Moulinex S.A. v. Siraj Ud-din t/a Khyber Export (Far East) Co.
Read the full judgment text of HCA 11230/1998 on BabelCite. This High Court CFI judgment was delivered on 8 July 1999.
1. The Plaintiff applies for summary judgment against the Defendant for an injunction to restrain him from infringing its trade mark 'Moulinex' in relation to kitchen utensils and other consequential relief.
Cites 3 cases
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HCA011230/1998 HCA11230/98 IN THE HIGH COURT OF THE HONG KONG SPECIAL ADMINISTRATIVE REGION COURT OF FIRST INSTANCE ACTION NO. 11230 OF 1998 ----------------------------
---------------------------- Coram : Hon Cheung J. in Chambers Date of hearing : 8 July 1999 Date of judgment : 8 July 1999 ------------------- J U D G M E N T ------------------- Summary judgment 1. The Plaintiff applies for summary judgment against the Defendant for an injunction to restrain him from infringing its trade mark 'Moulinex' in relation to kitchen utensils and other consequential relief. The Plaintiff's case 2. The case of the Plaintiff is that it is the registered owner of the 'Moulinex' trade marks in respect of kitchen utensils. These utensils include blenders and mixers. Through a private investigator, the Plaintiff purchased a blender mixer ("the blender") from the Defendant. This blender bears one of the trade marks of the Plaintiff, but the actual blender mixer is not a product of the Plaintiff. The Defendant further offered to sell counterfeit mixers bearing the Plaintiff's trade mark to the private investigator. 3. The transaction was conducted at the Defendant's premises between the private investigator and someone called Andy Sin Ka Kin ("Andy Sin"). The Defendant's case 4. The Defendant had not filed any affidavit in this application, but had instead, until yesterday, relied on the Defence filed in this action. The Defence stated that Andy Sin was a minor staff of the Defendant who was not authorised to deal with any trade on behalf of the Defendant. It was admitted that the blender was sold by Andy Sin to the private investigator, but it was only sold "for reference as quality of the goods that the Defendant could supply". The Defendant said that he had not sold or supplied any counterfeit goods; he did not have any intention to sell, supply or offer to sell and supply any counterfeit goods. The test 5. The test in Order 14 application is whether the Defence is credible. If yes, the Defendant must be given leave to defend, if not, the Plaintiff is entitled to judgment (Ng Sou Chun v. Hung Chun San [1994] 1 HKC 155. Agreed issues 6. Mr Cheung, Solicitor for the Defendant, now accepts, for the purpose of the Order 14 application, the validity of the trade marks of the Plaintiff. 7. The use of a trade mark in a counterfeit product clearly constitutes a use of the registered trade mark. This constitutes an infringement under s.27 of the Trade Mark Ordinance (see : Levi Strauss & Co. v. Maruichi Holdings (HK) Ltd. and Others [1992] 1 HKC 419). This is not an issue challenged by the Defendant. The real defence 8. The real defence is that the sale to the private investigator was not handled by the Defendant personally, it was carried out by Andy Sin, a minor staff of the Defendant. In order to make the Defendant vicariously liable, the Plaintiff has to establish that Andy Sin acted within the scope of his employment, or that he had the authority to act for the Defendant. The Defendant had never traded with the private investigator before and no representation was made by him. The authorities of Limpus v. London General Omnibus Co. (1862) 1 H & C 526 and Uxbridge Permanent Benefit Building Society v. Pickard [1939] 2 KB 238 were relied upon. Reality of the situation 9. In my view, some reality must be recognised. The business with the private investigator was transacted in the business premises of the Defendant. Prior to his visit, the private investigator had faxed an enquiry letter to the Defendant stating that he would visit his office on 29th September 1997. The written response he received was as follows :
The response further stated that "Please see the sample first" against the part of the letter in which the private investigator asked for the supply of the product catalogue and price list. 10. The private investigator was met by Andy Sin who conducted the sale and signed the receipt for the sale of the blender. The company chop was imposed on the receipt. 11. In his Defence, the Defendant had never described what was the actual function of Andy Sin in his office. He did not even say that he had no knowledge of the private investigator's fax informing him that he would come to his office and that Andy Sin had responded to this letter. Draft affirmation 12. Mr Cheung, in his affirmation, explained that the Defendant is out of Hong Kong. A draft affirmation which is exhibited to Mr Cheung's affirmation was sent to him in Pakistan and the Defendant had confirmed the truthfulness of the affirmation. 13. The draft affirmation was not affirmed by the Defendant. I certainly would disapprove the practice of relying on unaffirmed affirmations in an Order 14 application. In any event, what is contained in the draft affirmation would not assist the Defendant at all. The draft affirmation now says that the Defendant was seldom in Hong Kong in the past two or three years. He was not in Hong Kong when the private investigator visited the office. He was only aware of what had happened in September 1997 when Mr Sin showed him the demand letter from the Plaintiff dated 8th July 1998. Who actually operates the business? 14. What the Defendant did not say is who would operate his business when he was not in Hong Kong. Why kept Mr Sin and another employee, Mr Ashfag Mohammed if all that they had to do is to deal with minor and routine office tasks such as remitting telegraphic transfers, dealing with account and taking telephone messages? The Defendant is, after all, operating a business and business is expected to be done whether the proprietor is in town or not. It is simply not credible that Mr Sin did not have the authority to transact business on the Defendant's behalf. The counterfeit blender 15. The Defendant said that he was given the counterfeit blender by someone in Guangzhou in 1997. He kept it for his own reference to quality standard. It is extremely odd that his own employee would likewise provide the same blender to the private investigator for the purpose of reference as to quality. Mr Sin must be acting in the course of his employment when he offered the counterfeit product to the private investigator. Course of business and scope of employment 16. In Kerly's Law of Trade Marks and Trade Names 12th Ed., para.15-15, it is stated that :
17. The test is whether the employee was acting within the scope of his employment and did the act in the course of his employer's business. In this case, based on the evidence before me, the answer must be 'yes'. In my view, the defence that the Defendant had not sold or offered counterfeit products, or that Mr Sin did this on his own accord is simply not credible. No defence 18. Mr Cheung further relied on the criticism of Godfrey J. (as he then was) on the misuse of Order 14 applications in Skink Ltd. (in liquidation) v. Comtowell Ltd. [1994] 2 HKC 286. Ultimately, each case depends on its own facts and the issue is whether the defendant has a defence to the action. In this case, I find that the Defendant has no defence to the action and the Plaintiff is entitled to succeed in the Order 14 application. Conclusion 19. I would grant the relief as asked for by the Plaintiff, namely -
Summons for security for costs 20. I grant leave to the Defendant to withdraw the summons for security for costs. [Submission on costs of summons] 21. Costs of the summons is to the Plaintiff.
Representation: Mr Norman Hui, inst'd by M/s Baker & McKenzie, for the Plaintiff Mr Cheung Wing Kong of M/s Lee Chan Cheng, for the Defendant |