Rolex Sa and Another v. Heng Rui Jing Shi Watch Repair Co., Ltd

HCIP 1/2019

[2020] HKCFI 2064

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

INTELLECTUAL PROPERTY PROCEEDINGS NO. 1 OF 2019

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BETWEEN

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J U D G M E N T

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1.This is an application for summary judgment against the Defendant.

2.The Plaintiff is a well-known watch company.  It is a plain case that an investigator engaged by the Plaintiff had brought a genuine “Rolex” watch (“the Watch”) to the Defendant for repair.  After the repair, the Defendant’s shop replaced some parts of the Watch with the counterfeit Rolex’s parts which bore the forged trade mark of the Plaintiff.

3.The Plaintiff had informed the Defendant as early as September 2019 that they intended to make the application for summary judgment.  The only issue in the present case is whether the transaction as alleged by the Plaintiff had ever taken place.  The Defendant has filed a very simple affidavit in opposition by the shop manager, Ms Chow, denying the transaction.

4.In the hearing today, Mr Wong, counsel for the Defendant, asks the court to give the Defendant a further opportunity to file evidence by its owner to the effect that she has not given any authorization to the management of the shop to do such kind of infringement act.  However, even if such affirmation is to be filed, it would not alter the result of this case.  Hence, there is no need for the case to be adjourned for the Defendant to file further evidence in this regard.

5.The legal principles for summary judgment are well-established.  If there is genuine dispute of fact, the defendant can establish an arguable defence and the court has to give an opportunity to the defendant to defend the claim.  The burden on the part of the defendant is actually quite low.

6.However, I take the view that there is no triable issue in the present case.  The reason being that, in support of its application, the Plaintiff is able to produce a repair note issued by the Defendant confirming the transaction.  What is fatal about the defence is that the Defendant’s shop manager, Ms Chow, did not say anything in relation to such repair note in her affirmation.  It is akin to a case that there is a written contract signed between two parties, and bare allegation is made by one party that he did not make the contract.

7.In such case, the Defendant would have the burden to go further to explain why the repair note was being issued.  At the very least, the Defendant has to deny that the repair note is a genuine document. In the absence of any positive allegation that the repair note is a forged or inaccurate document, I take the view that such omission is fatal to the defence case.

8.It is clear that, in a summary judgment application, the burden is on the defendant to establish an arguable defence.  As the Defendant has failed to discharge such burden in the present case, I grant summary judgment in favour of the Plaintiff.

Mr Philips B. F Wong, instructed by Deacons, for the Plaintiffs

Mr Joseph Wong, instructed by Bryan Chan & Co., for the Defendant