Mike & Kremmel Limited and Another v. Chi Shing Industrial Company Limited

HCA004049/1984

Action No. 4049 of 1984

IN THE HIGH COURT OF JUSTICE

BETWEEN

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Coram: Hon. Mantell. J. (In Chambers)

Dates of Hearing: 30th & 31st July, 1984.

Date of Delivery of Decision: 3rd August, 1984.

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DECISION

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1. The plaintiffs have an ingenious gadget for opening tins. It cuts through the cylindrical wall of the tin just below the rim so that the whole of the top of the tin including the rim comes away of a piece. The advantage over the more familiar method is that one does not have to struggle with the sharp edges at the top of a tin which has to be prized up if incompletely severed, or otherwise, retrieved from the contents. They call their device, aptly enough, the "lift-off" can opener.

2. If it seemed like a good idea to the plaintiffs, it did so also to the defendant which had previously toyed with the idea of making something similar based on a Japanese invention: but the plaintiffs' can opener was much better and the defendant set about producing two designs of opener which work in an almost identical fashion.

3. However, much they might wish to, the plaintiffs cannot protect the principle upon which their can opener operates, but they are able, so they believe, to protect the copyright in the design drawings which resides in them as owner and sole selling agent in Hong Kong respectively. They now seek to restrain the defendant from infringing their copyright which, it is alleged, has occurred in the designing and manufacturing of one of the two types of can opener which the defendant makes in opposition to the "lift-off". For the purposes of this application, it is conceded that copyright does exist in the drawings of the "lift-off",and that, in reproducing certain parts of the plaintiffs' can opener, there has beer an infringement by the defendant. Accordingly, come what may, there will be an order by consent restraining the defendant from using those parts which substantially reproduce the plaintiffs' product. The contentious part of this application relates to what is left of the defendant's can opener after the gear wheel, cutting plate metal "T" bar and plastic washer have been removed, which is, in fact, a combined handle and lever. The "lift-off" and the defendant's opener have in common the fact that they are of approximately the same length and each of them finishes at the business end in a semi-circle with about the same diameter. They both have a finger-guard and what has been termed as "nose", that is a plastic protuberance which is intended to rest on the top of the tin during the process of removal. There, the resemblance ends. The plaintiffs' opener is of uniform width, the defendant's tapers. The shape and size of the nose and finger-guard are different, so are the positions for siting the gear and cutting wheels; in the one case the gear moves to meet the cutting wheel and in the other, the movement is reversed. The operating handle on the defendant's model is entirely different both in appearance and operation.

4. But for Mr. Garland's gallant effort, I would have said that the proposition that the defendant had reproduced a substantial part of the plaintiffs' drawings in relation to the handle of their tin opener was unarguable: the more so, because there is nothing unique or surprising about the shape of the lift-off handle which has the general appearance of many another kitchen tool, and there is certainly no question of the defendant having been spared the effort of making their own design drawings. I cannot say in relation to the handle of the lift-off, there is any serious issue to be tried and the application other than in relation to what I have called the working parts fails at that point. Had I taken a more sanguine view of the plaintiffs' prospects, I should nevertheless have refused further interlocutory relief on the balance of convenience. The only damage anticipated by the marketing of this kind of opener is from an inferior product coming onto the market. That has nothing to do with infringement of copyright.

5. So, there will be an order in the terms submitted to me by Mr. Clayton during the course of argument. Defendant's costs in the cause.

Representation:

Peter Garland instructed by Johnson, Stokes & Master for Plaintiffs.

Peter Clayton instructed by Deacons for Defendant.