In “Your Trademark Journey Could Still Go Very Wrong, Even with an Agent (Part I and Part II)!”, we discussed how a substandard trademark agent could haunt your business. You may however ponder if you could switch your agent and only engage a professional trademark lawyer (at higher costs) when serious issues arise? The short answer is a big “NO”. The long answer would be insightfully illustrated by a recent Hong Kong case [HCMP3591/2016 (Date of Decision: 13 April 2022)].
The factual matrix itself is not particularly relevant. For easy explanation, we will adopt Amy’s “Pinky Girl” Journey in “Common Law System is Better than Civil Law System?”, which is similar. Assuming Amy did file a trademark application for “Pinky Girl” in Hong Kong back in 2018 via a Mr. Pang (who represents himself as a trademark attorney (not a qualified solicitor)). Unfortunately, it was filed 10 days later than the earlier Italian brand’s “Pinky Girls” application, and the Registry refused Amy’s application by citing the “Pinky Girls” application. What would be the solution for Amy?
“I was taken by surprise that there was a competing application by Pinky Girls…Mr. Pang then said that in light of this competing application, we should oppose the Pinky Girls application first, rather than pursuing our own application. I asked Mr. Pang if we should seek further legal advice from a solicitor or counsel for the opposition proceedings. Mr. Pang said that we had a very good case given our established goodwill and use of our Pinky Girl mark and that he could handle the case himself…and would liaise with my staff where necessary and I had nothing to worry about.” Amy said.
Pausing here, if you were Amy, would you have trusted Mr. Pang? Thanks to the strong assuring words of Mr. Pang, probably many business people would have. Amy was already cautious enough to ask Mr. Pang again right before the opposition proceedings:-
“…I asked him again if we should engage solicitors/counsel to appear at the hearing and make representations on our behalf as Pinky Girls was legally represented. He reassured me that as “an attorney”, he knew what to do in our best interests.”
The opposition proceedings failed, and Amy angrily replaced Mr. Pang with a law firm /Counsel to lodge an appeal with the High Court of Hong Kong. As Mr. Pang (purportedly) failed to file a few pieces of important evidence in the opposition proceedings, Amy’s Counsel requested for adducing further evidence, pinpointing that Amy was not legally represented (Amy was under the wrong impression that Mr. Pang was a legal counsel), and therefore Amy ought to be allowed to file further evidence during the appeal.
Is such a request reasonable and what is your say? It seems that the High Court is not particularly pleased.
-
it is not enough simply to allow in any evidence which can be argued to be relevant. If such a low hurdle is imposed, other applicants and opponents will no doubt look at the decision adverse to them in the Registry, redesign their evidence and start again on appeal.
-
proceedings before the Registry are not a dry run to test out the evidence to see which parts can be criticised so that the evidence can then be perfected for the purpose of the proper run before the High Court.
-
litigants must put the best evidence available to them before the Registry as it is to ensure that the appeal is a fair resolution of the dispute between the parties.
-
it is still necessary for the court to consider the issue of how important the evidence is, whether it could have been put in earlier and why it was not and the weight that evidence is likely to have at the appeal.”
It appears that the court is suggesting that engaging an impotent agent at the earlier stage of proceedings would be at one’s own peril, and would unlikely be considered a legitimate excuse of not putting in a piece of important evidence earlier.
Yes, 6-year litigation is bound to be financially costly. However, it is the lingering unstable trademark status and the waste of time that deadly costs Amy’s business. If Amy were bold enough to replace Mr. Pang with an IP specialist when she received an official citation, things could have been improved dramatically.
The bottom line is, that whenever an adverse party (Pinky Girls in this case) emerges, think twice about your choice of the trademark agent.
