Re Star Industrial Co Ltd

HCMP 1078/2007

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO. 1078 OF 2007

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Before:  Hon Reyes J in Court

Date of Hearing:  9 April 2008

Date of Judgment:  9 April 2008

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J U D G M E N T

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1.Star Industrial applies for the revocation of certain registrations under Sun Hoi’s name in the Register of Designs.  Those registrations are number 0600875.1 and 0602430.9.  The former relates to a container with a lid, the latter to a moisture-proof air-tight container. 

2.The former design became registered as of 4 April 2006, the latter as of 19 September 2006.  I say “as of” because registrations are backdated to the dates (here, 4 April and 19 September 2006) when applications for registration are made.

3.The sole ground which Mr. Colin Shipp (appearing for Star Industrial) advances today in support of the application is the publication of both designs prior to registration.  Mr. Shipp says that neither design was novel at the time of its registration.  That ground of attack was signalled in paragraph (1) of Star Industrial’s Motion.

4.The designs were published before registration (Mr. Shipp points out) because by Sun Hoi’s own affirmation evidence each was “put for sale in the market in or about January 2006”.  January 2006 was obviously long before the registrations became effective in April or September 2006.

5.Mr. Kent Yee (appearing for Sun Hoi) acknowledges that, to qualify for registration, a design must be novel at the date of filing an application.  He accepts that the design of a product may be published by offering the product for sale.

6.On that basis, Mr. Shipp must be right and his argument is indisputable.  Both containers having been put on sale months before applications were made for the registration of their designs, the designs of the containers cannot have been novel on 4 April or 19 September 2006.

7.But Mr. Yee says that the deponent of Sun Hoi’s affirmation, Mr. Zhang Kang Mai (Sun Hoi’s Product Manager), probably made a mistake.  Mr. Yee says that a different person, Mr. Kee Chi Kin (a Sun Hoi director) proposes to make a further affirmation deposing this time that, according to Sun Hoi’s records, the containers were not sold until after applications for registration had been filed.

8.Mr. Zhang (Mr. Yee claims) did not adduce any documents in support of a January 2006 sale date.  Mr. Kee in contrast will apparently produce supporting documents.  This will establish (Mr. Yee submits) that Mr. Zhang must indeed have been mistaken.  Mr. Yee asks for an adjournment of some 3 weeks to enable Mr. Kee’s proposed affirmation to be filed.

9.I cannot accede to the application for adjournment.

10.Star Industrial’s Motion was taken out in June 2007.  Star Industrial filed an affirmation in support of its application in August 2007.  Mr. Zhang’s Affirmation, which was made with the assistance of solicitors, was filed on 8 November 2007 following several time extensions. 

11.This application has been around for long enough.  It was in fact originally to be heard on 10 January 2008, but was adjourned at Sun Hoi’s request.  Star Industrial must be entitled today to know where it stands in relation to the impugned designs.

12.There was more than enough time for Sun Hoi to check its records to ensure that what Mr. Zhang said was true and accurate.

13.Further, Mr. Yee is only inviting the Court to surmise that Mr. Zhang somehow got it wrong.  Mr. Yee has proffered no evidence from Mr. Zhang himself explaining how Mr. Zhang came to make a mistake (if indeed there was any mistake). 

14.It cannot be enough to obtain an adjournment at this late stage for Mr. Yee merely to state from the bar table, without supporting affidavit evidence from anyone, that Mr. Zhang probably made a mistake and Mr. Kee on now examining the records will set matters straight.  Just how and why did the alleged error come to be in the first place?  The Court is completely in the dark on this. 

15.The Court will need far more material if it is to ignore a statement on oath which has been on file for some time and grant an adjournment.  That statement was apparently been made in good faith and on legal advice, including presumably the potential consequences of deposing that something has been marketed months before registration was sought.  In the circumstances, in the absence of any material, the Court cannot now ignore Mr. Zhang’s statement.

16.There being no good reason for an adjournment and Mr. Shipp’s argument being unanswerable, there will be judgment in favour of Star Industrial in terms of its Motion.

Mr Colin Shipp, instructed by Messrs Wilkinson & Grist, for the Applicant

Mr Kent Yee, instructed by Messrs Gallant Y T Ho & Co., for the Respondent