promotional leaflets just reinforces this. Clearly the subject mark had been used with
reference to the market of facial device as well as the market for lotion, if the two
were not one single big market of skin care essentials. I am satisfied that the
registered proprietor has been using the subject mark in order to create an outlet for
the goods of facial lotion, targeting those who would also purchase a facial device.
Revocation
49. Notwithstanding all the findings above, the evidence contains nothing that
can show that the subject mark had, since the date of registration, been used on or in
relation to any goods listed in the specification other than face care preparations. The
use by the registered proprietor on face care preparations partly saves the registration.
The registration of the subject mark is to be revoked for all goods save for face care
preparations. It is to be revoked in respect of all other goods with effect from 17
September 2008, which is the date specified in the notice of opposition as the date
from which revocation is sought to take effect. The specification is, therefore, to read:
“face care preparations.”
Costs
50. Both the applicant and the registered proprietor have sought costs. As each
side has achieved a measure of success, and counsel has reserved the right to make
submissions on costs, I shall not make any costs order without hearing the parties. I
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hereby direct both parties to make their respective written submissions on costs within
14 days from the date of this decision.
(Frederick Wong)
for Registrar of Trade Marks
30 May 2013