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Hong Kong : Court refused to allow Appellant to adduce new evidence on appeal after having lost the trademark opposition

The trademark laws in Hong Kong provide that the court shall have power to receive further evidence on questions of fact, and the evidence may be given in such manner as the court may direct. The following factors are relevant when determining whether to admit new evidence on appeal:

(a) Whether the evidence could have been filed earlier and if so, how much earlier;
(b) If it could have been, what explanation for the late filing has been offered to explain the delay;
(c) The nature of the mark;
(d) The nature of the objections to it;
(e) The potential significance of the new evidence; and
(f) Whether or not the other side will be significantly prejudiced by the admission of the evidence in a way which cannot be compensated for example by an order for costs.

The onus is on the Appellant to justify the exercise of the court’s discretion in its favour and merely showing the evidence sought to be adduced is relevant is not enough.

In a recent case the Appellant explained, inter alia, that “it was the first time it has been involved in trademark opposition in Hong Kong and it relied on their then legal advisor to prepare the evidence in an appropriate way. Unfortunately, not all the evidence that could have been filed was filed”.

The court held that such explanation of “unfortunate” is wholly unsatisfactory and the court should guard against allowing the parties to treat the hearing in the Trade Marks Registry as a dry run to test out the evidence. This reason alone would have been sufficient for the court to exercise the discretion against the filing of new evidence. The court does not encourage cases where the appellant as the losing party wishing to redesign and tailor its evidence having regard to adverse decision against it by way of adducing new evidence on appeal.

22 April 2021 by David Tsai

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Benny Kong & Tsai, Solicitors

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