C Art Ltd v. Ability Manufactory Ltd

HCA001006A/1989

1989 No. A1006

HEADNOTE

Infringment of U.K. registered design.

Held that: (i) The registered proprietor of a registered design seeking 0.14 summary judgment for infringment of his exclusive right, can, where there is no credible suggestion or evidence of grounds for cancellation, rely upon the bare fact of registration to establish his exclusive right and need not e.g. attempt to demonstrate the absence of such grounds.

(ii) "Shape" and "configuration" are not necessarily synonymous.

(iii) Shape and configuration include the arrangement of protruding radio control knobs and a speaker of a combined bag and radio, which do not comprise merely "pattern and ornamentation".

1989 No. A1006

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

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BETWEEN

Coram: The Hon. Mr. Justice Nazareth in Chambers

Date of Hearing: 31st day 1989

Date of Delivery of Judgment: 20th June 1989

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J U D G M E N T

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1. The plaintiff is the registered proprietor of a registered design in respect of a combined bag and radio. It is a not uncommon type of plastic carrier bag, rectangular in shape, but with a built-in radio, the speaker and control switch and knobs of which are affixed to the outside of a flap that forms the top of the bag and that functions as a lid that can be sealed with a zip fastener. In its statement of claim in this action, the plaintiff alleges that since the issue of the United Kingdom certificate of registration of the design, the defendant has infringed its exclusive privileges and rights by, inter alia, selling and offering for sale combined bags and radios to which the registered design, or a design not substantially different, has been applied. It is common ground that the defendant has sold and offered for sale items which the plaintiff alleges infringe its exclusive rights and privileges.

2. The matter now comes before me upon an Order 14 application for summary judgment by the plaintiff, on the ground that exclusive rights of sale flow from the mere fact of registration of the design. It is resisted by the defendant in a defence and counterclaim that rests upon 3 grounds:

1. The registered design was neither new nor original at the date of registration and was before that date published in Hong Kong in respect of an article which was the same or differed only in immaterial details, or features which are variants used in the trade by reason of common general knowledge.

2. If, which it denies, the design has features of novelty, then these are purely of pattern and ornament, and not shape and configuration as stated in the registration.

3. That the registered design is ambiguous in that the representations of the articles concerned do not sufficiently and clearly define the shape and configuration, nor the scope of the monopoly claimed.

3. The question that has to be addressed in relation to each ground is whether there is an issue or question that ought to be tried. Beginning with the first i.e. novelty and originality, this arises under sections 2 and 4 of the United Kingdom Registration of Designs Ordiance (Cap. 44) which respectively provide first, that the registered proprietor of a design registered in the United Kingdom under the Registered Design Act shall enjoy the like privileges and rights as though the certificate of registration in the United Kingdom had been issued with an extension to Hong Kong, and second, a power enabling this court to declare that exclusive privileges and rights in the design have not been acquired in Hong Kong on any ground upon which the United Kingdom registration might be cancelled under the law in the United Kingdom.

4. The question presents itself in this way.

"The defendant's affidavit must 'condescend upon particulars,' and should, as far as possible, deal specifically with the plaintiff's claim and affidavit, and state clearly and concisely what the defence is, and what facts are relied on to support it. ... Similarly, if a legal objection is raised, the facts and the point of law arising thereon must be clearly stated (see 0.18 r.11).

Indeed, in all cases, sufficient facts and particulars must be given to show that there is a triable issue (see r.3(1))". Supreme Court Practice 1988 p.140 para 14/3-4/4).

5. The defendant has not referred to the grounds upon which it contends that the design was neither novel nor original, nor does it refer to a single iota of evidence, it simply states its reliance upon "common general knowledge". Mr. Anthony K.K. Chan for the defendant says that particulars can only be furnished after discovery, that in any cape the obligation to condescend to particulars goes hand in hand with the plaintiff's duty to verify its summons under 0.14 r.2(1), and that the plaintiff has not, for instance, exhibited any original design drawings or pointed to any evidence or facts that establish originality. Dealing first with the latter point, in the absence of any reasonably credible suggestion or evidence that there are grounds for cancellation, it seems to me entirely adequate for the plaintiff to rely upon the fact of its design registration without proceeding to justify its entitlement to registration or the absence of grounds for cancellation. Section 2 of the United Kingdom Design (Protection) Ordinance provides quite clearly that the registered proprietor of any design registered in the United Kingdom under the Registration Designs Acts, 1949-1961, shall enjoy in Hong Kong the like privileges and rights as though the certificate of registration in the United Kingdom had been issued with an extension to Hong Kong. And Section 7(1) of the Registered Designs Act 1947 provides equally clearly that "the registration of a design under" that "Act shall give to the registered proprietor the copyright in the registered design, that is to say, the exclusive right ... to sell ... or offer for sale ... any article in respect of which the design is registered, being an article to which the registered design or a design not substantially different from the registered design has been applied...."

6. Reverting to the defendant's failure to condescend to particulars, Mr. Chan submitted that it is notorious that registered designs are not uncommonly invalid. For that proposition Mr. Chan sought to rely upon the judgment of Liu J. in Lung Sun Plastic & Metal Factory Ltd. v. Tung Ngai Plastic Manufacturing Company Ltd. 1980 No.6080, unreported. But it is clear that in that case Liu J. was shown diverse designs which bore a very close resemblance to both the plaintiff's and defendant's articles both in appearance and utility, and that his observation was "suffice it to say that such registration gained at times on fine distinction are not to be accepted without caution ..." That does not avail Mr. Chan any more than does Coleman (C) Ld.'s Application for the Registration of a Design 1958 RPC 434; 438 upon which he also sought to rely for support of his submission that the plaintiff should have given particulars of the facts or evidence upon which it relied to establish novelty and originality. In my judgment a bare reference to "common general knowledge" is inadequate. I myself am not aware of any common general knowledge relating to bag and radio combinations, which articles I may say I have never encountered or heard of before, nor, what is more to the point, has any evidence or information of common knowledge of these articles or variants thereof been provided. The defendant's first ground must therefore be rejected.

7. I turn then to the defendant's second and third grounds. The former relates to the first two of the four features of the definition of design in section 1(3) of the Registered Designs Ace 1949 i.e. shape, configuration, pattern or ornament. The defendant's contention is that the plaintiff` s registration of its design was made by reference to a statement of novelty which was limited to shape and configuration, and that it is therefore precluded from reliance upon pattern or ornamentation. The defendant contends that if anything the qualifying features of the produce consist of pattern or ornamentation. The defendant's reasoning goes thus: Shape and configuration are regarded as synonymous (Russell-Clarke on Copyright in industrial Designs 5th Ed. p.10). There is nothing new in the commonplace rectangular shape of the carrier bag. The radio controls and speakers are simply pattern or ornamentation. Ergo the registered design is invalid, no design in terms of shape or configuration that is original or novel having been shown.

8. While I accept that shape and configuration have been regarded as anonymous, I do not accept that as anything more than a statement of the general position to which there may be exceptions. I was not addressed upon the matter in any detail, nor were the several cases referred to in the relevant footnote canvassed. The footnote itself suggests there is a contrary view and that "configuration" may have a meaning slightly different from shape: per Lord Reid. A similar view was taken by Lindley L.J. in the Cow (P.B.) and Coy Ltd. case to which I shall return. Accordingly in my view having regard to the particular features and nature of the article in this case, shape and configuration would include not only the external profile of the article but also the relative position of the speaker and control knobs. The latter seem to me to be unusually well embraced by the ordinary meaning of "configuration", which is defined in the Concise Oxford Dictionary as "mode of arrangement, conformation, outline; (Astron) relative position of planets etc." No suggestion has been made or has emerged to inhibit the ordinary meaning of the expression. Upon that view design would clearly include not only the shape of the bag but also the relative arrangement and position of the speaker and control knobs.

9. Alternatively the matter may be approached upon the basis contended for by Mr. Chan, i.e. that control knobs and a speaker embedded in the flap and not possessing any elevation could not affect the shape of the bag. That construction is linked to the defendant's submission that the representation in the photographs incorporated in the design registration do not show, or clearly show the control knobs or speaker as projecting or possessing any elevation above the surface of the flap. This point is relevant to both the defendant's second and third grounds since it is implicit in Mr. Chan's submissions that if, contrary to his submissions, the photographic representations of the speaker and control knobs do show some elevation, they do that in so ambiguous a manner as completely to fail the requirements for representations to be clear and unambiguous. The latter requirement was described in the Assistant-Comptroller's decision which was adopted by Luxmore J. in the English Electric Co. Ltd. case Vol 50 (1933) RPC 359, 363, in the following way:

"As the registration of a design confers on the proprietor of the design a monopoly therein, it is essential that the design in respect of which the monopoly is obtained should be clearly defined in the representations in order that the public against whom the monopoly operates shall be in no doubt as to the nature and extent of the proprietor's rights in order that they may not infringe them. It is, therefore, the duty of the Applicant for registration to supply representations which show completely the article in respect of which he claims registration and leave no doubt or uncertainty on this point."

10. It is clear from the foregoing that the requirement is of some importance. However I am satisfied that the elevation or projection of the control knobs and speaker beyond the surface of the flap is clear from the photographs attached to the certificate of registration and are not ambiguous in the sense contended for by Mr. Chan. I think some support for the view that projections above the surface of an article form part of its shape or configuration is to be found in the judgment of Lord Evershed M R in Cow (P.B.) and Coy Ltd. v. Cannon Rubber Manufacturers Ltd. 1959 RPC 347, 350 where he accepted that the ribbed surface of a hot water bottle was part of its shape and configuration. He went on to say:

"It is quite true that in some earlier cases (and I mention, without taking time to recite, Lindley, L.J.'s language in re Clarke's Design, (1896) 13 R.P.C. at pp. 358-361, "shape" and "configuration" has been regarded as something like synonymous terms, used in contradistinction to "pattern" on the one hand or "ornament" on the ocher. But I do not think it right to say that the division between "shape and configuration" on the one side and "pattern or ornament" on the other is at all rigid; and applying what I hope is a common sense test to this hot water bottle, I would have thought it right to say that the ribbing is so marked a feature of the bottle as a whole as to be entitled to be described as a feature of its configuration. It may not be "shape", but I think it is "configuration"."

I accordingly reject the third ground, and also for the foregoing reason and the reasons I have already given, the defendant's second ground.

11. Although not specifically raised on the defendant's behalf in that way, I have considered whether there are any grounds for refusing summary judgment for "other reasons" in terms of 0.14 r.1. It is also in this context I think that I should have regard to the defendant's complaint that the plaintiff has produced nothing to show, for example, that it had itself designed the product or that it has some better claim to the product than the defendant, otherwise then on the bare fact of registration. I bear in mind that it is certainly possible for one party to steal a march upon another and register the latter's design. But there are perfectly good avenues to challenge that. As I have observed there is no onus on the plaintiff or other reason that I can see why the plaintiff should produce such evidence. The rival products are not merely striking similar, they are virtually identical in shape, configuration and every other feature. If there were anything sinister or suspicious in that or if the defendant had some prior claim in respect of the product, or indeed produced it from a common source which was published before being registered by the plaintiff, it is incredible that the defendant should not have been able to do better than rely upon the bare averment of "common general knowledge". Clearly there is no fairly arguable point.

12. For the all foregoing reasons there will be judgment for the plaintiff as prayed. I will now hear any submissions as to the costs and any ancilliary matter.

Representation:

Mr. Peter Garland instructed by Messrs. Deacons for plaintiff.

Mr. Anthony K.K. Chan instructed by Messrs. Robin, Bridge & John Liu for defendant.