Emperor Express (HK) Ltd v. Well Time Tours Ltd and Another

HCA003856/1981

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

ACTION NO. 3856 OF 1981

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Coram: Penlington J. in Chambers

Date of Judgment: 29th June 1981

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JUDGMENT

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1. By a writ filed on the 10th of June 1981 the plaintiff in this matter seeks an injunction restraining the defendants from using four Chinese characters, the romanisation of which are "Mei Ka Yau Chung", in connection with its business of organising and selling tours to the United States of America and to Canada. It also seeks the surrender of all advertising material in the defendants' possession which contain those four characters.

2. On the 11th of June the plaintiff applied exparte for an interim injunction restraining the defendant from using those characters and, on the basis of the normal undertaking as to damages, an interim injunction was granted. The defendant now seeks to have it discharged.

3. In the plaintiff's affidavit filed in support of his summons its managing director, Mr. Lee, gives the English translation of "Mei Ka Yau Chung" as "U.S.A. Canada Jubilant Tour". If that was correct it seems to me that the plaintiff would be on stronger ground in that the word "Jubilant" could well, after a substantial amount of advertising, become associated by the public with the plaintiff's tours. If, for instance, another company was to advertise "Discovery" tours Cathay Pacific airways might well have grounds for complaint. It seems clear however, and this was not disputed at the hearing of the summons, that there is no character in the Chinese name which corresponds to the word "jubilant". It seems to me therefore clear that the four characters mean only "U.S.A. Canada Tours" and are therefore purely descriptive. That being so the onus on the plaintiff to show passing-off is heavy, though not impossible.

4. The plaintiff relies on a line of decisions starting with Reddaway v. Banham 1896 A.C. 199. There it was established that the description "camel-hair belting" was understood in the trade as being belting manufactured by the plaintiff and nobody else. At p. 208 Lord Herschell says that there was the strongest evidence that to purchasers the words "camel-hair belting" were not applied to belting made of that material but belting made by a particular manufacturer which was the plaintiff in that case. This was clearly shown by correspondence passing between the defendants and those ordering the goods. It was also clear that the defendants were well aware of that fact and were deliberately trying to pass-off their goods as those of the plaintiff. Lord Herschell cites with approval the rule laid down by Lord Kingsdown in Leather Cloth Co. v. American Leather Cloth Co. 11 H.L.C. 538 that "one man has no right to put off his goods for sale as the goods of a rival trader and he cannot use names, marks, letters or other indices by which he may induce purchasers to believe that the goods he is selling are the manufacture of another person".

5. It seems clear that if descriptive words have become so linked with the product of particular person so as to take on a secondary meaning, that person is entitled to protection against other using that name or names so as to induce purchasers to buy goods in the false belief that they are those of the original maker.

6. The whole crux of the decision is that whether the name is a description or not you can't use it to deceive the public - even if the name is your own or even if the description such as "Glenfield starch" is perfectly true in that the starch did come from Glenfield. Clearly however deception will be much more likely where a non-descriptive name is used because there does not need to be that secondary meaning having become attached to it.

7. This principle was followed in two more recent cases cited to me Stanmond v. Reay 1967 Patent cases 589 held that the name "Mr. Chippy" even though used only for a short time by the plaintiff might cause confusion. In Effluent Disposal Ltd. v. Midland Effluent Disposal Ltd. 1970 R.P.C. 238 Stamp J. emphasised the point which the Courts must consider is whether the use of the particular words is liable to cause confusion.

8. Plaintiff refers in his affidavit to confusion amongst the public but the defendant says that these tours are marketed through agents and there is no question of the public being confused. He also says that as the plaintiff and defendant used different airlines the travel agents would not be confused. These are matters in dispute about which no doubt evidence will have to be called at the hearing as this point is clearly crucial. There is in short affidavit by Ms. Rona Chu - an employee of a travel agent - saying she would associate tours called "Mei Ka Yau Chung" only with the plaintiff but as the defendant points out no effort was made when approached by one of his employees no effort was made to pass-off the defendants' tours as being those of the plaintiff.

9. As was emphasised in Cellular Clothing Co. v. Maxton and Murray 1899 A.C. 326, these cases must each be considered on its own facts. Is there enough evidence to show that the descriptive words have acquired such a secondary meaning as to cause confusion in the minds of possible purchasers as to whose product it is they are buying. I also think that, while the authorities set out the principles involved, the facts here are such as would be very unlikely come before an English Court. The complaint is not just the use of a name but the use of these four characters in a particular order. There are other ways, equally accurate or even more so, of describing a tour to the U.S.A. and Canada. Counsel for the plaintiff says his client would have no objection at all to the use of such other characters even if they meant the same thing - or to the use of the same characters in a different order.

10. I certainly do not consider that, in the light of the authorities cited to me by both counsel in their very thorough argument that the plaintiff will have an easy task when the matter comes on for hearing but I am satisfied, as I must be to continue the injunction, that there is a serious point to be decided between the parties.

11. Having so decided the second point is whether the injunction should continue on a balance of convenience between the possible effect on the parties.

12. The plaintiff says that it has no objection to the defendant using any other characters to advertise U.S.A. - Canada Tours. It has no objection to using the same character in a different order. There are other characters which can be used and the many other tour organisers in this field do so. I do not see why the defendant has had to cancel hotel bookings, as he said he did. I consider he can quite fairly continue with his business even with the injunction in force. If, however, the use by him of the four characters in the particular order complained of does result in confusion the plaintiff will suffer harm which it would not be easy to quantify. I am satisfied that the balance of convenience favours the plaintiff and that the interim order should remain in force.

13. By agreement the costs of this application are reserved and I certify the matter as fit for early trial.

Representation:

Mr. Edward Chan instructed by Messrs. P.C. Woo & Co. for plaintiff

Mr. Warren Chan instructed by Messrs. Ip, Ku & Stoppa for the defendant