Registered local address valid for service on overseas mark owners

In In Re Yoshida & Co Ltd (Civil Appeal 399/2003), the Hong Kong Court of Appeal has ruled that invalidation proceedings commenced under the Trademarks Ordinance implemented last year may be served on the local address for service recorded on the Trademarks Register by an overseas trademark owner.

Yoshida & Co Ltd of Japan filed an invalidation action against the device mark PORTER registered by Porter International Co Ltd, a Taiwanese company, pursuant to Section 53 of the ordinance. The notice of originating motion was served on a Hong Kong firm of solicitors, Cheung & Choy (C&C), whose address was recorded on the Trademarks Register as the address for service of the PORTER registration. C&C disputed the validity of such service, arguing that the address was only valid for service of documents used in proceedings brought before the Trademarks Registrar. The Court of First Instance ruled in favour of C&C. Yoshida appealed.

The Hong Kong Court of Appeal reversed the decision and accepted that the service was valid. In referring to Section 91(2)(g) of the ordinance, which authorizes the enactment of the Trademarks Rules on "service of documents", the court held that the service of documents was neither confined to any particular document nor restricted to service of documents used in the Trademarks Registry. Considering that the ordinance contains specific provisions that authorize commencement of invalidation proceedings before the court, "service of documents" would encompass service of all types of documents, including those relating to court proceedings. Thus, the address for service as recorded on the Trademarks Register was effective in relation to all matters, including court proceedings.

Further, given that C&C had conceded that Porter already had notice of the invalidation proceedings, the court remarked that even if it had concluded that notice had been incorrectly served, Porter had still obtained adequate notice of the proceedings and the proceedings could be continued without further delay.

This ruling is not confined to invalidation proceedings brought before the court and should also apply to applications made to the court pursuant to other provisions in the ordinance, such as applications for revocation of a registered trademark under Section 52.

Yvonne Chua and Thomas Tsang, Wilkinson & Grist, Hong Kong