Aqua-leisure Industries, Inc. and Another v. Impag Toys Europe Bv and Others

HCA003933/2000

HCA3933/2000

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO. HCA3933 OF 2000

_______________________

_______________________

Coram: Deputy High Court Judge Fung in Chambers

Date of Hearing: 11 July 2002

Date of Judgment: 11 July 2002

__________________

J U D G M E N T

__________________

1.The 1st to 5th Defendants are appealing against the decision of a Master ordering further and better particulars to be given under the Re-amended Defence and the Counterclaim.

2.Briefly, the action is one of infringement of trademark brought by the Plaintiffs against the 6 Defendants. The 1st Plaintiff's name includes the word "Aqua-Leisure" and the 1st Plaintiff has used trademarks including "Aqua-Leisure", "Aqua" and "Aqua Splash", and the Defendants are using the name "Aqua Splash".

3.There was a previous action by the 1st Plaintiff against the 6th Defendant preventing the use of the name "Aqua Splash". That action has ended in judgment against the 6th Defendant, but I have been told that the 6th Defendant has been wound up and is no longer in existence, legally speaking.

4.The Defence, apart from defending the infringement, also by way of counterclaim sought to expunge the registration of the Plaintiff's trademarks in Hong Kong. The Counterclaim incorporated part of the Defence, inter alia, paragraph 6(3), which alleged that the word "Aqua" was non-distinctive and was used by many entities world-wide as well as in Hong Kong.

5.For the present purpose, I am only concerned with this part of paragraph 6(3), that "There are numerous companies and/or swimming accessories, inflatable swimming pools and general swim products world-wide which are known as or sold under names or marks incorporating the word "Aqua", including the following..." and under paragraphs (a) to (g), seven names have been given. Out of those seven names, the Defendants have, by further and better particulars, identified that three of them are corporations: i.e. (b) "Aquatoy"; (e) "Aquamarine National Inc"; and (g) "Aquasource International".

6.The Plaintiffs have sought further and better particulars of those names in three categories: (1) in relation to those names which are said to be corporations; (2) those names which are said to be registered trademarks; (3) those names which are said to be unregistered trademark.

7.In relation to the corporations, for the present appeal, the Plaintiffs are asking for four types of particulars: (1) the full name of the corporation (Request 2(a)); (2) the jurisdiction of the incorporation (Request 2(b)); (3) the countries in which those companies deal in the swimming accessories, inflatable swimming pools, general swim products, if any (Request 2(d)); and (4) the nature of other business engaged in by those corporations (Request 2(e)).

8.In relation to paragraph 2(d) of the Request, the countries in which the corporation deals in each of the swim accessories, inflatable swimming pools, general swim products, if any. The Defendants have today conceded that those particulars should be given.

9.In relation to the registered trademarks, the Plaintiffs want to know the jurisdiction of the registration, the name of the proprietor, the trademark number, and the goods and services covered by the registration.

10.In relation to unregistered marks, full name of the entity using or selling under those marks, the status of the entities, jurisdiction, nature of business and the product services in which the mark has been applied to.

11.The Plaintiffs explained that those information or particulars sought were relevant to the Counterclaim which sought to expunge the trademarks and queried registrability of the trademarks. The Plaintiffs submitted that three matters are relevant: (1) territorial use; (2) the class in which the mark has been registered; and (3) the extent of use of the registered mark.

12.The Defendants queried, in relation to Request 2(b) - as far as the corporations are concerned - the jurisdiction point, because Miss Lee said where a company is incorporated may or may not have any bearing as to where it operates. The Plaintiffs responded that since the Defendants alleged that there was such a corporation, they should be entitled to know the identity of the corporation; and when the matter was put at a world-wide level, in identifying the corporation, two matters are relevant: (1) its full name; (2) its domicile. Those are the attributes as to which the corporation can be identified when other than the domestic jurisdiction is concerned.

13.I agree with the Plaintiffs that as the Defendants have mentioned that there was such a corporation, they should give the full name of the corporation; and as they are making an allegation of a world-wide nature, the jurisdiction of the corporation must be added to its full name in order to identify the corporation.

14.As to Request 2(e), nature of other business concerned, the Plaintiffs submitted that the registrability of the Plaintiff's trademark against the use of a similar mark or a mark containing the word "Aqua" by another corporation must be looked at in the context of the extent of use by that corporation. I agree with the Plaintiffs that the general business of the other corporation, which may or may not include products in swim accessories, is also relevant.

15.Hence the Request under 2(a), (b), (d), (e) should be allowed, and I agree with the Master who ordered such particulars.

16.In relation to paragraph 4, registration of other trademarks, all the four Requests are relevant when one looks at it in the context of an attack on the Plaintiff's trademark in Hong Kong.

17.And if an unregistered mark is also prayed in aid to attack the Plaintiff's registered trademark, similar particulars as to the use of the mark should also be relevant. Hence all the five Requests in paragraph 5 are also relevant.

18.There are two other matters which have been contained in the Notice of Appeal, i.e. Request 7 and Request 8(b) which has been ordered by the Master. I have been informed that the Plaintiffs no longer pursue those two Requests. Hence, those will not be considered by me and I make no order as to them.

19.In relation to paragraph 2(a), (b), (d) and (e) and Requests 4 and 5, the decision of the Master is affirmed, and I will hear parties as to costs of this appeal and the hearing before the Master.

(Discussion re costs)

19.The costs of this appeal are to be paid by the 1st to 5th Defendants in any event.

(Further discussion re costs)

20.The costs order made by Master Mak is affirmed.

Representation:

Ms Vivian Lui, of Messrs Lovells, for the Plaintiff

Miss T M Lee, of Messrs Freshfields Bruckhaus Deringer, for the 1st, 2nd, 3rd, 4th and 5th Defendants