Hugo Boss Trade Mark Management Gmbh & Co. Kg and Others v. Isa Boutique Ltd and Another

HCA251/2007

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO. 251 OF 2007

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Before : Deputy High Court Judge Mayo in Chambers

Date of Hearing : 2 October 2008

Date of Decision : 2 October 2008

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D E C I S I O N

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1.This is an appeal from part of a Ruling of Master Levy by the defendants against an order she made.  

2.This was an order requiring the defendants to give further and better particulars of their Amended Defence. 

3.The relevant requests are Requests 4, 5, 6, 8, 9 and 10. 

4.It is convenient to deal with the requests in this way. 

Requests 5 and 6

5.Requests 5 and 6 :

“5.   State all material facts and give full particulars of all matters as to why, when, where, by whom and the manner(s) in which the hangtags had been tampered with and the reason and purpose that the hangtags were tampered with in such manner(s); 

6.    Give full particulars of what fashion items or garments referred to had hangtags tampered with; …”

6.These requests are relevant to the plaintiffs anticipating that the defendants may seek to invoke section 20 of the Trade Marks Ordinance.  This is that the goods were parallel imports.  Section 20 reads :

“Exhaustion of rights conferred by registered trade mark

(1)   Notwithstanding section 18 (infringement of registered trade mark), a registered trade mark is not infringed by the use of the trade mark in relation to goods which have been put on the market anywhere in the world under that trade mark by the owner or with his consent (whether express or implied or conditional or unconditional).

(2)   Subsection (1) does not apply where the condition of the goods has been changed or impaired after they have been put on the market, and the use of the registered trade mark in relation to those goods is detrimental to the distinctive character or repute of the trade mark.”

7.As submitted by Mr Shieh, SC for the defendants it is incumbent upon the plaintiffs to prove that the goods had been changed or impaired. 

8.Why the goods have been impaired is irrelevant and whom and where the impairment has occurred is immaterial. 

9.Partial mutilation has to be established by the plaintiffs. 

10.It is accordingly not necessary for the defendants to provide the details requested in respect if Request 5 and the request is refused. 

11.As to the particulars sought in Request 6, these appear to be misconceived.  The defendants admitted to tampering with some of the articles.  

12.The plaintiffs need only prove that some of the articles have been tampered with.  This renders the request or particulars to be unnecessary and redundant and the particulars do not need to be given. 

Request 8

13.Request 8 :

“8.   State all material facts and give full particulars as to what trade mark(s) was or were borne by the fashion items and garments referred to and what trade mark(s), if any, under or by reference to which the fashion items and garments referred to were offered and exhibited for sale and sold by the Defendants.”

14.In the reply given by the defendants they have denied any infringement of trade marks relating to services provided and have not admitted infringing marks relating to goods. 

15.Ms Tsang for the plaintiffs contends that there is a service element in selling goods.  I disagree. 

16.What is involved in this case is trade marks relating to goods and it is not necessary for the defendants to furnish any further particulars. 

Requests 4, 9 and 10

17.Request 4 :

“4.   State all material facts and give full particulars of all matters relied on in support of the allegation that the goods had been put on the market by and with the consent of the owners of the trade marks mentioned.”

18.The particulars already given by the defendants that the source of the goods was Hugo Boss Italia SPA is quite sufficient. 

19.Obviously this company is part of the Hugo Boss empire and it was quite sufficient to provide this particular. 

20.Requests 9 and 10 :

“9.   State all material facts and give full particulars of all matters relied on in support of the allegation that the goods in question were genuine goods originated from the Plaintiff. 

10.  State all material facts and give full particulars of all matters relied on in support of the allegation that the goods in question were marketed by or with the consent of the Plaintiffs.  In particular but without prejudice to the generality of the foregoing, where any such consent is alleged to be ‘express’, state the identity of the party by and/or through whom such consent was made and to whom it was communicated, and the time and place of such communication, and further identify any relevant documents in which the consent was documented.  Where any such consent is said to be ‘implied’, give like particulars as requested above, and further full particulars of the circumstances under which the implication is alleged to be arisen.  Where any such alleged consent is said to be conditional, give full particulars of the condition or conditions attached.”

21.The particulars already supplied by the defendants are quite sufficient. 

22.The plaintiffs is well aware of the defendants’ defence and there is no need to provide the particulars sought. 

23.To summarise the position this appeal is allowed in its entirety. 

24.I will hear the parties on costs.  

Ms Jennifer Tsang, instructed by Messrs Twiggy M H Liu Law Office,  for the 1^st, 2^nd and 3^rd Plaintiffs

Mr Paul Shieh, SC and Mr Kevin Pun, instructed by  Messrs Cheung & Choy,  for the 1^st and 2^nd Defendants