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CACV000081/1979
| IN THE COURT OF APPEAL |
1979 No. 81 |
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(Civil) |
| BETWEEN |
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YOSHIDA KOGYO K.K. |
1st Appellant |
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(1st Plaintiff) |
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YKK COMPANY (HONG KONG) LTD. |
2nd Appellant |
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(2nd Plaintiff) |
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YKK ZIPPER CO. (HONG KONG) LTD. |
3rd Appellant |
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(3rd Plaintiff) |
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AND
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YOSHIDA KOGYO (YKK) LIMITED |
1st Respondent |
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(1st Defendant) |
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TUNG KAM KONG |
2nd Respondent |
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(2nd Defendant) |
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JENNIFER LI YUE CHING |
3rd Respondent |
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(3rd Defendant) |
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Coram: Huggins and McMullin, JJ.A. and Cons, J.
Date of Judgment: 22 April 1980
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JUDGMENT
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Huggins, J.A. :
1. The Plaintiffs took out a summons for interlocutory injunctions to prevent the use of a business name, on the ground of probable confusion with the names of the Plaintiffs. The judge granted an injunction in terms narrower than those sought and the Plaintiffs now appeal, pressing for relief in the wider terms of the summons. Those were:
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1. An injunction to restrain the 1st, 2nd and 3rd Defendants and each of them, and in respect of the 1st Defendant whether acting by itself, its directors, officers, servants or agents or any of them or otherwise howsoever from carrying on business or registering a company under the name 'YOSHIDA KOGYO (YKK) LIMITED' or under any name comprising the words 'YOSHIDA KOGYO' or the particular sequence of the letters of the alphabet 'YKK' or any name likely to mislead or deceive the public into the belief that 'YOSHIDA KOGYO (YKK) LIMITED' is the same company as or a subsidiary, affiliated or associated company of the Plaintiffs or any of them, or that 'YOSHIDA KOGYO (YKK) LIMITED' was the same as or was in any way connected with the business of the Plaintiffs or any of them or otherwise howsoever from passing off, attempting to pass off, causing, enabling or assisting others to pass off the business not that of or that in any way connected with the Plaintiffs or any of them as and for that of or that in any way connected with the Plaintiffs or any of them. |
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2. An injunction to restrain the 2nd and 3rd Defendants and each of them from allowing the 1st Defendant to remain registered under its present name or under any name comprising the words 'YOSHIDA KOGYO' or the particular sequence of the letters of the alphabet 'YKK' or any colourable imitation thereof. |
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3. An injunction to restrain the 1st Defendant from remaining to be registered under its present name or under any name comprising the words 'YOSHIDA KOGYO' or the particular sequence of the letters of the alphabet 'YKK' or any colourable imitation thereof. |
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4. An injunction ordering the Defendants to vacate the registration of the 1st Defendant in the register of companies under its present name or under any name comprising the words 'YOSHIDA KOGYO' or the particular sequence of the letters of the alphabet 'YKK' or any colourable imitation thereof. |
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5. An injunction to restrain the 2nd and 3rd Defendants from conspiring and combining amongst themselves to injure the Plaintiffs or any of them in their business by carrying on business or registering a company or allowing a company to remain registered under the name 'YOSHIDA KOGYO (YKK) LIMITED' or under any name comprising the words 'YOSHIDA KOGYO' or the particular sequence of the letters of the alphabet 'YKK' or any name likely to mislead or deceive the public into the belief that 'YOSHIDA KOGYO (YKK) LIMITED' is the same company as or a subsidiary, affiliated or associated company of the Plaintiffs or any of them, or that 'YOSHIDA KOGYO (YKK) LIMITED' was the same as or was in any way connected with the business of the Plaintiffs or any of them." |
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The injunction granted by the judge was as follows:
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UPON the 2nd and 3rd Defendants by their Counsel undertaking to change the name of the 1st Defendant by at least deleting the letters '(YKK)' in the name of the 1st Defendant within two months from today |
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IT IS HEREBY ORDERED that until trial or further Order the 1st Defendant be restrained and an injunction is hereby granted restraining the 1st Defendant from carrying on business in any name resembling that of the 1st Plaintiff in connection with zippers or aluminium building materials whether by way of manufacture or dealing howsoever". |
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2. The judge appears to have stated his reasons very shortly and we have only counsel's agreed note of what he said. In view of the undertaking given by the 2nd and 3rd Defendants he said he would follow the decision of Neville, J. in "the Lloyd's Case". He must, I think, have been referring to "the Lloyd's Bank Case", viz. Lloyd's Bank Ltd. v Lloyd's Investment Trust Co. Ltd. (1912) 29 R.P.C. 545 and not the case reported at p.433 of the same volume. He appears to have meant that he would restrict the injunction to which he thought the Plaintiffs were entitled to use of the name "Yoshida Kogyo" in connection with the business of manufacturing and dealing in zippers and aluminium building materials".
3. The Plaintiffs contend that that restriction was wrong in law and they argue that in deciding "to follow" the Lloyd's Bank Case the judge must have failed to appreciate that Neville, J. imposed a similar restriction because the Plaintiffs in that case had asked for no more than an injunction so restricted. They rely principally on Lloyd's v Lloyd's (Southampton) Ltd. (1912) 29 R.P.C. 433 and Harrods Ltd. v R. Harrod Ltd. (1924) 41 R.P.C. 74. In both those cases it was held that the defendant was using the plaintiff's name for a fraudulent and improper purpose, namely to pose as the plaintiff, and injunctions were granted to restrain such use, although in the earlier case the judge declined to enjoin the defendant against using "any name of which the word 'Lloyd's forms part". It is submitted that the evidence here equally shows an impudent attempt to pass off the 1st Defendant as in some way connected with the Plaintiffs, for they have no family or other connection with the name "Yoshida".
4. The Defendants' explanation for adopting that name appears in the affidavit of the 2nd Defendant affirmed on 1st October 1979:
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6. The reason I choose the word 'YOSHIDA KOGYO' as the name of my company is that this name is easy to pronounce and outstandingly distinctive as against other competitors in the trade of textiles, garments, watches and calculators in Hong Kong. The characteristic style of this name 'YOSHIDA', I believe, may help to promote my business especially in watches in Hong Kong. Further, I understand that the word 'YOSHIDA' is not registrable under Part A of the Trade Marks Register in Hong Kong and it is my intention to acquire a distinctive user of the mark 'YOSHIDA' and then apply to have it registered under Part B of the Register. |
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7. The initials 'YKK', being part of the name of the 1st Defendant, was adopted by me as a combination of the initials for 'YOSHIDA' and my name 'KAM KONG'. As a matter of fact, I have been called and commonly known by my initials 'KK' by most of my friends as well as business associates and fellow traders since I left school and joined the business world 20 years ago." |
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The judge clearly rejected this explanation. For my part I have no doubt that use of the name might "help to promote" the Defendants' business, but that would be by reason of its association with the Plaintiffs. "Yoshida" may well be a common family name in Japan, as has been suggested, and, if the Defendants had any connection with a family bearing that name, other considerations would have applied. As it is, I think the Plaintiffs were entitled to protection against the use of their name.
5. Although these are interlocutory proceedings the Plaintiffs have made out a case for wider relief than that granted by the judge. The granting of such wider relief will in no way inhibit the Defendants from fighting the action, and, if they are successful, they will be entitled to compensation under the terms of the usual undertaking.
6. I would allow the appeal.
McMullin, J.A. : I agree.
Cons, J. : I agree.
7. After further argument an interlocutory injunction pending trial of the action or further order was made in the following terms:
"An injunction to restrain the 1st, 2nd and 3rd Defendants and each of them, and in respect of the 1st Defendant whether acting by itself, its directors, officers, servants or agents or any of them or otherwise howsoever from carrying on business or registering a company under the name 'YOSHIDA KOGYO LIMITED' or under any name comprising the words 'YOSHIDA KOGYO' in a form likely to mislead or deceive the public into the belief that such business or company is the same company as, or a subsidiary affiliated or associated company or business of, the Plaintiffs or any of them or that such company or business was the same as or was in any way connected with the business of the Plaintiffs or any of them or otherwise howsoever from passing off, attempting to pass off, causing, enabling or assisting others to pass off the business not that of or that in any way connected with the Plaintiffs or any of them as and for that of or that in any way connected with the Plaintiffs or any of them."
22nd April, 1980
Representation:
M. Waller, Q.C. & Kotewall (Deacons) for Appellants.
Sakhrani & Rogers (C.Y. Kwan & Co.) for Respondents.
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