The Hong Kong Trade Marks Registry has issued two decisions in early 2025 that demonstrate the Registry’s approach to invalidating registrations on grounds of bad faith under section 11(5)(b) of the Trade Marks Ordinance (Cap. 559). 

These cases, both unopposed and decided without a hearing, highlight the high evidentiary burden for proving bad faith while illustrating how certain recurring factors can tip the scales in favor of invalidation. Below, I provide brief summaries of these two cases and analyze the common factors that led to the Registrar’s findings. 

Case 1: The Department of the Navy v. S.W.I. Watches Inc.

In this decision, the Registrar invalidated a trade mark registration which consisted of the words “NAVY SEALS”, combined with a device resembling the U.S. Navy SEALs’ Special Warfare Insignia (“Seal Trident”). The trade mark was filed by S.W.I. Watches Inc. in 2011, covering goods in Classes 9 (e.g., sunglasses and eyeglasses), 14 (e.g., watches and clocks), and 18 (e.g., leather bags and wallets). 

The U.S. Department of the Navy applied for invalidation and provided unchallenged evidence of its long-standing use of the “NAVY SEALS” word mark and its Seal Trident device mark (collectively, the “Navy’s Marks”) since the 1960s and 1970s, respectively. Watches under the “NAVY SEAL” brand were also designed and produced since the 1990s. The Registrar found that the subject mark was identical or highly similar to the Navy’s Marks. The registered owner did not file a counter-statement or any evidence. 

Applying principles from UK and Hong Kong case law (e.g., Red Bull GmbH v Sun Mark Ltd, full decision can be found here, and Owndays Co Ltd v Professional Optometrist Ltd, full decision can be found here), the Registrar inferred knowledge of the Navy’s Marks on the part of the registered owner. Given the Navy’s Marks’ non-descriptive nature, it was hard to believe that the registered owner had independently come up with the subject mark for use on the subject goods without knowledge of the Navy’s Marks. 

The registration was declared invalid under sections 11(5)(b) and 53(3).

The full decision can be found here.

Case 2: WeJoy Pte. Ltd. v Snowboy Digital Limited

In a subsequent decision, the Registrar invalidated a trade mark registration for "We Play”. This trade mark was filed in 2022 by Snowboy Digital Limited (a Hong Kong company) for goods and services in Classes 9 (e.g., computer software and mobile applications) and 38 (e.g., telecommunications services like chatrooms and message transmission).

The applicant, WeJoy Pte. Ltd. (a Singapore-based software company), demonstrated prior use of its stylized "WePlay" mark (combined with a device element) since March 2021 for entertainment software with gaming and social features. Evidence included copyright registrations in China, global app releases on platforms including Google Play and App Store, and promotions on social media. This earlier mark was deemed highly similar (visually, phonetically, and conceptually) to "WePlay", with both targeting overlapping software and telecom services.

Again, the registered owner filed no counter-statement or evidence, rendering the proceedings unopposed. The Registrar noted additional red flags: Snowboy had filed multiple applications in Hong Kong and elsewhere for marks identical or similar to other companies' brands (e.g., "FLALA," "Bondee," and "LITMATCH"), suggesting a pattern of "squatting." A Japanese refusal of Snowboy's "WePlay" application also supported the inference of copying. Citing the same bad faith principles, the Registrar concluded that the registration was invalid under sections 11(5)(b) and 53(3).

The full decision can be found here.

The High Threshold for Bad Faith and Common Factors Leading to Findings

Bad faith remains a challenging ground for invalidation in Hong Kong trade mark law. As emphasized in both decisions, it is a serious allegation requiring cogent evidence on the balance of probabilities. 

In spite of this high threshold, the Registrar found bad faith in both cases due to several factors:

1. Unchallenged Evidence of Prior Use: In each instance, the invalidation applicant provided robust, uncontested proof of earlier rights (e.g., historical use, licensing, or registrations). 
2. Similarity: Per Mila Schön Group SpA v Lam Fai Yung, full decision can be found here, an inference of derivation or copying was also drawn where the registered owner’s mark and applicant’s mark were very similar. 
3. Lack of Response from the Registered Owner: Both proceedings were unopposed, with no counter-statements or evidence filed. The owners' silence, in the face of serious accusations, permitted adverse inferences under Ip Man Shan Henry v Ching Hing Construction Co Ltd, full decision can be found here, i.e. that any evidence (even if adduced) would not displace a prima facie case in favour of the applicant for invalidation.

These commonalities demonstrate that while bad faith is not lightly inferred, high similarity of marks and evidential gaps can lead the Registrar to draw adverse inferences. 

These decisions serve as a cautionary tale for applicants: filing without due diligence risks invalidation, especially if challenged by rights holders with prior global use. For brand owners, they reinforce the value of proactive monitoring and evidence gathering, even in unopposed proceedings.