Hammer Casters Kabushiki Kaisha v. Yip Ling Foon
Read the full judgment text of HCMP 2239/2005 on BabelCite. This High Court CFI judgment was delivered on 28 November 2005.
1. The applicant is a Japanese Corporation. It has been manufacturing and selling metallic casters since 1958. Since 1965, its casters have been sold worldwide under a mark that consists of the word “Hammer” and image of a hammer. Its casters have been sold in Hong Kong by its sole distributor, Ziangkong Company Limited (祥康貿易有限公司).
|
HCMP2239/2005 IN THE HIGH COURT OF THE HONG KONG SPECIAL ADMINISTRATIVE REGION COURT OF FIRST INSTANCE MISCELLANEOUS PROCEEDINGS NO. 2239 OF 2005
______________________ BETWEEN
Coram: Deputy High Court Judge L Chan in Court Date of Hearing: 28 November 2005 Date of Decision: 28 November 2005
J U D G M E N T
1.The applicant is a Japanese Corporation. It has been manufacturing and selling metallic casters since 1958. Since 1965, its casters have been sold worldwide under a mark that consists of the word “Hammer” and image of a hammer. Its casters have been sold in Hong Kong by its sole distributor, Ziangkong Company Limited (祥康貿易有限公司). 2.Through substantial sales and marketing throughout the years, the applicant has acquired substantial goodwill and reputation in Hong Kong. Its mark has come to denote its own casters. Its local sales had exceeded 23 million from the year 2000 to September 2005. It had also incurred over 1.5 million in local advertising since 2001 to August 2005. 3.The mark in question (“the said mark”) was registered as a trademark on 3 February 2005 on the application of the respondent, 葉靈歡(Yip Ling Foon), who purported to be its owner. It was registered in the respect of the goods in Class 6. They include common metals and their alloys, metal building materials, ironmongery, small items of metal hardware and goods of common metal not included in other classes. 4.This application was made pursuant to sections 11(5)(b), 12(5)(a) and 53 of the Trademarks Ordinance, Cap. 559 for a decoration that the said mark is invalid on the grounds that its registration was made in bad faith and it should not be registered by virtue of the law of passing off. Sections 11(5)(b) and 12(5)(a) and the relevant parts of section 53 provide as follows:
5.The said mark is identical or confusingly similar to the applicant’s mark. The respondent has not taken any steps to contest this application or filed any evidence to challenge the applicant’s evidence. It has also not appear in this hearing. 6.I am satisfied that by reason of the uncontested evidence filed by the applicant, the respondent must have been aware of the applicant’s casters and that they were the only casters sold under the applicant’s mark. The respondent must also be aware of the goodwill and reputation that the applicant has acquired in the past 40 years. 7.Despite being aware of all these, the respondent still applied to register his mark which is so strikingly similar to that of the applicant’s. It is obvious that the respondent’s intention in registering the mark was to confuse purchasers into believing that his goods are those of the applicant’s or that they are of similar quality to the applicant’s. For these reasons I accept the application on the above-mentioned grounds. 8.I therefore make an order in terms of paragraphs 1 and 2 of the originating motion, which includes an order that the respondent do pay the applicant the costs of this application.
Representation: Ms Jane Lo, instructed by Messrs Siao, Wen and Leung, for the Applicant 葉靈歡先生 (Mr Yip Ling Foon), in person, Respondent, absent |