J.W. Spear & Sons Ltd v. C.C. Tung & Co Ltd and Another

HCA004111/1981

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Coram: Mr. Commissioner Gittins., Q.C., in Chambers

Date of Judgment: 20th July, 1981

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JUDGMENT

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1. The Plaintiff, a company incorporated in Great Britain, sued the Defendants for passing-off and infringement of copyright.

2. The Plaintiff specialises in the manufacture of toys and in particular board games. One of the Plaintiff's products is a Junior Compendium of Games which comprises games of Snakes and Ladders, Ludo, Tiddly Winks and Bingo. This product has been sold in England since 1950 and is also exported. The Plaintiff's agent in Hong Kong sold 126 pieces of this product in 1978.

3. Infringing copies of the Plaintiff's product were found on sale in the United Kingdom, and their source was traced to a London importer. Information from the importer led to the discovery of the Defendants as the manufacturers of the product in Hong Kong for export.

4. The Plaintiff has applied for an interlocutory injunction.

5. The writ was issued on 19th June 1981 and the inter partes summons with notice for its hearing on 7th July 1981 together with supporting affidavits were served on the Defendants on 23rd June 1981. The Defendants' memorandum of appearance was filed on 29th June 1981.

6. At the hearing on 7th July 1981 the Defendants' solicitor applied for an adjournment on the ground that the Defendants' affidavit in opposition had not been filed because the parties had been negotiating for a settlement which had not come about. The court indicated that the application would be granted subject to an order for costs against the Defendants. Whereupon the application was withdrawn and the hearing proceeded on the documents already filed.

7. Plaintiff's counsel invoked s.20(1) of the Copyright Act 1956 whereby if the defendant does not put in issue the subsistence of copyright in the work which is the subject matter of the action, or the ownership thereof, respectively, then copyright is to be presumed to subsist in the work and the plaintiff, if claiming to be such, is to be presumed to be the owner thereof. These presumptions are absolute if the issues are not raised. (12th Copinger & Skone-James on Copyright 662)

8. The Defendants' solicitor interposed orally to put in issue the ownership of the copyright, submitting that as a point of law it was unnecessary for it to be pleaded or raised in an affidavit.

9. I have found no express authority on this point. 0.18 r.1(1) of the Supreme Court Practice requires specific pleading of any matter -

10. Copinger 666 states:-

"Form of Defence. The defendant to an action for infringement of copyright must, if he desires to dispute the subsistence of copyright in the work, or the plaintiff's title to such copyright or both, specifically raise the point on his pleading; ......."

11. This action has not reached the stage of the filing of a Defence, but I hold that to entitle the Defendants to raise the issue it must first be raised in their affidavit in opposition to the summons. The Defendants had the opportunity of an adjournment to file such affidavit but they did not choose to avail themselves of this opportunity. I therefore hold that the Defendants may not raise the issue and that the Plaintiff may rely on the presumptions under the statute.

12. The Plaintiff's ownership of the copyright in dispute is not conclusively established by the affidavit evidence. The Plaintiff's contention is that on the evidence it was at least the equitable owner of the copyright and as such entitled to sue for an interlocutory injunction [Copinger 611, Performing Right Society Ltd. v. London Theatre of Varieties Ltd., (1914) A.C. 1].

13. On the question of infringement of copyright I find on the uncontradicted evidence of the Plaintiff that there is prima facie infringement of the copyright in the artwork of the Snakes and Ladders board and in the instructions printed on the back of the box containing the Plaintiff's product.

14. As to passing-off it was contended for the Defendants that although it was conceded that there is a tort of assisting others to pass-off in a foreign country, in order for the Plaintiff to succeed, its reputation in the product or get-up must be established in Hong Kong. That the sale of 126 pieces in 1 year falls short of establishing such reputation.

15. This contention is refuted by the case of John Walker & Sons Ltd. v. Henry Ost & Co. Ltd.⁽¹⁾. This case is the authority for the following principle:-

"The supply of (or even the mere authorisation to use) instruments of deception which the defendant knows are going to be used for passing-off (even abroad) is itself a form of passing-off which is actionable and takes place when the supply or authorisation occurs." (10th Kerly on Trademarks, 16-76)

16. The Plaintiff does not claim a reputation in its products in Hong Kong, but relies on its reputation in the United Kingdom, which reputation is prima facie established.

17. I order an injunction in terms of paragraph 1 of the Summons dated 19th June 1981 with costs to the Plaintiff.

18. Certificate for counsel.

Representation:

Mr. A. Rogers (Messrs. Hampton, Winter & Glynn) for Plaintiff.

Mr. C. Tang of Messrs. Johnson, Stokes & Master for Defendants.

(1) (1970) R.P.C. 493