PORTER Case identifies location for service of proceedings

Hong Kong

In In Re Yoshida & Co Ltd (Case FAMV 8/2004, December 13 2004), the Hong Kong Court of Final Appeal has affirmed that proceedings commenced before the courts under the Trademarks Ordinance may be served on the local address for service recorded by an overseas trademark owner on the Trademarks Register.

Yoshida & Co Ltd of Japan filed an invalidation action against a PORTER mark 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 (firm), whose address was recorded on the Trademarks Register as the address for service of the PORTER registration. The firm 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 the firm.

On appeal, the Court of Appeal reversed the ruling and held that the service was valid (see Registered local address valid for service on overseas mark owners). The firm applied to the Court of Final Appeal for leave to appeal.

In dismissing the firm's application, the Court of Final Appeal endorsed the view of the Court of Appeal. In essence, it held that the ordinance and its related rules on "service of documents" do not contain any provision that restricts the address for service to proceedings before the registrar only. Such restriction is implausible given that the ordinance confers concurrent jurisdiction on the courts and the registrar in relation to various applications under the ordinance. No statutory purpose would be served by construing the address for service to the exclusion of proceedings before the courts.

The Court of Final Appeal's decision is not confined to invalidation proceedings brought before the courts and should equally apply to other applications under the ordinance, such as applications for (i) revocation of a registered trademark under Section 52, and (ii) variation of a trademark registration under Section 54.

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

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