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HCA004007/2001
HCA 4007/2001
IN THE HIGH COURT OF THE
HONG KONG SPECIAL ADMINISTRATIVE REGION
COURT OF FIRST INSTANCE
ACTION NO. 4007 OF 2001
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SAMSONITE CORPORATION |
Plaintiff |
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MAKE RICH LIMITED |
Defendant |
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Coram: Deputy High Court Judge Gill in Chambers
Dates of Hearing: 9, 12 and 15 November 2001
Date of Judgment: 21 November 2001
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J U D G M E N T
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Introduction
1.The plaintiff is a company incorporated in the USA, whose sole or primary business is to manufacture luggage for sale world wide. The defendant is a company incorporated and carrying on business in Hong Kong. Amongst other activity it manufactures and markets luggage under the trade name 'Baleno.'
2.The plaintiff in the course of its business claims to have designed and manufactured two lines of luggage, which it markets under the names the 'Streamline series' and the 'Spark series'. Having cause to believe that the defendant has manufactured and is marketing its own ranges of luggage that so closely resemble that of the plaintiff in the Streamline and Spark series that they amount to copies thereof, it has by writ dated 7 September 2001 brought an action for injunctive relief, an enquiry as to damages or an account of profits and damages.
3.By summons dated 27 September the plaintiff has applied for interim protection in the form of an injunction to restrain the defendant from manufacturing and marketing the offending items. It also asks for the usual consequential orders of delivery up of items and materials the continued use of which would be in breach of the injunction, and an affidavit giving details of suppliers and customers. The application is opposed.
4.It is that summons that I am now to deal with.
The Writ
5.I turn first to the Statement of Claim with a view to establishing what rights the plaintiff claims it has which the defendant has breached. With due respect to the author, this is not an easy task.
6.Paragraphs 4 and 5 read as follows:
"(4) The defendant has been distributing products using the plaintiff's logo, design and other proprietary products.
(5) The defendant (sic) products are copies of several of the plaintiff's Spark and Streamline series of products."
7.Although it is not spelt out, I assume that the plaintiff claims that the defendant is in breach of its copyright in the design of the Spark and Streamline series.
8.Paragraph 6 reads:
"(6) Sales of the defendant's products create the likelihood of deception of the public and confusion with the plaintiff's products."
9.The plaintiff by this claims the defendant is guilty of the tort of passing off.
10.Paragraph 6(d) in that section of the Statement of Claim marked 'particulars' states in part:
"6(d) The defendant uses other of the plaintiff's product's distinctive features on its products. The distinctive feature, in particular being the big wheel feature .... [is] virtually identical with the same item on plaintiff's streamline series of products ....... The Laws of Hong Kong and Design Registration No. 9810434.8...... protect the representation of the plaintiff's design of its big wheel feature."
11.Although not specifically pleaded I assume the plaintiff claims the defendant has infringed its right in the registered design of what it refers to as the big wheel feature, but which in the certificate of registration referred to it is described as the 'wheel system for an upright luggage case.'
Serious Question to Try?
12.It is settled law that in an application for an interlocutory injunction the first hurdle the plaintiff must surmount is to establish that there is a serious question to try; see American Cyanamid v Ethicon Ltd [1975] AC 396, per Lord Diplock at p. 407G.
13.First then, it is necessary for me to determine whether the plaintiff has on the pleadings and evidence achieved this under the three heads of copyright, design registration and passing off.
Copyright
14.Copyright protection in Hong Kong is provided by the Copyright Ordinance (CO) Cap. 528 Laws of Hong Kong. Sections 2, 3, 5, 22 and 23 are relevant and I reproduce those parts which are pertinent as follows:-
" PART II
COPYRIGHT
DIVISION I
SUBSISTENCE, OWNERSHIP AND DURATION OF COPYRIGHT
Introductory
2. Copyright and Copyright works
(1) Copyright is a property right which subsists in accordance with this part in the following descriptions of work -
(a) original literary, dramatic, musical or artistic works;
(b) sound recordings, films, broadcasts or cable programmes; and
(c) the typographical arrangement of published editions.
(2) In this Part "copyright work" means a work of any of those descriptions in which copyright subsists.
(3) Copyright does not subsist in a work unless the requirements of this Part with respect to qualification for copyright protection are met (see section 177 and the provisions referred to there).
3. Rights subsisting in copyright works
(1) The owner of the copyright in a work of any description has the exclusive right to do the acts specified in Division II as the acts restricted by the copyright in a work of that description.
.....
5. Artistic works
In this Part -
"artistic work" means -
(a) a graphic work, photograph, sculpture or collage, irrespective of artistic quality;
(b) a work of architecture being a building or a model for a building; or
(c) a work of artistic craftsmanship;
"building" includes any fixed structure, and a part of a building or fixed structure;
"graphic work" includes -
(a) any painting, drawing, diagram, map, chart or plan; and
(b) any engraving, etching, lithograph, woodcut or similar work;
.....
DIVISION II
RIGHTS OF COPYRIGHT OWNER
The acts restricted by copyright
22. The acts restricted by copyright in a work
(1) The owner of the copyright in a work has, in accordance with the following provisions of this Division, the exclusive right to do the following acts in Hong Kong -
(a) to copy the work (see section 23);
(b) to issue copies of the work to the public (see section 24);
(c) where the work is a computer program or sound recording, to rent copies of the work to the public (see section 25);
(d) to make available copies of the work to the public (see section 26);
(e) to perform, show or play the work in public (see section 27);
(f) to broadcast the work or include it in a cable programme service (see section 28);
(g) to make an adaptation of the work or do any of the above in relation to an adaptation (see section 29),
and those acts are referred to in this Part as the "acts restricted by the copyright".
(2) copyright in a work is infringed by a person who without the licence of the copyright owner does, or authorizes another to do, any of the acts restricted by the copyright.
(3) References in this Part to the doing of an act restricted by the copyright in a work are to the doing of it -
(a) in relation to the work as a whole or any substantial part of it; and
(b) either directly or indirectly,
and it is immaterial whether any intervening acts themselves infringe copyright.
.....
23. Infringement of copyright by copying
(1) The copying of the work is an act restricted by the copyright in every description of copyright work; and references in this Part to copying and copies are construed as follows.
(2) Copying of a work means reproducing the work in any material form. This includes storing the work in any medium by electronic means.
(3) In relation to an artistic work copying includes the making of a copy in 3 dimensions of a 2-dimensional work and the making of a copy in 2 dimensions of a 3-dimensional work.
(4) Copying in relation to a film, television broadcast or cable programme includes making a photograph of the whole or any substantial part of any image forming part of the film, broadcast or cable programme.
(5) Copying in relation to the typographical arrangement of a published edition means making a facsimile copy of the arrangement.
(6) Copying in relation to any description of work includes the making of copies which are transient or are incidental to some other use of the work."
15.It is the plaintiff's case argued by Miss Wong that the plaintiff is the owner of the copyright subsisting in the 'artistic design' of its Spark and Streamline series of luggage. In support she refers to an affidavit filed by one Cheung Kin Man (Mr Cheung) who is the general manager of Samsonite Asia Limited, a wholly owned subsidiary of the plaintiff and its sales agent in Hong Kong.
16.I have to say at the outset that the plaintiff's claim under this head is a non-starter. Miss Wong is correct in stating that copyright subsists in artistic works which includes, by definition, graphic works. The proprietor of such works is entitled to exclusive rights in them; another's unauthorized copying of the works is an infringement for which the remedy is an injunction, and damages.
17.But in its pleadings the plaintiff has not pleaded breach of its copyright in any artistic works; indeed there is no reference to copyright at all. Copyright and infringement thereof cannot be implied; it must be specifically pleaded. Furthermore the works the subject of the alleged copyright have to be produced with evidence that they belong to the plaintiff. The evidence to which Miss Wong referred me is phrased this way:-
"The defendant uses the plaintiff's Streamline series of design for its products....
The defendant also uses the plaintiff's Spark pattern design for its products .... The defendant uses other of the plaintiff's product's distinctive features on its products ....
The defendant uses the plaintiff's decorative shapes on its products."
18.This does not get close to establishing a right in copyright works let alone an infringement by another. As Miss Tam for the defendant submitted, copyright does not protect a commercial product; no copyright case can be mounted because two suitcases are similar.
Design Registration
19.Protection for a design in Hong Kong is afforded by the Registered Designs Ordinance (RDO) Cap. 522 Laws of Hong Kong. Section 5 gives the owner of a new design the right and opportunity to apply to register it with the Registrar of Designs. Sections 24, 25, 26 and 27 set out the steps thereafter to be taken by the Registrar. Section 27 expressly removes from the Registrar the obligations to satisfy himself as to the registrability of the design or whether it has been properly represented before registration.
20.I set out below these sections verbatim:-
"Examination and Registration
24. Examination of applications
(1) If an application for registration of a design has been accorded a filing date under section 14 and has not been withdrawn, the Registrar shall examine the application to determine whether it satisfies the formal requirements.
(2) Where the Registrar determines that there are deficiencies as regards the formal requirements, he shall notify the applicant and give him an opportunity to correct the deficiencies within the prescribed period.
(3) If any deficiencies as regards the formal requirements are not corrected within the prescribed period, the application shall be deemed to be withdrawn.
(4) In this Ordinance, "formal requirements" means such requirements of section 12 and of any rules made for the purposes of that section as are specified in the rules as being the formal requirements.
25. Registration and publication
If on an examination by the Registrar under section 24 an application for registration of a design is found to have satisfied the formal requirements, then as soon as practicable after such examination, but subject to section 26, the Registrar shall -
(a) register the design by entering the prescribed particulars in the Register;
(b) enter the name of the applicant, or the successor in title to the application, in the Register as the owner of the design;
(c) issue a certificate of registration to the person who is the registered owner of the design at the time the design is registered; and
(d) advertise the fact of such registration and publish a representation of the design by notice in the Gazette.
26. Refusal of applications
(1) The Registrar may refuse an application for registration of a design if, after an examination by him under section 24 and after giving the applicant the opportunity to correct any deficiencies as provided for in that section, he determines -
(a) that the application does not satisfy the formal requirements; or
(b) that, on the face of the application, the design is not new or is not registrable for any other reason.
(2) The Registrar shall give notice of any such refusal to the applicant.
(3) Where the Registrar refuses an application for registration of a design under this section, the following provisions shall apply -
(a) the applicant shall continue to enjoy the right of priority under section 16 which he enjoyed immediately before such refusal; and
(b) no other right may be claimed under this Ordinance in relation to the application.
27. Formality examination
Except as expressly provided to the contrary, nothing in this Ordinance shall be construed as imposing any obligation upon the Registrar to consider or have regard to, for the purpose of determining whether the accept an application for registration of a design, any question as to -
(a) the registrability of the design;
(b) whether the applicant is entitled to any priority claimed in the application; or
(c) whether the design is properly represented in the application."
21.Section 31 sets out the rights and protections afforded the owner of a registered design in Hong Kong. Pertinent parts of that are as follows:-
"RIGHTS IN REGISTERED DESIGNS
31. Rights conferred by registration
(1) Subject to this Ordinance, the registration of a design under this Ordinance gives to the registered owner the exclusive right -
(a) to make in Hong Kong or import into Hong Kong -
(i) for sale or hire; or
(ii) for use for the purpose of trade or business; or
(b) to sell, hire, or offer or expose for sale or hire in Hong Kong, any article in respect of which the design is registered and to which that design or a design not substantially different from it has been applied.
(2) The right in a registered design is infringed by any person who, without the consent of the registered owner and while the registration is in force -
(a) does anything which by virtue of subsection (1) is the exclusive right of the registered owner;
(b) makes anything for enabling any article referred to in subsection (1) to be made in Hong Kong or elsewhere;"
22.'Design' is defined in Section 2, which I reproduce:-
"design" means features of shape, configuration, pattern or ornament applied to an article by any industrial process, being features which in the finished article appeal to and are judged by the eye, but does not include -
(a) a method or principle of construction; or
(b) features of shape or configuration of an article which -
(i) are dictated solely by the function which the article has to perform; or
(ii) are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part;"
23.'Article' is also identified in Section 2. I reproduce that:-
"'article' means any article of manufacture and includes any part of an article if that part is made and sold separately;"
24.It follows the registrability of a design applied to an article that is in fact part of an article not made and sold separately will be open to attack.
25.It is the plaintiff's case that its big wheel feature is protected by registration of that design under no. 9810434.8. Although as I have said this has not been specifically pleaded, the registration is recorded in the statement of claim and there is reference, at paragraph 4, to the defendant having distributed products using the plaintiff's design. In evidence a copy of the certificate of registration of design was produced. As earlier recorded, it defines the big wheel feature as 'wheel assembly for an upright luggage case'. It is quite apparent from the perspective and side views of the assembly in sketches attached that the design is of the two wheels that go to make up a suitcase that is mobile in this manner. There is no evidence, at least none adduced, that these are made and sold separately nor as a matter of common sense is this likely.
26.Miss Tam attacks the registrability of the design on that ground.
27.In that regard I am assisted by the editors of Russell-Clarke on Industrial Designs, sixth edition where a similar provision in the Registered Designs Act 1949 (RDA(A)) was referred to at para. 3.30:-
"Spare parts and parts of articles
The definition of "article" in section 44(1) of the RDA(A) contemplates that an article in respect of which a design is registered can be a part of another article. Thus, such items as handles for wardrobes, or fancy steering wheels for cars, can be the subject of design registrations in their own right (as distinct from merely forming part of the design of the greater article into which they are incorporated), so long as the part concerned is "made and sold separately." The House of Lords has decided that, in order to satisfy this requirement, it is not sufficient that the part concerned is made and sold simply as a spare part for the greater article; it must in addition "have an independent life as an article of commerce and not be merely an adjunct of some larger article of which it forms part."
Ford Motor Co. Ltd's Design Appns [1994] R.P.C. 545 at 554 lines 20-5, per McCowan L.J., QB Div Ct; approved by Lord Mustill in Ford Motor Co. Ltd's Design Appns [1995] R.P.C. 167 at 179 lines 3-6, HL."
And at 3.32:-
" The House in Ford (supra) cited with apparent approval the observations of Graham J. in Sifam Electrical Instruments Co. Ltd v Sangamo Weston Ltd [1973] RPC 899 at 913, who was considering whether the fronts of electrical meters were registrable under the Registered Designs Act:
"The meter front here is not now and never has been sold separately nor was it ever intended that it should be... If an article or part of an article is in fact being sold at the time of the application to register that in itself would invalidate the registration because the design would have been published and would not be 'new or original' within subsection (2). What then do the words mean? The defendants say they mean 'susceptible of being sold separately', which they say this meter front is. But here again any part of any article is susceptible of being sold separately even if, for example, the part has to be forcibly removed from the whole of the article of which it forms part... Why should designs not be registrable for such parts which are susceptible of industrial design and of being dealt with as articles of commerce? However to give the words such a meaning would have the result that any part of any article could then be registered and thus would defeat the apparent intention of the Act. One might also then ask:
When is part of an article not an article in its own right?
.... The intention must be to grant registration only for such articles as are intended by the proprietor of the design to be put on the market and sold separately, such as for example a hammer handle, or a bit for a bradawl ...
The words used are 'if that part is made and sold separately', and the phrase as a whole, to my mind, confirms that both the manufacture and sale of the part in question must be operations which are distinct from the manufacture and sale of the whole article of which the 'part' forms a component. It is necessary to imply the words 'to be' in order to construe the phrase as not including sale of the part prior to or at the date of the application for registration since this would produce an absurd result contrary to section 1(2), and cannot possibly have been the intention of the legislature.""
28.It is pertinent to note that in the UK the plaintiff has registered the design 'Upright Luggage Case' which is of the complete article; suitcase, wheels and retractable handle all inclusive.
29.In my view the defence point taken is unassailable: the plaintiff's registration in Hong Kong is invalid.
Passing off
30.Passing off arises as an actionable tort if the offender misrepresents to customers of goods or services that he is selling that they are the goods or services of another which causes or is likely to cause damage to that person's business.
31.Reckitt & Colman v. Borden [1990] 1 WLR 491, a House of Lords case, is a cornerstone one on the law of passing off. I quote from the headnote:-
"(1) The law of passing off could be summarized in one short, general proposition: no man may pass off the goods as those of another. More specifically, it could be expressed in terms of the three elements, each a question of fact, which a plaintiff had to prove in order to succeed. These were:
(a) that there was a goodwill or reputation attached to the goods or services which he supplied in the minds of the purchasing public by association with their identifying get-up,
(b) that there was a misrepresentation to the public likely to lead the public to believe the goods or services offered by him were the goods or services of the plaintiff; and
(c) that he was suffering or was likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation. It was irrelevant whether or not the public was aware of the plaintiff's identity as the manufacturer or supplier of the goods in question, as long as they were identified with a particular source."
32.Speaking of that element of it which is misrepresentation, Lord Oliver said:-
"[The plaintiff] must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name."
33.And Lord Diplock said in Erven Warnink BV v. J Townend & Sons (Hull) Ltd [1979] AC 731,
"[T]he basis of a passing-off action being a false representation by the defendant, it must be proved in each case as a fact that the false representation was made. It may, of course, have been made in express words, but cases of express misrepresentation of this sort are rare. The more common case is, where the representation is implied in the use or imitation of a mark, trade name, or get-up with which the goods of another are associated in the minds of the public. In such cases the point to be decided is whether, having regard to all the circumstances of the case, the use by the defendant in connection with the goods of the mark, name, or get-up in question impliedly represents such goods to be the goods of the plaintiff, or the goods of the plaintiff of a particular class of quality, or, as it is sometimes put, whether the defendant's use of such mark, name or get-up is calculated to deceive."
34.In the particular context of this case it is appropriate to examine the expression 'get up'.
35.This is the subject of a passage in Christopher Wadlow's The Law of Passing Off second edition. He wrote at para. 6.49:-
"G. DISTINCTIVENESS OF GET-UP
Introduction
The term "get-up" is normally used in passing off to mean the whole visible external appearance of goods in the form in which they are likely to be seen by the public before purchase. If the goods are sold in packages, then their get-up means the appearance of the pack taken as a whole. If they are sold or displayed unpackaged, then the get-up relied on can only be that inherent in the goods themselves. Intermediate cases exist where both the goods themselves and their packaging contribute to what the customer sees: for instance where the goods are mounted on cards, or in transparent plastic, or are liquids in bottles. However, there can be few cases, if any, in which passing-off results from the adoption by the defendant of so-called "get-up" which is only apparent to the consumer after purchase of the defendants' goods. There are also cases where the get-up said to be distinctive is that of advertisements, literature, premises or almost anything used in the conduct of the plaintiff's business.
Get-up is not only of importance when it is of itself distinctive of the plaintiff. Similarity in general appearance (even if the appearance does not legally qualify as get-up) may enable dishonest traders to substitute the defendant's product when asked for that of the plaintiff, even if the plaintiff's get-up is not distinctive on its own. Whether the defendant is liable for this depends on intention and knowledge. Similarity or dissimilarity of get-up may also influence the result of a case based mainly on brand names or other marks if the likelihood of deception is finely balanced, or if the similarities constitute a "badge of fraud" indicating an intention to deceive.
The difficulty confronting the plaintiff in all actions for passing-off based on get-up is that it is unusual for one trader's goods to be distinguished from those of his competitors exclusively, or even primarily, by their get-up. Normally a brand name or other mark is chosen and given prominence and it is this on which consumers are expected and encouraged to rely. To make out a case based solely on similarities of get-up the plaintiff must show that deception is likely notwithstanding the absence of his own brand name on the defendant's goods and the likely presence there of the defendant's brand name and perhaps other distinguishing matter. Not surprisingly, the cases in which passing-off has been found have predominantly been ones of deliberate deception."
36.At 6.51 Mr Wadlow wrote:-
" Get-up is therefore only protected if and to the extent that it serves as the badge of a particular trader. Put the other way round, if the customer wants goods with a particular construction or appearance primarily because he believes such goods to be functional, practical or aesthetically pleasing then the appearance of the goods, or their get-up if it may be so called, is not being relied on to identify them as coming from a particular trade source. If so, it is hard to say that offering goods indistinguishable from those of the plaintiff involves any misrepresentation at all. It does not even matter if the plaintiff's goods are unique and the customer happens to believe or assume that all such goods came from a common source, provided his choice is made without reliance on that belief. At most, any misrepresentation (or misconception on the part of the customer) is an irrelevant one because it does not damage the plaintiff: the customer would not have bought the plaintiff's goods in preference to those of the defendant even if he had known of the difference."
37.The copying of an article without more is not passing off. As Graham J said in Benchairs Limited v. Chair Centre Limited [1974] RPC 429, at p. 435:-
" The essence of passing off is, it is said by Mr Watson, and I agree, the false representation by the defendant that his goods are those of the plaintiff, as has been laid down by the authorities for well over a century in numerous cases. This is, for example, noted by Harman, L.J. in Hoffmann-La Roche v D.D.S.A. [1972] R.P.C. 1 at 18, where he quotes the words of Lord Halsbury in Powell v Birmingham Vinegar Brewery Co. Ltd [1897] A.C. 710, who in his turn is quoting the words of Turner, L.J. in Burgess v Burgess (1853) 3 De G., M. & G. 896. If there is no such false representation there can be no passing off, and the mere copying of the shape of the plaintiffs' article is not in itself such a representation. Anyone is entitled, subject to some monopoly or statutory right preventing him, to copy and sell any article on the market, and false representation and passing off only arise when a defendant does something further which suggests that the article which he is selling is that of the plaintiff. This he may do by a direct representation to that effect such as by the use of the plaintiffs' name or mark, or by an indirect representation such as by imitation of get-up by enclosing the article in a distinctive package which is similar to that used by the plaintiff.
38.In Wilson Development Co. v. Pro Taifong Co. Ltd & Anor [1991] 1 HKC 1, a Hong Kong Court of Appeal case, I quote first from the headnote:-
" In the absence of some patent or design monopoly or enforceable copyright, it is not unlawful to merely copy another's goods as distinct from the copying of something capriciously added to the goods."
39.The case concerned what is described as a triangular marker pen. Making reference to Reckett v. Coleman Products (Supra) known conveniently as the JIF case, Saied J said at p. 7:-
" The JIF case, while clearly distinguishable, highlights the question of reputation in the product. We think, with great respect, that the various modes of the general description of the lemon may usefully be applied with appropriate adaptation to the triangular marker pen. It too is of convenient size, capable of convenient use and so designed as conveniently to identify the colours of the marker ink at each tip from the single different coloured line at each end cap, a feature which had been in vogue and use for some substantial period of time before the respondents' product came on the market. We are of the opinion that the matters relied upon by the respondents are not, in the light of the totality of evidence, sufficient to justify a considered conclusion that those lines constituted a capricious feature solely associated with the respondents' product. We are satisfied that the respondents here are unable to adduce any evidence upon which a court could find that the necessary reputation had been acquired."
40.With these principles in mind I turn to this case. In its statement of claim the plaintiff alleges the defendant's products create the likelihood of deception of the public and confusion with the plaintiff's products. Particularized this is because:-
(a) the defendant's logo which incorporates the trade name 'Baleno' is similar in shape to the plaintiff's which incorporates the word 'Samsonite';
(b) the overall design of suitcases made by the defendant cause them to resemble closely those of the plaintiff in its Streamline and Spark series;
(c) specific design features such as trim, zips, colours, patterns, the big wheel feature and interior layout also closely resemble those in the plaintiff's aforesaid series.
41.Evidence alleging confusion comes from a Mr Luc Pecceu whose title is the Managing Source Co-ordinator of Samsonite in Europe. His affidavit is short and I reproduce it in full:-
" I, Luc Pecceu, Dijkstraat 33/B12, 9700 Oudenaarde, Belgium, do hereby, sincerely and truly affirm and say as follows:
During one of my recent business trips on 14 July 2001 to the Far East, I looked around in the shopping streets in Hong Kong.
In the shop King Shing Leather Goods Company at 178B Temple Street, G/F., Yaumatei, Kowloon there was a Samsonite upright 55 blue, with a Tingle beauty case on top of it, displayed. Next to it were Baleno cases in exactly the same color, design and presentation. When asking the difference between both suitcases to the shopowner, the answer was that there is no difference, except that one is a Samsonite suitcase made in America, costing 900 HKD and the other one is a Samsonite made in China, costing only 300 HKD."
42.Evidence of similarity was further adduced by Mr Cheung. He produced for my inspection cases from the plaintiff's Streamline and Spark series and cases bearing the defendant's logo and label. Design features are visually similar; including the wheel assembly, retracting handle, external pockets and trim. The badges upon which the logos are imprinted are of a similar shape and size - egg shaped with one side slightly flattened.
43.The plaintiff's logo is the word 'Samsonite', with a stylized deck quoit of two strands. The defendant's incorporates the word 'Baleno' with a stylized spouting whale. Each has a label depicting its makers name or trade name - Samsonite and Baleno.
44.There is further pictorial evidence before me - photographs of shop displays which indicate a wide range of similar products incorporating similar features such as the big wheel, the retractable handle and so on.
45.It is upon this evidence that I am required at first instance to decide whether the defendant has passed off its goods as those of the plaintiff.
46.Given as I have said there are a number of design similarities between the cases displayed before me giving rise to the possibility of copying that is as I have stated not sufficient to make out a passing off case. There were no capricious features solely associated with the plaintiff's product. The wide range of luggage of similar design and function available to the consumer public in Hong Kong dictates against the defendant being guilty of passing off its product as the plaintiff's. The egg shaped badge is repeated on many other brands. Similarly the big wheel, the retractable handle, the trim and so on, more or less as the case may be. This is not conclusive; in theory more than one manufacturer could be taking advantage of another's reputation. But when there are so many products similarly got up it is hard to find that passing off has been established.
47.As to confusion, or rather the singular lack of it, the affidavit of M. Pecceu is most unhelpful to the plaintiff's cause. First as an employee of the plaintiff he is hardly in the category of a disinterested customer. Secondly he was not confused; he readily identified which case was the plaintiff's and which the defendant's. No doubt the logos and labels were the same as those on the examples produced to me; the logos respectively of the plaintiff and defendant and the labels likewise.
48.Whatever the shopkeeper may have said is neither here nor there; clearly the man posing as the customer was under no illusion.
49.Is the defendant trying to tell a lie, pretending its suitcase is a Samsonite? The answer is obviously: 'No'.
50.In my view the tort of passing off cannot be made out.
The 'Serious Question' issue revisited - conclusion
51.Dealing with the three heads of copyright, design registration and passing off I am unable to find established that there is a serious question to be tried in respect of any of the three. The result is that the plaintiff's claim for an injunction and other related relief fails and is dismissed.
52.Costs, nisi at first instance will follow the event and are to the defendant taxed if not agreed.
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(D M B Gill) |
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Deputy High Court Judge |
Representation:
Ms C H Wong, of Messrs Weir & Associates, for the plaintiff
Ms W Tam, instructed by Messrs Benny Kong & Co., for the defendant
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