Cross-Examination Triumphs: Bad Faith Exposed

Cross-examination of witnesses in Hong Kong Trade Marks Registry hearings rarely occur, but hearing decisions issued in 2025 report two such instances.

In one such case, being a trade mark opposition, the gist of the case turned on whether the Applicant copied the relevant mark from the Opponent, and filed the trade mark application in bad faith. The Applicant filed as part of their evidence a Statutory Declaration from an individual claiming to be closely associated with the Applicant and involved in the creation of the mark in dispute. The Opponent requested the attendance of this deponent at the hearing for cross-examination, which was allowed by the Registrar.

The Hearing Officer summarized the Applicant’s arguments in response to the Opponent’s claim of “copying” as follows: 

(i) the subject mark was created by the Applicant’s business partners through internal brainstorming sessions and discussions. The subject mark was said to incorporate one of the partners’ registered mark and shares similar concept with marks used/owned by the Applicant’s business;

(ii) the deponent/witness was the person who conducted research and due diligence relating to the mark before filing the subject application, and there was no search result showing use of the same mark by the Opponent;

(iii) research and due diligence conducted shortly before filing the subject application showed that the mark is a generic term; and

(iv) the subject application was made taking into account all of the above.

Although the witness maintained in the cross-examination that the subject mark was collectively created by the Applicant’s business partners through internal discussions and shares similar concept with other marks used/owned by the Applicant’s business, such assertion was not supported by contemporaneous evidence, not even a single piece of record, internal notes, texts or messages.

Similarly, although the witness, under cross-examination, asserted that she had conducted Google searches and that she had a list of search words and she conducted various items of research including website search, trade mark offices searches, etc., again, there was no notes or records on the list of search words, or any of the items of researches and due diligence conducted in respect of the search words.

The Hearing Officer points out in the decision that not only that the author/creator of the subject mark and the source of the alleged concept of the subject mark could not be identified, the Applicant’s evidence on the alleged research and due diligence done by the witness prior to the filing of the subject application as stated in the relevant Statutory Declaration and the witness’s oral evidence is also inconsistent and illogical.

One such inconsistency relates to point (iii): the witness contends that their research prior to the filing of the application showed that the mark is a generic term. That begs the question: why on earth did they file for registration of a generic term? The witness’s answers to such and other related questions were full of inconsistencies and illogicality.

All in all, the Hearing Officer holds that the evidence given by the witness in both her statutory declaration and during cross examination could not be relied upon to support the Applicant’s arguments against the Opponent’s claim of “copying”. The Hearing Officer thus considers that the Applicant’s decision to apply for registration of the subject mark in respect of the relevant services falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the relevant field, and the application for registration of the subject mark was thus refused as being made in bad faith.

When faced with evidence (most probably statutory declarations) the veracity of which seems doubtful, in addition to casting doubt on such evidence by arguments alone, trade mark practitioners handling contentious proceedings at the Registry may also consider seeking to cross-examine the person making the statutory declaration. Conducting cross-examination is an art, but it is an art which trade mark practitioners would be well advised to be well versed in.

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