Big Bucket Ltd v. Water Butt Health Massage Ltd
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HCA1384/2009 IN THE HIGH COURT OF THE HONG KONG SPECIAL ADMINISTRATIVE REGION COURT OF FIRST INSTANCE ACTION NO. 1384 OF 2009 ----------------------
---------------------- Before : Mr Recorder Yuen, SC in Chambers Date of Hearing : 19 June 2009 Date of Decision : 19 June 2009 ---------------------- D E C I S I O N ---------------------- 1.This is the plaintiff’s application for an interim injunction against the defendant. The defendant did not attend today’s hearing, although the evidence shows that it has been served with the relevant papers. 2.The background of this matter can be very briefly summarized as follows. The plaintiff carries on the business of providing massage under the Chinese trade name of “大桶水” (literal translation “Big Bucket Water”) or the English trade name of “Big Bucket Footbath and Reflexology”. According to the plaintiff, the reason for using this trade name and also the related trademarks which I shall refer to is that the bucket used for soaking the customer’s feet are unusually big and that they have never come across other massage establishments using such big buckets for containing Chinese medicines to serve customers. 3.The plaintiff is the owner of three registered trademarks registered under the Trademark Ordinance (Cap. 559). The three trademarks numbers are 04697/2004, 04698/2004 and 04699/2004. All these three trademarks are in class 42 and registered in respect of “foot massaging services; healthcare services; massaging services; medical services; beauty salon services; sauna services; providing of food and drink; temporary accommodation; beauty and personal hygienic consultancy services”. The registration certificate and the marks can be seen from exhibits “CWH-1”, CWH-2” and “CWH-3” which are exhibited to the Affirmation of Cheung Wan Hing filed in this action on 11 June 2009. 4.Since commencement of operation in around 2002, the plaintiff has invested a lot in promoting its business. Examples of promotional activities include advertisements in magazines and tourist guidebooks, distribution of leaflets and also participation in public functions. On the evidence, there is at least a strong prima faice case that the plaintiff’s business has been reasonably good and is enjoying considerable goodwill and reputation. 5.According to the plaintiff, the alleged wrongful conduct on the part of the defendant was discovered in about April 2009. Investigation was then conducted and a staff of the plaintiff, Miss Ng, was sent to attend the defendant’s premises posing as a customer. What happened during the visit by Miss Ng is set out in the Affirmation of Ng Siu Kuen filed on 11 June 2009. For the present purpose, I do not think I need to repeat the evidence here. In short, in the course of massage, the defendant’s staff represented to Miss Ng that the defendant was a branch of the plaintiff. Further, the receipt issued to Miss Ng also bears the Chinese character“大桶水” (which, as stated above, is the plaintiff’s trade name). 6.For the present application for interim injunction, the approach and the law are fairly well established. One applies the leading authority of American Cyanamid. The plaintiff also contends that in cases where there is no arguable defence to the plaintiff’s claim, the court should grant the injunctions sought without any need to consider the balance of convenience as laid down in American Cyanamid. I do not think we need to go that far for the present purpose. I am satisfied that applying American Cyanamid, clearly this is an appropriate case to grant an interim injunction against the defendant. 7.I shall first deal with whether there are serious questions to be tried. The causes of action relied on by the plaintiff are firstly, infringement of registered trademark and secondly, passing off. Insofar as infringement of trademark is concerned, on the evidence it is quite clear that the mark used by the defendant in the course of its business are strikingly similar to those owned by the plaintiff. Confusion, in my view, is most likely to occur and there is indeed evidence of confusion. In relation to passing off, likewise on the evidence adduced by the plaintiff I am satisfied that there is clearly a serious question to be tried. On the plaintiff’s evidence (which is not contradicted), it appears that the defendant is deliberately going all out to pass off and to misrepresent that they are part of the plaintiff’s business. 8.Insofar as adequacy of damages is concerned, I am satisfied that monetary damages will not be a sufficient remedy mainly for two reasons. Firstly, it will be difficult to assess the quantum of damages. If my view on confusion is correct, it will be difficult to know how many customers were actually confused and therefore patronised the defendant’s business instead of the plaintiff’s business. The plaintiff is simply not in a position to tell. It might be suggested that one way is to invite the defendant to keep proper books of accounts so that the income made by the defendant can be assessed. But even if we have a proper account of the defendant, one cannot tell which of those customers who patronised the defendant are actually confused and who originally intended to patronise the plaintiff’s business. 9.Further, there is evidence that the standard of services provided by the defendant is far more inferior to that of the plaintiff. If that is the case, the plaintiff’s reputation and goodwill will be damaged and to that extent, it is likewise difficult, if not impossible, to assess the final quantum of damages. 10.I move on to the question of balance of convenience. The defendant has not filed any evidence and chose not to attend today’s hearing. There is therefore no evidence that the defendant enjoys any independent goodwill or reputation apart from assuming the trade name which is similar to that of the plaintiff. Besides an injunction will not prevent the defendant from carrying on massage business. It will only prevent the defendant from carrying on massage business in ways which would constitute an infringement of trademark or constitute passing off. On the other hand if no injunction is granted, plainly for the reasons summarized above the plaintiff will continue to suffer damage and that monetary compensation will not be an adequate remedy. 11.For these reasons, I conclude that an interim injunction is appropriate in the present case. 12.Moving onto the terms of the order. The plaintiff’s summons dated 11 June 2009 set out the order that they seek. In the course of exchange with Mr Liu, counsel for the plaintiff, certain changes have been made to the order proposed in the summons. What I would propose to do is to make an order in terms of paragraph 1 of the plaintiff’s summons save that I will delete the reference to the words “beauty and personal hygienic consultancy services” for the reasons indicated in the course of my exchange with the plaintiff’s counsel. I will also make an order in terms of paragraphs 2 and 3 save that the reference to 7 days in paragraph 2 and also the reference to 10 days in paragraph 3 will each be changed to 14 days. I will not make an order in terms of paragraph 4 but I will say simply “liberty to apply”. And then I will make an order in terms of paragraph 5 of the summons, that is the costs of this application be the plaintiff’s costs in the cause.
Mr Liu Cheong Wang, Jerome, instructed by Messrs Cheung & Choy, for the Plaintiff The Defendant in person, absent |