The Black and Decker Manufacturing Co v. Continental Engineering Products Co Ltd and Another

HCA007133/1983

Action No. 7133 of 1983

IN THE HIGH COURT OF JUSTICE

BETWEEN

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Coram: Hon. Liu J.

Date: 8th July 1983.

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JUDGMENT

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1. This action concerns alleged infringements of what is claimed to be the plaintiff's copyright in its original working drawings relating to a cordless dustbuster and alleged passing off in Hong Kong and elsewhere of cordless vacuum cleaners not of the plaintiff's manufacture as and for goods of the plaintiff's.

2. At one stage, so it seemed, the Order 14 procedure was appropriate and reasonable, but there have been further affidavits filed and all the affidavit evidence now placed before the court is to be taken into consideration.

3. The defendants dispute the plaintiff's claim to copyright in its original working drawings referred to in the affidavit of Mr. Catley filed on the 5th July 1983 and therein marked "WMC-2", drawings C and D.

4. Originality is a vital ingredient, but the plaintiff's alleged author, Mr. Gantz, has not even been put under the sanction of an oath specifically for these Proceedings. The defendants' assertions are reasonably documented, and their allegations are further sought to be reinforced by the drawings of the prototype made over a long period. Sufficient material has been disclosed by the defendants to raise what has been described as the indicia of originality in the feature's of the defendants' own drawings.

5. The further allegation of the defendants is that there was, in fact, a design of the defendants very own without any pirating and that, consequently, there was no question of copying and, hence, no infringement.

6. The defendants must, therefore, not be wholly deprived of the opportunity of putting the plaintiff to proof on its claim to copyright or establishing themselves their own claim of an alleged independent design.

7. Without technical assistance on drawings reading, I cannot say that b can fully appreciate the details in the various drawings exhibited to the affidavits or affirmations in these proceedings. It has been conceded that the defendants have not paraded before the court in these proceedings all their available materials. The explanation offered was the shortness of time for preparation as well as the tying down of some other documents in the American litigation which has been scheduled to commence sometime as from the 18th of this month.

8. Another matter at issue is the alleged reproduction of a substantial part of the plaintiff's drawings. Such alleged reproduction is not to be determined by a cursory visual examination alone. It is a matter which is concerned with quality not quantity, and quality, being a matter of degree, cannot be properly decided without the assistance of the found facts. These are all matters to be fully canvassed at the trial. Even if one were merely to compare like with like,  I was unable to derive much assistance from the demonstrations performed by counsel for the plaintiff as the howls of the plaintiff's and the defendants' vacuum cleaners had no perfect fit in the attempted interchanging adaptation.

9. Lastly, I turn to the question of passing off.  Reference has been made to Letters Patent No. 420987. The plaintiff's design on its drawings was allegedly developed and put into market prior to its knowledge of such Letters Patent. But the products from that Letters Patent do bear a very close resemblance in general appearance to as well the vacuum cleaners of the plaintiff's as those of the defendants' and other manufacturers'. The reputation of products from the said Letters Patent, if any, must re relevant to the alleged acquisition of goodwill by the plaintiff. Exclusive reputation with reference to the plaintiff's products in this case or any particular source as far as the plaintiff's dustbusters are concerned is clearly also a bona fide triable issue.

10. The present application of the plaintiff is decidedly more serious an exercise than that for an injunction. I am not satisfied that an 0. 14 Order should be sought or made on the disputed materials such as those mentioned here and referred to me by counsel. In the circumstances, I cannot accede to the plaintiff's application for summary judgment against any of the defendants. The plaintiff's application must, therefore, be dismissed.

11. The application of the plaintiff, in the light of the affidavit evidence placed before the court, was virtually doomed to failure from its very inception, and subject to what counsel have to say, I propose to award costs of this application against the plaintiff in favour of the defendants.

Representation:

Mr. Peter Garland instructed by Messrs. Fairbairn & Kwok for the Plaintiff.

Mr. Andrew Liao instructed by Johnson, Stokes & Master for the Defendants.