Wong To Yick Wood Lock Ointment Ltd v. Singapore Medicine Co. and Others

CACV 225/2021, [2023] HKCA 740

On Appeal From [2021] HKCFI 920

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF APPEAL

CIVIL APPEAL NO 225 OF 2021

(ON APPEAL FROM HCA NO 600 OF 2014 AND HCA NO 595 OF 2014)

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(Consolidated pursuant to the Order of Registrar Lung dated 8 July 2016)

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J U D G M E N T

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Hon Kwan VP:

1.I agree with the Judgment of Yuen JA.

Hon Yuen JA:

Introduction

2.This is the defendants’ appeal on Ground A of their Amended Notice of Appeal filed on 3 March 2023 from the Judgment of Wilson Chan J (“the judge”) given on 8 April 2021 (“the Judgment”)¹ after a trial which took 9 days in October - November 2019 followed by 2 days of closing submissions in August 2020.

3.1.  Primarily, Ground A is based on what has been called “judicial copying”. 

3.2.  After the Notice of Appeal was filed on 6 May 2021 and a Respondent’s Notice was filed on 27 May 2021, the defendants applied by summons on 17 November 2021 for (among other things) an order that the ground of judicial copying be determined as a “stand-alone” issue (“the Ground A appeal”).   

3.3.  On 23 August 2022, this court² gave a direction to that effect, and further directed that the other orders sought in the summons (i.e. a retrial before a different judge, and costs) be dealt with at the hearing of the Ground A appeal.

Background

4.1.  In 2014, the plaintiff commenced proceedings in:

-  HCA595/2014 (against the 4^th defendant in the subsequently consolidated action) and

-  HCA600/2014 (against the 1^st, 2^nd, 3^rd and 5^th defendants in the subsequently consolidated action)

for intellectual property claims involving its marks 黃道益 (Wong To Yick) and 黃道益活絡油 (Wong To Yick Wood Lock Medicated Balm) and get-ups.  The marks and get-ups are reproduced at Annex A of this Judgment, and will be referred to in this Judgment as “the plaintiff’s marks and/or get-ups”.

4.2.  The actions were consolidated in 2016, the 5^th defendant (“Mr Law”)’s wife the 6^th defendant (“Mrs Law”) and their daughter the 7^th defendant (“Ms Law”) being added as defendants.  Mr Law and Mrs Law control the 1^st to 4^th corporate defendants, and Ms Law trades as the 7^th defendant.  These businesses manufacture, distribute and sell products containing the marks and/or get-ups:

-  黃道人 (Wong To Yan) as depicted at Annexes B and C, and

-  黃道老人 (Wong To Lo Yan) as depicted at Annexes D - H attached to this Judgment. 

These marks and/or get-ups will be referred to in this Judgment as “the defendants’ marks and/or get-ups”. 

4.3.  The plaintiff alleged that products bearing the defendants’ marks and/or get-ups have been available on the retail market in Hong Kong since at least 2012³, and claimed injunctive and other relief in respect of:

-  passing off; and

-  infringement under s.18(3) and s.18(4) of the Trade Marks Ordinance Cap.559 (“TMO”) of its registered trade marks:

-  No.1995B09582 for 黃道益 (Wong To Yick), registered on 7 December 1991, and

-  No.300721764 for the get-ups, registered on 14 September 2006.

4.4.  Section 18(3) TMO provides:

“A person infringes a registered trade mark if –

(a) he uses in the course of trade or business a sign which is similar to the trade mark in relation to goods or services which are identical or similar to those for which it is registered; and

(b) the use of the sign in relation to those goods or services is likely to cause confusion on the part of the public”. (Emphasis added).

Section 18(4) TMO provides:

“A person infringes a registered trade mark if –

(a) he uses in the course of trade or business a sign which is identical or similar to the trade mark in relation to any goods or services;

(b) the trade mark is entitled to protection under the Paris Convention as a well-known trade mark; and

(c) the use of the sign, being without due cause, takes advantage of, or is detrimental to, the distinctive character or repute of the trade mark”.

Likelihood to cause confusion is not required for infringement under s.18(4), but this subsection only came into effect on 4 March 2003 and does not have retrospective effect.

Issues relevant to the Ground A appeal

5.There were a number of issues before the judge.  Only those relevant to the Ground A appeal will be discussed below.  In relation to these, the defendants’ contentions included (in summary):

-  the plaintiff’s get-ups consisted mostly of features common to the trade;

-  the defendants’ marks and/or get-ups were not identical or similar to the plaintiff’s marks and/or get-ups, in particular the image(s) of an elderly bearded man in the defendants’ products are different from the image(s) of Wong To Yick in the plaintiff’s products;

-  the plaintiff had not adduced any evidence of complaints of confusion or misrepresentation between its products and the defendants’ products, despite the fact that even on the plaintiff’s own case, the defendants’ products have been on the market for some 7 years by the time of trial;

and in any event,

-  since the 1980’s, the defendants had sold products under the brands 黃國民 (Wong Kwok Man) and 黃國武 (Wong Kwok Mo)⁴ with similar get-ups; 

-  since at least 1999, the defendants have been selling products bearing the mark 黃道人 (Wong To Yan);

-  on 15 May 2004, the defendants had applied to register 黃道人 (Wong To Yan) with the Chinese Medicine Council (“CMC”), and had for that purpose, supplied to the CMC invoices dated 1999 and packaging similar to some of the defendants’ marks and/or get-ups;

-  on 15 June 2006, the defendants had applied to the Trade Mark Registry to register 黃道老人 (Wong To Lo Yan) in the get-up in Annex G;

-  the plaintiff is barred by estoppel and/or acquiescence, and is also disentitled from relying on s.18(4) due to its delay in enforcing its rights if any.

Witnesses

6.1.  Although a witness statement had been made on behalf of the plaintiff by 程小冬 (Ching Siu Tung), a retailer, he was not called at trial.

6.2.  Mrs Law gave oral evidence over the course of 3 days.

The trial

7.A transcription service was used at the trial.  Both counsel provided comprehensive written opening and closing submissions.  There were also oral submissions on 25 and 26 August 2020.

The judge’s Judgment   

8.The Judgment was handed down on 8 April 2021, of which the text took 53 pages. Judgment was entered in favour of the plaintiff against the defendants for passing off and infringement under s.18(3) and s.18(4) TMO, for injunctive relief with ancillary orders including delivery up, discovery and an enquiry as to damages or an account of profits.  The judge also made an order nisi that the defendants pay the plaintiff’s costs with certificate for two counsel.

The defendants’ appeal

9.1.  On 6 May 2021, the defendants filed a Notice of Appeal.  There are 7 main grounds of appeal, of which Ground A is judicial copying.

9.2.  On 27 May 2021, the plaintiff filed a Respondent’s Notice.  This was in relation to the applicability or otherwise of the “global appreciation test” to passing-off, an issue which, in light of the matters below, it would not be appropriate for this court to deal with in this Judgment.     

Ground A appeal

10.1.  In support of the ground of judicial copying, there is attached to the Amended Notice of Appeal at Appendix 1 a table setting out a “paragraph by paragraph comparison” between the Judgment and the plaintiff’s opening and closing submissions (“the Table”). 

10.2.  According to the estimate of the defendants’ counsel⁵, the Table showed that

“over 98% of the Judgment were copied from P’s written submissions; among the remaining 2%, there is not one full sentence written by the trial judge in his own words”. (Emphasis added).

10.3.  The plaintiff’s counsel have not challenged the above estimate. 

10.4.  This court can also see for itself from the Table that the plaintiff’s submissions were copied verbatim, except for cosmetic changes such as replacing “P” with “the plaintiff”, “Ds” with “the defendants”, “Background” with “Introduction”, and the addition of the word “Bundle” before a bundle reference number.  There is a section in the Judgment headed “conclusion”⁶ but this was a “wrap up” section containing orders and directions only.

11.1.  The submissions of both sides on the Ground A appeal may be summarized as follows.

11.2.  The defendants submitted that:

-  not only is the Judgment entirely a replicate of the plaintiff’s submissions, the judge had also failed to consider and determine issues that they (the defendants) have raised;  

-  the above shows that the judge had failed to exercise his independent judgment in the matter, and that he had failed to give adequate reasons for coming to his decision;

-  the judge had not brought an independent mind to his judicial function, or at least, had not been seen to do so;

-  this court should order a retrial for the copied findings of fact in the Judgment cannot be relied upon, particularly when they include findings that “the evidence of Mrs Law is totally unreliable”⁷, “the evidence of the defendants is inherently unreliable and suspect”⁸, and the defendants had put up a “false case” that their products had been in use since the 1990’s⁹.

11.3.  The plaintiff submitted that:

-  the presumption of judicial integrity and impartiality has not been displaced, as extensive copying does not amount to cogent evidence which is needed to displace the presumption;

-  the transcript of the trial showed that the judge had asked relevant questions and was engaged with the submissions of both sides;

-  inadequacy of reasons should be argued at a substantive appeal and not as part of Ground A;

-  even if the presumption is displaced, this court should not order a retrial as a full transcript of the evidence is available, and this court can consider the issues afresh.

Discussion

12.1.   The complaint of judicial copying is often associated with the ground of inadequate reasons where the appellant complains that the judge has only copied the other side’s submissions, and has given no, or inadequate, reasons for rejecting his.  In Ground A of the Amended Notice of Appeal, the defendants complain in §7(h) that the judge had failed to give adequate reasons for his findings of the facts and the law, and a particular instance is set out at §14(d) dealing with the get-up of the Wong Kwok Man products which Mrs Law said had been in use since the 1980’s. 

12.2.  In the defendants’ submissions before this court, they have highlighted “key points” where they say the judge has given inadequate reasons for coming to a decision. 

12.3.  The plaintiff has submitted that inadequacy of reasons is a substantive ground of appeal and should not be “half-argued” as part of the Ground A appeal.   

13.Although the complaint of judicial copying is often linked with the ground of inadequate reasons, conceptually they are separate issues, and the court should tread carefully between them where, as here, the ground of judicial copying is to be determined as a “stand-alone” issue.  Hence, in this Judgment, where I refer to the “Ground A appeal”, it should be understood to mean only the ground of appeal based on judicial copying, and does not include inadequacy of reasons (although it has been referred to in the Amended Notice of Appeal under Ground A).

Judicial copying

14.1.  As observed in Crinion v IG Markets¹⁰, “information technology has made it seductively easy to do what the judge did ...¹¹. It has also made it embarrassingly easy to demonstrate what he has done”, as the Table shows in the present case. 

14.2.  In the past two decades, judicial copying has become the subject of discussions in the courts of Hong Kong, England and Wales, Canada and Australia.  It is helpful to set out the reasoning behind what is required of judges in their writing of judgments, as discussed in these courts.

15.1.  In Nina Kung v Wong Din Shin¹², the trial judge had copied verbatim from the written submissions of both parties.  In relation to the expert evidence on the issue of ink-dating, the “vast part” of the trial judge’s judgment was copied from the appellant’s submissions.  In relation to the expert evidence on the issue of hand-writing, at least 95% was copied from the respondent’s submissions, as were at least 50% of the rest of the judgment¹³. 

15.2.  The majority of the Court of Appeal¹⁴ did not allow the appeal on the ground of judicial copying.  Whilst holding it was unconventional, unnecessary and undesirable, the majority referred to the pressure of time for producing a judgment, the fact that the judge rejected some of the winning party’s submissions, and the interest in the proceedings that the judge showed during the trial. 

15.3.  In the Court of Final Appeal, Ribeiro PJ said he did “not find these arguments excusing the judge convincing”¹⁵.

15.4.  Ribeiro PJ held:

“446. There is of course nothing wrong with a judge accepting the submissions of one party or the other where he agrees with them. It is an everyday occurrence that a judge will adopt arguments made by one side or the other, often quoting verbatim a passage from a written argument. Usually, of course, this is openly acknowledged with the judge saying that he accepts the submission which was put in the way set out. However, the copying may occur to such a degree and in such a manner that serious questions may arise as to whether the judge has abdicated his judicial function or at least as to whether his conduct is such that justice has not been seen to be done by an independent judicial tribunal.

447. This was a problem adverted to by the US Court of Appeals, Third Circuit, in Bright v Westmoreland County (380 F3d 729 (3rd Cir 2004)) where, in response to the District Court Judge's request, attorneys for one side had submitted a proposed opinion and order of the court which the Judge had then adopted nearly verbatim as his opinion and order. It was a particularly bad case since, as Judge Nygaard noted (at 732), the District Judge had deprived the other side of the opportunity to object or even respond to the submitted opinion and order before adopting them as his own.

448. The fundamental point is that a judge must bring an independent mind to his judicial function and be seen to do so. Wholesale copying of one side's submissions is bound to raise doubts in the mind of the other side as to whether this has occurred and whether the points made on that other party's behalf have been adequately considered. Judge Nygaard put it as follows:

Judicial opinions¹⁶ are the core work-product of judges. They are much more than findings of fact and conclusions of law; they constitute the logical and analytical explanations of why a judge arrived at a specific decision. They are tangible proof to the litigants that the judge actively wrestled with their claims and arguments and made a scholarly decision based on his or her own reason and logic. When a court adopts a party's proposed opinion as its own, the court vitiates the vital purposes served by judicial opinions.’ (at 732)”. (Emphasis added).

15.5.  The reason why judges should desist from judicial copying is made abundantly clear in §448 of the CFA Judgment.  Nevertheless, this court has heard a number of appeals since that judgment was given (2005) in which judicial copying has still featured as a ground of appeal.  However, before referring to them, it may be helpful to refer to some cases in England and Wales, Canada and Australia on the issue.

Crinion

16.1.  In Crinion, the trial judge had taken the winning party’s submissions as his first draft and revised it with some mechanical and verbal changes, but the “overall impression” was that the judgment was “derived almost entirely” (calculated at some 94%) from those submissions¹⁷.  The losing party submitted on appeal that it should not be drawn into any argument about whether the judge’s decision was in fact right on the merits, for the judge’s approach to the whole exercise was flawed¹⁸.

16.2.  On appeal, the Court of Appeal of England and Wales held that it was “thoroughly bad practice” for the judge to construct his judgment in the way he did¹⁹, for:

(1)  the impression created was that the judge had abdicated his core judicial responsibility to think through for himself the issues which it was his job to decide, and that he had simply slavishly adopted the winning party’s arguments as his own.  Even if the judge had on his own proper and independent consideration come to the conclusion that those arguments were correct – “which is of its nature unknowable” – what matters is the impression that the judgment gives.  It is of fundamental importance that justice should not only be done, but should manifestly and undoubtedly be seen to be done.  A litigant who sees the other party’s submissions adopted in a wholesale way will justifiably not believe that his own side of the case has received any attention²⁰;

(2)  in following that course, the judge failed to address the losing party’s arguments.  It was the judge’s obligation to address at least the central arguments raised by the losing party and to explain why they were rejected.  

16.3.  The EWCA rejected the winning party’s submissions that it would just have been wasted labour for the judge to paraphrase his submissions, for (as Underhill LJ trenchantly put it) “appearances matter”.  By the wholesale copying of one party’s submissions, the judge risked giving the impression that he had not performed his task of considering both parties’ cases independently and even-handedly.  “The more extensive the reliance on material supplied by only one party, the greater the risk that the judge will in fact fail to do justice to the other party’s case – and in any event that that will appear to have been the case”²¹.

16.4.  Sir Stephen Sedley held

“Unequivocal acceptance of one party’s case has always posed a problem for judges. To simply adopt that party’s submissions, however cogent they are, is to overlook what is arguably the principal function of a reasoned judgment, which is to explain to the unsuccessful party why they have lost. Such an omission is not generally redressed by a perfunctory acknowledgment of the latter’s arguments. Even a party without merit is entitled to the measure of respect which a properly reasoned judgment conveys.

... in practice, for reasons which Lord Justice Underhill has described, the possibility of something approaching electronic plagiarism is new, and it needs to be said and understood that it is unacceptable. Even if it reflects no more than the judge’s true thinking, it reflects poorly on the administration of justice: for, as Lord Justice Underhill says, appearances matter”²². (Emphasis added).

16.5.  Longmore LJ also held that the incorporation of large parts of the winning party’s submissions without making reference to the submissions made by the other side “inevitably leaves a deep sense of grievance with the losing party” that the judge has not truly engaged with his case²³.  

17.It can be seen from the passages above with the emphasis on “appearances matter” that the EWCA was at pains to emphasize the detrimental impact that judicial copying has on the administration of justice.  As the CFA held in Nina Kung, not only must a judge bring an independent mind to his judicial function, he must also be seen to do so.

Cojocaru

18.1.  In Cojocaru and Another v British Columbia Women’s Hospital and Health Centre and Another[24], the trial judge in a medical negligence case found the hospital liable.  His judgment contained 368 paragraphs, of which 321 were reproduced from the winning parties’ submissions.  However, he did not accept all their submissions, as he:

-  dismissed their claims against two parties,

-  varied the quantum of damages sought by the winning parties, and

-  discussed a number of issues and stated his final conclusion in his own words. 

18.2.  The Supreme Court of Canada held that despite the extensive copying, it was not shown that the trial judge had failed to put his mind to the critical issues and decided them independently and impartially, as the reasons, read as a whole, showed that he had considered the issues and arguments on both sides and came to a conclusion on each of the main issues[25]. 

18.3.  McLachlin CJ, giving the judgment of the court, held that the issue was not whether the practice of judicial copying was “a good thing” but whether “when, if ever, copying displaces the presumption of judicial integrity and impartiality”[26].  In the course of the judgment, she referred to a number of cases in other jurisdictions on judicial copying.  It is noted however that in relation to Hong Kong, she referred only to the Court of Appeal judgment[27], but not the CFA judgment which overturned the CA on the issue[28].     

18.4.  McLachlin CJ said:

“31. ... Failure to attribute sources and lack of originality, without more, do not assist in answering the ultimate question -- whether a reasonable person would conclude from the copying that the judge did not put her mind to the issues to be decided, resulting in an unfair trial. ...

35. The concern about copying in the judicial context is not that the judge is taking credit for someone else’s prose, but rather that it may be evidence that the reasons for judgment do not reflect the judge’s thinking. They are not the judge’s reasons, but those of the person whose prose the judge copied. Avoiding this impression is a good reason for discouraging extensive copying. But it is not the copying per se that renders the process of judgment-writing unfair. A judge may copy extensively from the briefs in setting out the facts, the legal principles and the arguments, and still assess all the issues and arguments comprehensively and impartially. No one could reasonably contend that the process has failed in such a case.

36. To sum up, extensive copying and failure to attribute outside sources are in most situations practices to be discouraged. But lack of originality and failure to attribute sources do not in themselves rebut the presumption of judicial impartiality and integrity. This occurs only if the copying is of such a character that a reasonable person apprised of the circumstances would conclude that the judge did not put her mind to the evidence and the issues and did not render an impartial, independent decision.

49. In summary, courts in Canada and elsewhere have held that copying in reasons for judgment is not, in itself, grounds for setting the judge’s decision aside. However, if the incorporation of the material of others would lead a reasonable person apprised of all the relevant facts to conclude that the trial judge has not put his or her mind to the issues and made an independent decision based on the evidence and the law, the presumption of judicial integrity is rebutted and the decision may be set aside.

50. This does not negate the fact that, as a general rule, it is good judicial practice for a judge to set out the contending positions of the parties on the facts and the law, and explain in her own words her conclusions on the facts and the law. The process of casting reasons for judgment in the judge’s own words helps to ensure that the judge has independently considered the issues and come to grips with them. As the cases illustrate, the importance of this may vary with the nature of the case. In some cases, the issues are so clear that adoption of one party's submissions or draft order may be uncontroversial. By contrast, in complex cases involving disputed facts and legal principles, the best practice is to discuss the issues, the evidence and the judge’s conclusions in the judge’s own words. The point remains, however, that a judge’s failure to adhere to best practices does not, without more, permit the judge's decision to be overturned on appeal”. (Emphasis added).

18.5.  The Can SC considered the extent (87%) and quality of the copying and the nature of the case, including the judge’s rejection of some of the winning parties’ “key” submissions[29], and held that it could not conclude that the trial judge had failed to consider the issues and make an independent decision on them such that the presumption should be displaced.

Li

19.1.  The emphasis given by the Can SC in Cojocaru to the presumption of judicial integrity and impartiality was discussed in the New South Wales Court of Appeal in Li v Attorney General (NSW)[30].

19.2.  In that case, the applicant (who was not legally represented) had applied to a judge (referred to as the “primary judge”) under a statute for an inquiry into his sentence for supplying a prohibited drug.  The primary judge dismissed it in a decision in which he had copied the AG’s submissions and did not deal with the applicant’s submissions which were filed later (which, the NSW CA found, contained nothing new[31]).

19.3.  As the primary judge’s decision was final, the applicant applied to the NSWCA for judicial review.  The NSWCA found that the application to the primary judge under the statute was an administrative, not judicial, proceeding[32]. 

19.4.  However, as White JA said[33] “Brereton JA’s reasons demonstrate that the reasons for judgment of the primary judge would not meet the standard of reasons required if the judge were acting judicially to decide a controversy between parties”.  (Emphasis added).

19.5.  After an extensive analysis of authorities, Brereton JA held[34]:

“(1) reasons will be inadequate not only if it is not possible to discern from them the reasoning upon which the decision is based, but also if justice is not seen to have been done; and

(2) justice will not be seen to have been done if the ‘reasons’ are such as to leave a reasonable person in the position of the unsuccessful party with a justifiable sense of grievance at the appearance that the decision-maker has not addressed attention adequately, or at all, to the arguments of the parties, and understood the unsuccessful party’s arguments and either accepted them, or, if rejected, that the rejection was based on a clear and rational basis of reasoning”.

Brereton JA had earlier referred to the sense of grievance where the “reasons do not appear to be the product of the active application of an independent and impartial mind”[35].  

19.6.  In the section dealing with judicial copying of submissions, Brereton JA referred to a passage from Heydon JA’s judgment in Fyntray Constructions Pty Ltd v Macind Drainage & Hydraulic Services Pty Ltd [36]where he said:

“... [U]nless a trial judge endeavours to explain why one set of reasons is preferable, the reader cannot be sure that the competing strands of submission have been fully absorbed by the trial judge’s mind, analysed and transmuted into a personal conviction that the orders ultimately made are both just and in accordance with the law”. (Emphasis added).

19.7.  As regards the Can SC’s judgment in Cojocaru, Brereton JA held:

“131. Although the underlying issue is fundamentally the same – whether the judge has applied his or her independent mind to the evidence and the issues so as to render an independent and impartial decision – the approach adopted by the Canadian Court in Cojocaru gives much greater emphasis to a presumption of judicial integrity and impartiality, and less to the appearance of justice having been done by the bringing to bear of an active, impartial and independent judicial mind, than does the jurisprudence in this country. I would not accept that one commences from the position that there is a presumption to be displaced; the essential issue is not only whether there has been, but whether there is also seen to have been, from the perspective of a reasonable person in the position of the unsuccessful party, an independent and impartial judgment. Moreover, I am unpersuaded that absence of attribution is entirely irrelevant; its danger lies in the appearance of obscuring what is being done, which upon being discovered by the unsuccessful party is calculated to exacerbate a sense of grievance from the appearance that its opponent’s case has been adopted sub silentio, while its own was ignored.

132. Nonetheless, it is clear that extensive replication, whether or not attributed, of the submissions of one or both parties will not of itself amount to error, so long as the reasons sufficiently reveal that the decision-maker gave independent consideration to the relevant issues. However, this requires that the reasons appear to a reasonable person in the position of the unsuccessful party to demonstrate that the decision-maker has actively engaged with its submissions and contentions, and brought to bear an independent and impartial judgment founded on reason and logic. That requirement will not be satisfied if the reasons leave an impression that arguments have been embraced without serious consideration having been given either to the contrary point of view, or to the application of an independent point of view, as will be the case where reasons which substantially incorporate, reproduce and/or adopt the submissions of one party do not contain indicia, beyond mere formulaic and stylistic changes, that they are the product of the active application of an independent and impartial mind, which has absorbed and analysed the competing submissions to reach a personal conviction on the part of the judge that the orders to be made are just and in accordance with law”. (Emphasis added).

20.Pausing there, it seems to me that the law on bias as a ground of appeal suggests that (contrary to Brereton JA’s view) there is a presumption of judicial integrity and impartiality.  But that is not to say that because the judge is a person of integrity and would not have been biased in favour of one side, that therefore justice was, and would be seen to be, done irrespective of the contents of the judgment he delivers.  Litigants come to the court for the judge’s even-handed application of an independent intellect to the issues.  The important and binding “fundamental point” made in §448 of Nina Kung is that wholesale copying of one side’s submissions is unacceptable for “a judge must bring an independent mind to his judicial function and be seen to do so” (emphasis added). 

21.Notwithstanding that, as mentioned earlier, this court has heard a number of appeals since the CFA judgment was given (2005) when extensive judicial copying has still occurred in circumstances which may be described as “sailing close to the wind”.  In those appeals, the Court of Appeal has determined the issue of judicial copying, not by the percentage of the copying in any given case, but by the importance and quality of the judge’s own reasoning (which was not shown in the present appeal). 

22.1.  In Choi Yuk Ying v Ng Ngok Chuen³⁷, the trial judge dismissed the claim of a stepmother who had sued her stepson regarding the ownership of a property.  On appeal, one of the grounds was that many passages in the trial judge’s judgment had been reproduced, without attribution, from the submissions of the stepson’s counsel. 

22.2.  This court³⁸ said in its Judgment dated 20 February 2019:

“38.2. Comparing passages in the Judgment with those in the submissions of [the stepson’s] counsel, there can be no escaping the fact that many passages had been reproduced, without attribution, as part of the Judgment. With respect, this court needs to firmly discourage judges from adopting this approach, for the ‘wholesale copying of one side’s submissions was bound to raise doubts in the mind of the other side’ as to

- whether the judge had brought an independent mind to his judicial function, and

- whether the points made by the other side had been adequately considered.

38.3. The reproduction of only one side’s submissions as part of a judgment is bound to invite the sort of criticism that has been leveled against the judge in this case, and it is an unnecessary and undesirable distraction when the minds of the parties and the appellate court should be focused on the core issues raised in the case”. (Emphasis added).

22.3.  In that case, this court found that despite extensive copying, the judge had

-  articulated an alternative way of putting the stepmother’s case³⁹,

-  dealt with various considerations in her own words⁴⁰, and

-  added her own observations on the quality of the stepmother’s evidence⁴¹.

The judicial copying ground, and another ground, failed, and the appeal was dismissed.

23.1.  In Chan San v Hans Li⁴², the plaintiff succeeded in obtaining a declaration for adverse possession of a piece of land against the defendant.  On appeal, the defendant submitted, among other grounds, that the judge had taken some paragraphs from the plaintiff’s submissions and adopted them as the main parts of his judgment.

23.2.  This court⁴³ found that in that case, the defendant had no positive case⁴⁴, and that the judge had not accepted the plaintiff’s case in its entirety⁴⁵.  Nevertheless, “as a matter of caution”, it examined the evidence of the occupation and use of the area afresh, after which it came to the same view as the judge⁴⁶.

23.3.  Importantly, the court held⁴⁷:

“Having said that, we must stress that the way in which a judge expresses himself in a judgment is an important part of the judicial process. A judgment informs the litigants and the appellate court how the judge assesses the issues and the evidence before the court. Whilst sometimes it may be convenient to refer to submissions of counsel, substantial copying from such submissions should be avoided as it may give rise to an impression that the judge had not fully apprised of the issues independently, see Nina Kung v Wong Din Shin (2005) 8 HKCFAR 387 at p.515 to 517. Further, it is always better for a judge to express in his own language on how a finding or a conclusion on law is reached because in so doing the judge could refine his reasoning and explain the same in a more pertinent and coherent manner”. (Emphasis added).

24.That judgment was dated 19 March 2020, 15 years after Nina Kung and about a year after Choi.  Yet again in December 2020, this court had to deal with yet another appeal involving judicial copying.

25.1.  In Mathnasium Centre Licensing LLC v Chang Chi Hung⁴⁸, after a 5-day trial, the judge had found the defendant guilty of contempt of court for falsity in a pleading verified by a statement of truth.  The Judgment was 70 paragraphs long, of which 61 were near verbatim copies of the plaintiff’s submissions. 

25.2.  This court⁴⁹ allowed the appeal for reasons which are not material to the present appeal, but made the following observation on the ground of appeal based on judicial copying:

“61. We only wish to make one further observation. One of the grounds of appeal is that the judge failed to apply an independent judicial mind in arriving at his decision in that of the 70 paragraphs in the Judgment, 61 paragraphs were a ‘near-verbatim reproduction and adoption’ of the opening or closing submissions of the plaintiff’s counsel.

62. It is unfortunate that the Judgment was written in such a manner that lend itself to a challenge of this nature. [The plaintiff’s counsel] referred this court to parts of the transcript of the trial showing that it is clear from the judge’s exchanges with counsel that he had kept an open and independent mind by asking relevant questions during the oral submissions. It would also appear from those parts of the transcripts provided to us that at the end of the testimony of a witness, the judge had followed up with his own questions, demonstrating his keen interest in the evidence received by the court. We do not think that a reasonable person apprised of all the relevant facts would conclude in this instance the judge had not put his mind to the issues and made an independent decision. Had it been necessary, we would have held that the presumption of judicial integrity and impartiality had not been replaced by the incorporation of substantial parts of the plaintiff’s submissions in the Judgment. We would remind trial judges to adhere to the good judicial practice in judgment writing mentioned in Cojocaru ... [50], and Choi Yuk Ying ... [39]” (Emphasis added).

26.The last paragraph should not be understood to mean that as long as a trial judge demonstrates interest in or engagement with the issues during the hearing, that would permit wholesale copying from one side’s submissions for the judgment. In the present appeal, the plaintiff’s counsel has referred this court to passages scattered throughout the transcript to show that the judge, through his questions, was aware of and engaged with the various issues in the case. But as stated in Nina Kung, a judge’s “core work-product” is the judgment.  For that, he must bring his own mind to bear on the issues and demonstrate it by expressing, in his own language (however succinctly), how a finding of fact or a conclusion in law is reached.  That task cannot possibly be substituted by a judge’s expressions of interest in or engagement with the issues during the hearing.

27.1.  At the trial in the present case, the defendants provided a written closing of 36 pages of text, attached to which were a 20-page analysis of blog posts and extracts of 17 pages from the transcript.  They have submitted that the judge did not engage with their submissions⁵⁰ e.g. on the fact that the plaintiff had not filed notices of non-admission of authenticity of the 1999 invoices in the CMC file during discovery⁵¹, or as to why there was no witness who gave evidence of confusion in the past 7 years (with no explanation given of Ching’s absence at trial⁵²).

27.2.  Yet there was only a wholesale copying of the plaintiff’s submissions in the judgment, as shown in the Table, in the face of case law reminding trial judges time and again to desist from doing so.  A reasonable person can hardly be assured that the judge has been willing or able to apply his own intellect to the issues and to come to grips with them himself.  As the CFA said in Nina Kung, the “fundamental point” is that a judge must bring an independent mind to his judicial function and be seen to do so.

28.The present action was clearly hard-fought, but the more complex the issues (whether of fact or law), the more vigorous the arguments, the more crucial is the judge’s task to adjudicate the issues between the parties critically, with an independent and careful mind.  And if he simply copies one party’s submissions extensively as his judgment, the more justified would be the losing party’s sense of grievance that the judge had just taken the easy way out and abdicated his judicial responsibility.  With regret, I have to say that the extent and quality of the copying in this case, given its nature, is cogent evidence rebutting the presumption, and would leave a reasonable person with a justified sense of grievance.  This court is left with no choice but to conclude that the Ground A appeal should be allowed.

Re-trial?

29.1.  The question then is whether this court should order a re-trial before another judge.  It is obvious that in view of the expense and time required for a retrial, this is a last resort which should be avoided if justice can be done to the parties otherwise. 

29.2.  Any retrial is inherently undesirable.  Whether it is necessary depends on the nature of the case, which provides the answer to the question whether the appellate court would be able to determine the issues afresh without having to order a retrial. 

29.3.  If the case comprises only issues of law, that can easily be done.  If the issues include arguments of fact, that would depend on the nature of the factual disputes and the evidence.  If the factual disputes relate to expert opinions for which full transcripts of the experts’ oral testimony are available (as in Nina Kung), or arise from interpretation of objective evidence such as survey sheets or aerial photographs (as in Chan San), then a retrial may not be necessary.

30.1.  In the present appeal, the plaintiff acknowledged in its submissions in this court that “the nature of the case is a civil matter with the critical issues almost entirely being factual disputes”⁵³. 

30.2.  The main factual disputes included whether:

-  the defendants had started using their get-up in the 1980’s, which they sought to prove by the production of the Wong Kwok Man products;

-  since 1999, the defendants have been selling Wong To Yan products which they sought to prove by (among other things) their application on 15 May 2004 to register Wong To Yan with the CMC, with proof of sale on the Hong Kong market for 5 years prior thereto in the form of invoices and the packaging in use; and

-  the defendants had used Wong To Lo Yan in the Annex G get-up, which they sought to prove by their application to the Trade Mark Registry to register that mark in 2006.

31.1.  Mrs Law gave oral evidence on all these issues over the course of 3 days.

31.2.  The plaintiff sought to undermine the probative value of the defendants’ evidence on the issues above, arguing (among other things) that:

-  Mrs Law’s oral evidence on the sale of Wong Kwok Man products since the 1980’s was “vague and evasive”⁵⁴;

-  her evidence was “totally unreliable” in relation to the materials supporting the CMC application; the defendants had not sold, and did not intend to sell, Wong To Yan products, and they had only made the application as a “place-holder”⁵⁵;

-  her evidence under cross-examination did not support her initial evidence that Wong To Lo Yan in the Annex G get-up had been put on the market in 2006⁵⁶.

32.It is clear from the above that Mrs Law’s credibility was important to the determination of the factual disputes.  Copying the above submissions verbatim, the judge held (among other criticisms of Mrs Law’s evidence) that the defendants had put forward a “false case”⁵⁷.

33.Mrs Law’s credibility cannot be assessed by this court by reading selected extracts of the transcript.  As Lewison LJ put it in FAGE UK Ltd v Chobani UK Ltd58, such an exercise would be like “island-hopping in a sea of evidence”.  The findings against Mrs Law were primary findings of fact, not findings made only by a process of inference.  Such findings should properly be made by a trial judge assessing her evidence independently, not an appellate court59. For this reason, with regret, an order for a retrial before another judge is unavoidable, and any other course would not accord with justice. 

Order

34.By reason of the above, it is ordered that:

-  the appeal on Ground A (judicial copying) is allowed,

-  the Judgment is set aside, and

-  there be a retrial before another judge, with an early date to be given.

Costs  

35.I would make an order nisi that the defendants' costs of the appeal (with certificate for two counsel), and the parties' costs below, be in the cause of the retrial.  In relation to the defendants' costs of the appeal, what is meant is that if the defendants succeed at trial, the plaintiff would have to pay their costs of the appeal.  My tentative thinking behind this order (subject to any submissions which may be made in any application to vary the order nisi) is this: generally, a successful appellant should be awarded the costs of the appeal to be paid by the unsuccessful respondent, and this is so even though the appeal is allowed for reasons which cannot be attributed to the fault of either party, on the ground that the unsuccessful respondent could have remained neutral, or even conceded the appeal.  In the present appeal, however, it should be noted that one of the matters included (albeit peripherally) in the Ground A appeal was inadequacy of reasons.  In view of that, it was prudent for the plaintiff to come to this court to contend that the court should not determine this issue, and that the defendant's arguments on it should be left to the substantive appeal (if a retrial is not ordered) or the retrial.

Hon G Lam JA:

36.I agree with the Judgment of Yuen JA.

Annex A

Annex B

Annex C

Annex D

Annex E

Annex F

Annex G

Annex H

Annex I