Lung Sun Plastic and Metal Factory Ltd v. Tung Ngai Plastic Manufacturing Co Ltd

HCA006080/1980

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Coram: Liu, J. in Court.

Date of Judgment: 28th January, 1981

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JUDGMENT

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1. The plaintiff sought and successfully obtained a design registration in the United Kingdom in respect to their product, an inspection lamp. It is now complained that the defendant company is infringing the said registered design, passing off the products of the defendant's as that of the plaintiff's and pirating the plaintiff's copyright. I have been shown the inspection lamp of the plaintiff's and the alleged infringing article manufactured by the defendant. On a visual inspection, it has to be readily conceded that there is a degree of striking similarity.

2. The defendant also registered his design, but quite some months later. The plaintiff applied in November, 1978 and successfully obtained its United Kingdom registration in February, 1979. The defendant applied in January, 1980 and, I am told, succeeded in obtaining a registration in July, 1980. They are certainly not without company in success with the United Kingdom Registry.

3. I have been shown divers designs which bear a very close resemblance to both the plaintiff's and the defendant's lamps, both in appearance and utility.

4. Mr. Liao for the plaintiff submitted, quite rightly that were registration with the United Kingdom, which may be challenged, is no sure defence to an action of infringement. That proposition is almost common ground as it is, I am afraid, the sad truth that United Kingdom registration usually requires little more than some novelty technically presented by discerning design and pattern agents. Far be it for me to criticize the feasibility and the system of United Kingdom registration. Suffice it to say that such registration gained at times on fine distinction ought not be accepted without caution, particularly on an application for an interim injunction. Commercial success of inspection lamp has brought about an inundation of the market with similar contraptions. Indeed, the plaintiff had experienced their own obstacle in their original application which called for certain amendments.

5. As for the other articles submitted for my inspection, some even bear a resemblance closer to the lamp of the plaintiff's than that manufactured by the defendant, subject matter of complaint in these present proceedings. I need only refer to Exh. A, an alleged infringing article which was, I am told, a subject of an unsuccessful injunction application last week. If one compares Exh. A with the plaintiff's lamp under registered design No. 987303, a closer resemblance than that with the alleged infringing article of the defendant's can readily be detected. However, I must not place too much reliance on what has been decided on a different article in separate proceedings. Mr. Liao, counsel for the plaintiff further submitted that the decision in the proceedings last week rested predominantly on the question of balance of convenience. The primary question to be decided in these instant proceedings is admittedly also one of balance of convenience. There is no dispute that there is a serious question to be tried. It is also recognized by both parties to these proceedings that such a question necessarily depends on the circumstances of each case and will have to be judged and determined on its own merits.

6. Copyright of course, is a protection of the artistic work and the skill and labour put into making it. Unauthorized reproduction of any part material to the recognition and appreciation of the artistic work constitutes an infringement. But one must guard against a too pedantic approach, particularly in an application for an interim injunction. Understandably the plaintiff feels aggrieved. It is claimed that it was the first company who fastered the idea and put it into execution, but from an affidavit in support it can be seen that even the plaintiff gathered information and adopted ideas from products available in the open market. That certainly would not affect copyright in the artistic work or novelty in the ultimate registered design neither of which seek to protect an idea. Copyright protects an artistic work from any unauthorized duplication, and broadly speaking a registered design protects copying of novel shape and configuration. But it would go some way to corroborate the defendant's allegation that it also researched in the market and developed the alleged infringing article independently.

7. The plaintiff has been in production for a considerable time. The defendant is on the threshold of setting up its production line. Both parties appear to be sincere groups of businessmen, highly motivated to promote the sale of a commercial item apparently in demand.

8. Mr. Liao had no instructions on a payment into court by way of fortification. Counsel pressed for protection of his client's right, and it was submitted that paragraphs 18 and 19 of Mr. CHUI Yin's affirmation filed herein on the 3rd January, 1981 would give a good answer to the criticises of delay.

9. The defendant on the other hand ralied heavily on their own registration and the extensive sales or offers for sale of very similar articles in the market. On behalf of the defendant company. Mr. Rogers strenuously urged the court not to intervene so as to cause his client irrevocable damage particularly when production line had only recently been set up. There was, however, consensus that the marketability of these goods was transient. Mr. Rogers offered, on instructions, to pay into court a fair portion of the sale price representing estimated profits and to disclose the names and addresses of all customers in a sealed envelope, duly verified, for inspection by the plaintiff if it should ultimately succeed in this action. Balance of convenience is essentially plain good business sense. On the offer of Mr. Rogers, I was tempted to and did stop counsel.

10. At this stage, the alleged copyright infringement must be largely a matter of speculation. The allegation was that the defendant had been copying the plaintiff's article and drawings as well as pirating the shape and configuration of its inspection lamp. It was further alleged that the defendant was guilty of passing-off its goods as those of the plaintiff's. There are a multitude of closely resembling articles on the market. Circulation of some has been successfully put an and to and others not. It is difficult for the public to associate the plaintiff's product with the plaintiff. It could be appreciated that Exhibit A would likely cause more confusion in shape and individuality. There seems to be no justification for the defendant to be suspended from competition provided the plaintiff's claim, if successful, is suitably fortified. Justice, in my view, can best be done and at this interlocutory stage, concentrating on the question of balance of convenience of course, by requiring the defendant to pay into court a substantial amount of the profits for the sale of the alleged infringing article and to disclose to the court in sealed envelopes for possible inspection by the plaintiff, if it should succeed, names and addresses of customers thereof.

11. On Mr. Rogers' intimation and in the circumstances of this case, I would not be prepared to accede to the application of the plaintiff. Consequently, I order that the defendant to pay into court 40% of the total proceeds of sale of the alleged infringing article in all the orders or part or parts thereof then completed at the and of each month commencing from the 31st January, 1981. I further order the defendant to deposit into court in a sealed envelop all the names and addresses of customers for any contract of sale of the aforesaid alleged infringing article entered after to-day at the end of every month also commencing from 31st January, 1981. I further order the defendant to verify forthwith, from time to time, the information relating to the aforesaid payments-in and customers by a director on oath or affirmation. Costs of this application be costs in the cause.

Representation:

Mr. Andrew Liao instructed by Deacons for Plaintiff.

Mr. Anthony Rogers instructed by Robert Wang & Co. for Defendant.