Fuchs Petrolub Se v. Germany Fusi Oil Chemical Industry Ltd

HCA 358/2018

[2018] HKCFI 1031

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO 358 OF 2018

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J U D G M E N T

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1.This is the Plaintiff’s application for judgment against the Defendant in default of notice of intention to defend and also of defence. 

2.Upon reading the affirmation of Tang Tak-wai filed on 18 April 2018, and the Plaintiff’s Skeleton Submissions, I am satisfied that the Writ of Summons, the Statement of Claim, and the Summons for the present application dated 12 April 2018 (“the Summons”) were properly served on the Defendant.  Up to this date, the Defendant has failed to respond to these proceedings. 

3.Whilst the Summons specifically refers to Order 19, rule 7, it appears to me that Order 13, rule 6 is also relevant, since the default relates to the Defendant’s failure to give both notice of intention to defend and also its defence. 

4.The Plaintiff’s claims concern trade mark infringement and passing off, and its pleaded case can be summarised in the following paragraphs. 

5.The Plaintiff is a company incorporated under the laws of the European Union with its principal place of business in Germany.  It is now the parent company of FUCHS Group, a well-known international manufacturer and supplier of lubricants and other petrochemical products which are widely used in a variety of industries.  For many years, the Plaintiff has been marketing its products and related services worldwide, including Hong Kong and Mainland China under the trade names of “FUCHS”, and/or “福斯”, and also trade marks “FUCHS”, “  ”, and/or “福斯”. 

6.The Plaintiff is the registered proprietor of a number of trade mark registrations in Hong Kong, the details of which are set out in Schedule A attached to the Statement of Claim, and the trade marks have been registered for, amongst others, chemicals used in industry, industrial oils and greases, lubricants, petroleum jelly, for industrial purposes. 

7.It is the Plaintiff’s case that it has established a valuable goodwill and reputation in the trade names and trade marks, which are highly distinctive of the Plaintiff’s business and its goods and services.  The Plaintiff’s trade names and trade marks are also well known to the trade and members of the public who would take the same as references to the Plaintiff’s business, goods and services.  Moreover, section 14(1) of the Trade Marks Ordinance, Cap 559, provides that “the owner of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in Hong Kong without his consent” and section 14(2) provides that “the acts constituting infringement of a registered trade mark,if done without the consent of the owner, are specified in section 18 but the [acts of infringement] are subject to exceptions.”

8.The Defendant, Germany Fusi Oil Chemical Industry Limited (德國孚斯石油化工有限公司), is a company incorporated under the laws of Hong Kong with its registered office at Room 1, 21^st Floor, Prosper Commercial Building, 9 Yin Chong Street, Kowloon, Hong Kong.  The sole owner and director of the Defendant is an individual named Liu Haijun with an address in the Shandong Province of Mainland China.  The Defendant operates a website at http://wuxifusi.com where it markets, sells and offers for sale lubricants, industrial oils, engine oils, by reference to the marks of “FUCHS” and “孚斯” (which is contained in the company name of the Defendant) and according to the Plaintiff’s case, such marks are either identical or confusingly similar to the Plaintiff’s trade marks.  I have been informed by the Plaintiff’s solicitors that “Fusi” is the Putonghua pinyin of the Plaintiff’s name in Chinese “孚斯” and the pronunciation of “孚斯” in Putonghua is identical to that of “福斯”. 

9.Further, as alleged by the Plaintiff, this seems to be another example of the use of a shadow company, with its name and trade mark very similar to those of a well-known company in order to pass off as that company in conducting business in Hong Kong and Mainland China (see Power Dekor (Hong Kong) Ltd v Power Dekor Group Co Ltd[2014] 1 HKLRD 845, 847 – 848, paragraphs 5 – 6).

10.The Defendant has also supplied products bearing the marks of “FUCHS” and “孚斯” to a Taobao trader operating on the internet.  The Plaintiff alleges that the Defendant has committed acts of passing-off in that the Defendant’s use of the marks as specified above, which are either identical or confusingly similar to the Plaintiff’s trade names and trade marks on goods which are identical or similar to the Plaintiff’s products, willlikely mislead the public into believing that the goods sold by the Defendantwere goods of the Plaintiff, see Reckitt & Colman Products Ltd v Borden Inc[1990] 1 WLR 491, at 499E–H. 

11.It is also the Plaintiff’s case that the Defendant has, by reason of the above acts, infringed the Plaintiff’s registered trade marks by virtue of section 18(1) and (2) of the Trade Marks Ordinance. 

12.Upon considering the contents of the Statement of Claim and also the Plaintiff’s Skeleton Submissions, I am satisfied that the Plaintiff is entitled to the relief sought in the Statement of Claim.  I therefore order that judgment be entered against the Defendant in terms of paragraphs 1 to 6 of the summons.  I also make an order that costs of this action, including costs of and occasioned by this application, summarily assessed at HK$30,000, be paid by the Defendant to the Plaintiff forthwith. 

Mr H Y Leung of Robin Bridge & John Liu, for the plaintiff

The defendant was not represented and did not appear