【正文】 300065213 for平安, both in class 36 and registered in respect of the services stated in Chinese characters as “財務；金融事務；房地產(chǎn)事務” (translated as “finance, financial affairs and real estate affairs”). The declaration of invalidity is sought only in respect of the services “financial affairs and monetary affairs”. 12. The two Trade Mark registrations were granted on applications made on 20559 (“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 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 peting rights acquired by prior use. Under the present law, as relevant to this case, registration of a trade mark may be refused, 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. 14. Section 53 of the Ordinance prescribes 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 …(b) 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 satisfied.…(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.”15. Section 12(5)(a) is the relevant provision and reads :“(5) … a trade mark shall not 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)。 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 general 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 goods or services which he supplies in the mind of the purchasing public by association with the identifying ‘getup’ (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 public, such that the getup is recognised by the public as distinctive specifically of the plaintiff’s 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 offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff’s 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 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 likely to suffer damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the plaintiff.”18. In the context of a challenge to trade mark registrations, there may be no actual conduct 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 context 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.19. Mr John Yan SC, who appeared with Mr Philips Wong for the appellant, invited the Court to approach the assessment of the issue of likelihood of confusion (Lord Oliver’s 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 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 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 wellestablished principles of the law of passing off, directives for the interpretation of European trade mark statutes. The Court of First Instance20. The 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 re