Remex International Time Ltd and Others v. Remtex Electronics Ltd

HCA000772/1981

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

Coram: Penlington, J. in Chambers

Date of Judgment: 23rd March, 1981.

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DECISION

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1. This is an application for an interim injunction brought by the Plaintiffs in respect of the use by the Defendant of the name Ramtex in marketing digital watches, on the grounds that that name so closely resembles that of the 1st, 2nd and 4th Plaintiffs as to cause confusion in the minds of potential buyers.

2. The Plaintiffs are all members of the Remex group of companies which is one of the world's largest manufacturers of watches, with a large factory at Aberdeen employing some 1,400 workers and with annual sales of over 14,000,000 pieces. To succeed so well in what is clearly a highly competitive industry quality control would no doubt be very important indeed and the Plaintiffs emphasize that it could be highly damaging to their reputation if watches over whose quality they have no control, were put on the market in such a way as to possibly be mistaken for theirs.

3. The Defendant is a relatively small manufacturer and its Managing Director, Mr. Lau, is a former employee of a company called Interglobal Electronics Ltd. which is also one of the Remex Group. I have no doubt the name Remex must have been well known to him. He said he left that Company at the end of January 1979 and in February 1980 he, his wife and his brothers in law formed the Defendant Company. He said they chose the name Ramtex as standing for "Random Access Memory" an electronic component, plus "tex" standing for "technology" and that the name resembled that of Remex never occurred to them. It is not necessary to decide the question at this stage but I find that statement difficult to accept.

4. The Defendant has been producing both watches and electronic games and Mr. Lau says in his affidavit that of the watches only 10% are sold under the name "Ramtex", the balance being labelled with whatever name the particular customer wishes. He says that his company is doing well and has advertised extensively. Designs are constantly changing and they have built up a goodwill associated with their name. Orders have been accepted and letters of credit issued in that name and they would suffer great hardship if it had to becchanged. He says he too is concerned with quality control and the Defendant's is good.

5. Affidavits have been filed from two of the Defendants customers stating that they have dealt with the Defendant and have done so because of its good product and in no way confused it with the Remex group. These were both local customers.

6. Counsel for the Defendant has undertaken on their behalf that until Judgment or further order they will not use the word "Ramtex" or a similar word on any of their watches. They will supply the information and documents asked for in paragraph 4 of the summons provided the word "name" before "Ramtex" is changed to "trademark" and that the Plaintiffs do not use the information and documents so obtained same for the purposes of these proceedings, without leave of this court. They also undertake to keep proper accounts until Judgment or further order.

7. This is, once again, a question of the balance of convenience. The Defendants only market a small proportion of their watches under the Ramtex trademark and have agreed to cease doing so altogether. They have also agreed to make disclosure of relevant documents and information. This is what the Plaintiffs seek in paragraphs 1 and 4 of the summons. It also seemed to me that if, as it alleges, the Defendants product is not readily confused with the Plaintiffs and that they have not and will not do anything likely to cause such confusion, they will not suffer any loss by complying with paragraph 2. This, it seems to me, would not prevent them filling orders, negotiating letters of credit or continuing to advertise in the way they have so long as they do so in a way not likely to confuse andddeceive existing or potential buyers. I was not, for that reason, prepared to grant the relief sought in paragraph 3 - the delivery up of all material bearing the word "Ramtex".

8. The only matter in dispute here is the question of whether there should be an order in terms of paragraph 3, which is in the form approved by the Court of Appeal in Yoshida Kogyo K.K. and ors. v. Yoshida Kogyo (YKK) Ltd., Civil Appeal No. 81 of 1979. I do not see that the Defendants will suffer irreparable damage, or indeed any damage at all, by complying with such an order because they say they are already doing so. On the contrary if they do market their watches in such a way as to confuse them with the Plaintiff's products, the Plaintiffs may well suffer irreparable loss, if the quality, over which they have no control, falls off. I consider the balance of convenience therefore lies in granting the injunction in part that is an order in terms of paragraphs 1 and 2 of the summons, and paragraph 4 with the word "trademark" substituted for "name" before the word "Ramtex". There will also be an order that the Plaintiffs be at liberty to use any affidavit and any document and information obtained as a result of the order herein in any manner that they require whether in Hong Kong or elsewhere, for the protection or better protection of the Plaintiffs rights the subject of these proceedings.

9. The costs of this application will be in the cause.

Representation:

Mr. A. Rogers (Wilkinson & Grist) for the plaintiff.

Mr. A. Liao (Louis Kong & Co.) for the defendant.