The Queen v. Yang Yiu Wing t/a Mee Tai Garment Factory and Another

Case No.HCMA 390/1986[1987] 1 HKC 332

Court

High Court CFI

Date—

Judge—

Case Document

100%Judiciary

HCMA000390/1986

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HEAD NOTE

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Infringement of Trade Mark under Trade Description Ordinance, Cap 362 - No fixed standard as to the degree of resemblance which may suffice to deceive or cause confusion. Whether a trade mark nearly resembles another is a finding of fact ("Seixo v. Provezende" (1895) LR, 1 ch 192 cited in Rysta's Appn(1943) 60 RPC 87 at 108) - A trade mark is infringed if the essential features, or essential particulars of it, are taken ("De Cordora v. Vick" (1951) 68 RPC 103, 106.

IN THE SUPREME COURT OF HONG KONG

APPELLATE JURISDICTION

MAGISTRACY APPEAL NO. 390 OF 1986

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BETWEEN	THE QUEEN	Respondent
	and
	YANG YIU-WING trading as MEE TAI GARMENT FACTORY	1st Appellant
	MULTI-TRADE INDUSTRIAL LIMITED	2nd Appellant

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Coram: Deputy Judge H. Wong in Court

Date of hearing: 30th April 1986

Date of judgment: 19th May 1986

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JUDGMENT

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1. Yang Yiu-wing, proprietor of Mee Tai Garment Factory (referred to as D1) and Multi-Trade Industrial Ltd. (called D2) were summoned to appear before a magistrate, D1 for having on 30.7.1985, in his possession for a purpose of trade or manufacture 376 dozens pairs of jeans to which a mark so nearly resembling a trade mark "Kangaroo and device as to be calculated to deceive was falsely applied, and D2, with aiding abetting counseling and procuring D1 to commit that offence. The two charges were brought under Section 9(2) of Trade Descriptions Ordinance, Cap 362.

2. At the hearing on 19.2.1986, counsel for both sides called no witnesses but by mutual consent produced :

	(1)	a statement of agreed facts,
	(2)	cautioned statements made by D1 and D2's representative to a Custom Officer and
	(3)	statements of defence in the form of Declarations filed in pursuance of Section 26(1) of the Ordinance by the persons named in (2).
	It is common ground that:
	(a)	Excelsior Sports Ltd., a locally incorporated company, has since 1933 been the proprietor of the registered trade mark "B" which shows a kangaroo standing inside a circle together with the English words KANGAROO BRAND on top and the equivalent Chinese characters below, that circle.
	(b)	Invader Iternacional S.A. (hereinafter referred to as Invader S.A.), a company based in Panama, obtained ownership of trade mark "A" in that country on 26.8.1982. That trade mark displays a running kangaroo in between the words "Kanga" and "Roos".
	(c)	On 3.5.1985 Invader S.A. lodged an order for 376 dozen pairs of jeans to bear trade mark "A" With D2 which in turn contracted with D1 on 13.5.985 for the supply of that lot of goods.
	(d)	D2 furnished D1 with the labels of trade mark "A" and accessories which D1 forwarded along with the denim that he himself had purchased to a factory in China to make the required products. Both D1 and D2 were unaware of the existence of trade mark "B''.
	(e)	The consignment of 376 dozen pairs of jeans from China to D1 was seized by Custom Officers at the Hongkong border at Mankamto on 30.7.1985.

3. Upon completion of the trial the magistrate found D1 and D2 guilty as charged and imposed a fine of $5,000 on each of them. D1 and D2 now appeal against both conviction and sentence.

4. The magistrate gave a comprehensive Statement of Finding, extracts of some passages of which are reproduced in this judgment where it is deemed appropriate. On the matter at issue the magistrate posed himself these 2 questions :

	(1)	Whether the infringing mark applied to the jeans in question so nearly resembling the registered trade mark as to be calculated to deceive?
	(2)	If the answer to (1) is Yes, whether the Defendants can rely on Section 26 of the Trade Descriptions Ordinance as a Defence in the circumstances of the present case.

5. There can be no quarrel on the aptness of that test,the first part of which was made easier by the production of a T-shirt bearing trade mark "'B" and a pair of jeans, the subject matter of the case. The magistrate made a comparison of the two trade marks concerned and remarked that the trousers had been sewn on them no less than 14 marks which either showed a running kanga oo or one in between the words "Kanga" and "Roos". He went on Saying :

"On close examination of the two marks, there are quite a number of dissimilarities. It is not necessary to set out such dissimilarities as the same rill be shown on comparing the 2 marks.

But the Court need not be satisfied that the 2 marks are identical. The question to ask is whether the Defendant's mark so nearly resembling the registered trade mark as to be calculated to deceive.

The Court bear in mind the following matters :

	1.	The 2 marks and words are to be judged by their look and their sound Both marks depict a Kangaroo and the word Kangaroo appears together with the marks.
	2.	The 2 marks are to be applied to items of clothings. Such as jeans and T-shirts.
	3.	All the surrounding circumstances should be considered in particular what is likely to happen if the 2 marks are to be used in the normal course of business as trade marks for the goods of their respective owners.
	4.	The totality of the impression on potential customers who are likely to purchase the types of goods in question.
	The Court ask itself the following question.
	"	Whether an ordinary person in the street, with reasonable intelligence and perception, who are likely to purchase the types of goods in question, such as T-shirts or jeans, on seeing items of clothing bearing the Defendant's mark, could be deceived into thinking that such items of clothings are of the same type and origin as those that bear the registered trade mark?"
	The Court have carefully examined and compared the 2 marks in question and reached the conclusion that the answer to the aforesaid question is "YES". The Court therefore come to the conclusion and is satisfied beyond reasonable doubt that the Defendant's mark so nearly resembling the registered trade mark ''Kangaroo and device'' as to be calculated to deceive and the, same was falsely applied to the 376 dozen pairs of jeans in question."

6. At the appeal Mr. Lewis, for Appellants, submitted that the magistrate erred (a) in his comparison of the two trade marks "A" and "B" and furthermore directed his mind to the registered trade mark "B" rather than that fixed on the T-shirt and (b) in his consideration of the expressions "calculated to deceive" and "falsely applied" of the offence in relation to the actual situation since the offending goods were destined for Panama and there was no evidence that they would be sold in the same market as articles bearing the registered trade mark "B".

7. With due respect to Appellants' conunsel it appears to me that the magistrate has covered the points he complained about, perhaps with only a passing mention on the question of "falsely applied". On this aspect, assistance can be found from Section 9(3)(b) of the Ordinance which reads :

"For the purpose of this Section, a person shall be deemed falsely apply to goods a trade mark, who without the assent of the proprietor of that trade mark applies that trade mark to goods unless he proves that he had acted without infringing the right of the proprietor of the trade mark conferred by Section 27 of the Trade Marks Ordinance."

8. It has been hold that the words "calculated to deceive" do not necessarily involve an intention to deceive but can be regarded as causing confusion.

9. In my view there should be no dispute that in estimating whether the resemblance between the registered trade mark and the infringed trade mark is likely to deceive the person to be considered is likely to be the ultimate purchaser. It is not possible to discover from decided cases or for that matter to lay down any standard as to the degree of resemblance which may suffice to deceive or cause confusion ("Seixo v. Provezende" (1895) LR, 1 ch 192 cited by Luxmoore L.J. in Rysta's Appn (1943) 60 RPC 87 at 108). It was stated by Green M.R. at p. 105 of Rysta's Appn that a decision on the question whether a mark so nearly resembles another as to be likely to deceive or cause confusion is not an exercise of discretion by a tribunal but a finding of fact (emphasis is mine). It can also be said that two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. Put it in another way, a critical comparison of two trade marks might disclose numerous points of difference, and yet the idea that would remain with any person seeing them apart at different times might be the same. Thus, it is clear that a mark is infringed if the essential features, or essential particulars of it, are taken ("De Cordora v. Vick" (1951) 68 RPC 103, 106.

10. In the light of the finding by the migistrate that the infringing trade mark "A" that was applied to the jeans nearly resembled the registered trade mark "B" which is one of fact, there is no reason for me to say that he was wrong in his said conclusion.

11. The second ground of appeal on conviction is that the magistrate had failed to give sufficient weight to the Appellants' Declaration pursuant to Section 26 of the Ordinance in which they claimed to have taken all reasonable measures before using the infringed trade mark "A". In this connection the magistrate said in his judgment :

"	The Court proceed to consider the 2nd issuer, namely whether the Defendants can rely on Section 26 of the Trade Descriptions Ordinance as a Defence by reason of the matters raised in the 2 declarations exhibits P.4 and P.5. Section 26 of the Trade Descriptions Ordinance provides -
	(1)	In any proceedings for an offence under this Ordinance it shall, subject to Subsection (2), be a defence for the person charged to prove -
		(a)	That the commission of the offence was due to a mistake or to reliance on information supplied to him on to the act or default of another person, an accident or some other cause beyond his control; and
		(b)	That he took all reasonable precaution and exercised all due diligence to avoid the commission of such an offence by himself or any person under his control ....
	(4)	In any proceeding for an offence under Section 9(2) it shall be a defence for the person charged to prove that he did not know, had no reason to suspect and could not with reasonable diligence have ascertained, that a forged trade mark had been applied to the goods or that a trade mark or mark so nearly resembling a trade mark as to be calculated to deceive had falsely been applied to the goods.
	The Declaration of the Defendant Yang Yiu Wing P.4 suggests that he was relying on the information supplied to him by Multi Trade Industrial Ltd. who bought the goods in auestion from him as a result of specific question on this point as he did not wish to involve itself in any dealings which might involved infringements of any trade marks whatsoever. In other words he eras only relying on the Multi-Trade Industrial Ltd. who supplied to him the infringing labels and ordered the goods from him. He himself had not done anything independently to verify the information supplied by Multi-Trade Industrial Ltd. So far as Multi-Trade Industrial Ltd. is concerned again from its declaration P.5 it is clear that it was relying on its customer who informed it that they were the registered proprietor in Panama of the infringing mark in the name of "Kangaroos" bearing the device of a running Kangaroo. The declarations of the Defendants clearly show that they have knowledge about registered trade marks and the possibility of infringement of the same. Yet they chose to rely solely on the informations of their respective customers who requested for the supply of the goods that bear the infringing mark. The Court is satisfied on the evidence that a Section 26 Defence is not available to either of the Defendants in the present case."

12. The argument advanced by Appellants' counsel is that the magistrate applied both sub-sections (1) and (4) of Section 26 of the Ordinance when sub-section (4), which requires a heavier burden than sub-section (1), was not invoked by the defence. In this regard, I beg to disagree with counsel because although the heading of Appellants' Declarations say "Statement of Defence pursuant to Section 26(1) of the Trade Descriptions Ordinance", the first paragraph of those documents discloses these similar words :

"I/We wish to avail myself/ourselves of the defences set out in Section 26 (1) and (4) of the Trade Descriptions Ordinance."

13. Here again the magistrate has dealt with matters put forth by the defence, so that I cannot interfere with his finding of fact thereon. In the upshot the magistrate's decision on the guilt of the two Appellants is upheld and their appeal on conviction is dismissed.

14. On the appeal against the fine of $5,000 on each Appellant the complaint submitted on behalf of the Appellants is that the magistrate had not given due consideration to the facts that the resemblance of the two trade marks was not deliberate anal that the whole shipment of the infringed goods would become valueless by the removal of the offending labels. On this point the magistrate had inter alia, stated as follows :

"	In a commercial and business centre such as Hong Kong, offence against the Trade Descriptions Ordinance is serious."...………………........

"Businessmen must ensure that their business activities would not infringe the interest of the owner of a registered trade mark.

The Court take into consideration that both Defendants have clear record and everything, that Mr. Maxwell Lewis urges upon the Court on their behalves, the Court consider that a fine of $5,000 against each Defendant will be sufficient to reflect the attitude of the Court towards the types of offence in question."

15. In view of : (a) the magistrate's finding that 'the present case is perhaps not a very serious case of the type in that it is agreed that Defendants are not aware of the existence of the registered trade mark in question and to that extent it is not a deliberate attempt on the part of Defendant to infringe the registered trade marks" and (b) the Appellants' financial loss on this venture, which ended up as their first offence, I feel that a lighter sentence than that imposed by the magistrate would not be unreasonable in the circumstances. I therefore allow the appeal on sentence to the extent that the fine on each Appellant is reduced from $5,000.00 to $2,000.00 each.

(Henry W.C. WONG)

Deputy Judge of High Court

Representation:

Mr. C. Maxwell Lewis, instructed by Fairbairn & Kwok, for both Appellants

Mr. P.J. Dale, Senior Crown Counsel, for Respondent

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