Pringle of Scotland Ltd v. Fung Yun-fong, Gloria

HCA236/2005

IN THE HIGH COURT OF THE

HONG KONG ADMINISTRATIVE REGIONCOURT OF FIRST INSTANCE

ACTION NO. 236 OF 2005

_________________

BETWEEN

_________________

Before:  Deputy High Court Judge Carlson in Chambers (open to public)

Date of Hearing: 18 July 2005

Date of Judgment:  18 July 2005

_______________

J U D G M E N T

_______________

1.This is a passing-off action brought by the Plaintiff, an internationally-known retailer and manufacturer of woollen and cashmere garments.  It conducts its business, which it has done now for the past 190 years, under the brand name of Pringle, Pringle of Scotland, and/or a rampant lion which has come to be associated with its products. 

2.The Defendant, who started business as a sole proprietor late last year from small upper floor premises in Tsim Sha Tsui, sells, amongst other things, woollen garments such as pullovers, twin-sets and the like, manufactured for and/or on behalf of the Plaintiff.  What she has done is to purchase substantial quantities of Pringle stock from Pringle warehouse outlets in the United Kingdom which sell defective items, out of season items, or sample products, which she has brought to Hong Kong and which she sells at low prices compared to the perfect Pringle garments that are available from leading shops in Hong Kong such as Lane Crawford.

3.Whilst that may be unobjectionable in itself, it is said that she has gone substantially further than this by making a number of representations, both express and to be implied from all the circumstances, by which she is guilty of passing off her business as that of the Plaintiff in a number of respects which I will come to presently. 

4.As so often happens, this case has a David and Goliath look about it.  The Plaintiff, a substantial international corporation, ever mindful of protecting its commercial interests, has brought to bear some heavy guns against an unrepresented small business venture operating from tiny premises on the 7th floor of a building in Carnarvon Road.  This is reflected in the fact that Mr Xavier, who appears for the Plaintiff, has prepared a most helpful and detailed written submission running to some 50 pages which has been served in good time on the Court and on the Defendant herself.  In it, he has addressed all the arguments that arise on the Plaintiff’s case, supported by the relevant texts and cases.  The Defendant herself, who had once been represented by solicitors, has not really been able to say anything useful in her defence.

5.This is an application for summary judgment under Order 14.  Having read the pleadings, the evidence in support of the Plaintiff’s case, as well as the evidence filed for the Defendant, and having regard to what Mr Xavier has written and said today, and having listened to the Defendant, I am in no doubt, for the reasons that Mr Xavier has given, that judgment must be entered in the Plaintiff’s favour.  There can be no possible defence to this action in respect of the matters in which summary judgment is sought. 

6.This is a case where the Defendant has been guilty of two types of passing-off.  Firstly, making a false claim of association and/or connection with the Plaintiff, as explained in paragraphs 21 to 36 inclusive of Mr Xavier’s written submission; and secondly, of passing-off the Plaintiff’s goods of a particular quality as and for the Plaintiff’s goods of another quality, as explained in paragraphs 37 to 40 inclusive of his submission. 

7.Mr Xavier has also directed argument in respect of possible defences raised by the defence as to parallel importation of these garments and a lack of intention to deceive.  I am satisfied that such suggestions cannot provide the Defendant with a triable issue to stave off judgment at this stage. 

8.Lastly, starting at paragraph 44, Mr Xavier has also persuaded me of the necessary ingredients in any passing-off action which is that damage has, or will be, caused to the Plaintiff by the Defendant’s activities, for which there will have to be an inquiry.  The claims as to infringement of trademark and copyright are not pursued. 

9.Accordingly, I will enter judgment in favour of the Plaintiff in respect of the following elements of the prayer to the amended statement of claim as follows (see page 88 et seq of the pleadings bundle):- 1, 2, 3(a), 4(a), (b) and (c), 6, 7, 8 (in respect of the Pringle word mark but not in respect of copyright) 10 and 11.  I would have thought, inevitably, that the Plaintiff must also have its costs of this action to be taxed on a party and party basis. 

(Clarification by counsel)

10.There will not be judgment in respect of paragraph 4, so what I have just said about paragraphs 4(a), (b) and (c) do not form part of the judgment.  As to paragraph 8, this will only relate to passing-off and not in respect of, as appears in the paragraph, registered trademarks and copyright.

Representations:

Mr Albert Xavier, instructed by Messrs Lo & Lo, for the Plaintiff

Defendant, Fung Yun-fong, Gloria (trading under the name Scott), in person