Plastimoda S.P.A. v. Thomas Mendoza Travelwear and Fashion Co Ltd and Others
Read the full judgment text of HCA 2744/1989 on BabelCite. This High Court CFI judgment.
1. The plaintiff is an Italian company. On liability, its case - which the defendants concede gives rise to a serious question to be tried - runs thus : Its business includes the design and manufacture in Italy of an exclusive range of products marketed worldwide under the trade name, and bearing the trade mark, "Mandarina Duck". These products include its line of "Tank" bags, the distinguishing features of which are their semi-rigid panels with parallel ribbings. Such bags are promoted and sold
|
HCA002744/1989 1989 No. A2744 --------------------- H E A D N O T E ---------------------- Application for interlocutory injunction - allegation of infringement of registered design, breach of copyright and passing-off - serious question to be tried conceded - dispute as to whether balance of convenience favours grant of injunctive relief - argument as to, inter alia, effect of delay in seeking injunction and of misconduct on the part of others. HELD :-
1989 No.A2744 IN THE SUPREME COURT OF HONG KONG HIGH COURT ------------ BETWEEN
Coram: Bokhary J. in Chambers Date of hearing: December 14, 1989 Date of delivery of judgment: December 14, 1989 --------------------- J U D G M E N T ---------------------- 1. The plaintiff is an Italian company. On liability, its case - which the defendants concede gives rise to a serious question to be tried - runs thus : Its business includes the design and manufacture in Italy of an exclusive range of products marketed worldwide under the trade name, and bearing the trade mark, "Mandarina Duck". These products include its line of "Tank" bags, the distinguishing features of which are their semi-rigid panels with parallel ribbings. Such bags are promoted and sold in, among other places, Hong Kong. They include a briefcase. The plaintiff is the registered proprietor of the registered design for such briefcase and the owner of the copyright in the artistic works pertaining to the line of which such briefcase forms a part. 2. The defendants, all of them Hong Kong companies, have - on the basis of the plaintiff's case - infringed such registered design and breached such copyright. The 1st defendant did so by manufacturing, and the 2nd and 3rd defendants did so by offering for sale, briefcases in all material respects identical or substantially similar to the registered design which I have just mentioned. Such conduct would also constitute passing-off. 3. How does the balance of convenience lie? 4. According to the defendants, they have ceased dealing in the briefcase in respect of which the plaintiff makes complaint. 5. Now, leaving aside for the moment the question of delay and the conduct of others, I have no doubt that the balance of convenience favours the grant of injunctive relief along the lines sought. 6. The plaintiff's position in this connection is particularly strong in regard to passing-off. The damage caused by passing-off is very often great but difficult of assessment. It is in the very nature of such damage that this is so. It is of interest to note that in Reebok International Ltd v. Laws Fashion Knitters Ltd, 1989 No. A1056, May 23, 1989, (unreported) my brother Mayo said that he would be more sympathetically disposed towards the plaintiff's argument that its exclusivity would be detrimentally affected failing an injunction if the case had been one of passing-off. The damage which the defendants might suffer is relatively - and I emphasize the word "relatively" - easy to assess. 7. I turn now to the question of delay. The defendants say that the plaintiff has been guilty of delay. And so it has. Cause for complaint seems to have come to its notice as long as one year ago. The writ itself was issued in May this year; and it was not until the 16th of last month that this application was launched. Nevertheless, the position is as follows : The defendants have not suffered any prejudice by reason of such delay. Certainly, I do not think that the delay is indicative of any lack of sincerity on the plaintiff's part. I would not bar them from relief on the basis of delay. I would exercise my discretion in the plaintiff's favour in that regard. 8. As far as the conduct of others is concerned, it is said on behalf of the defendants that a lot of other people have similarly offended if what the defendants have done offends. That may be so. I must be very careful not to say anything which might prejudice the position of persons who are not before the Court. What I do say is that I do not see how in the present circumstances any misconduct on the part of others avails the defendants. As Dr Johnson said, it is all the more harmful to be, as he put it, "plundered in numbers". Precisely what effect any such misconduct may have had on the plaintiff is not a matter for me. But I am quite unable to say that it has created - or could create - a free-for-all in the course of which any person may do as he pleases. 9. All things considered, it appears to me that this is a case in which the plaintiff is entitled to injunctive relief along the lines set out in its summons. It may well be that no particular argument is going to be addressed to me in regard to the actual wording of the Order to be made. Certainly, none has been so far. But I do not preclude the defendants from advancing such arguments as they wish in regard to the wording of the injunctive relief to be granted. I will now hear counsel on the question of costs and, if it arises, the question of such wording. [Argument thereon] Order : Order in terms of paras (1) - (6) of the Plaintiff's Summons dated November 16, 1989, save that the period in para. (5) will be 14 rather than 5 days, and the formula therein "director or proper officer" will be replaced by the formula "director, proper officer or partner". The costs of the application will be the Plaintiff's costs in the cause.
Representation: Mr J. Shaw (instructed by Robertson Double) for the plaintiff Mr A. R. Xavier (instructed by Cheng Yeung & Co.) for the defendants |