Modern Beauty Salon Holdings Ltd and Another v. Unicity Hong Kong Ltd
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HCA 2644/2007 IN THE HIGH COURT OF THE HONG KONG SPECIAL ADMINISTRATIVE REGION COURT OF FIRST INSTANCE ACTION NO. 2644 OF 2007 ____________ BETWEEN
____________ Before: Deputy High Court Judge L. Chan in Court Date of Hearing: 16 November 2009 Date of Judgment: 16 November 2009 ______________ J U D G M E N T ______________ 1.This is the trial of an action based on infringement of registered trademark and passing off. The defendant is absent from the trial. The defendant used to be represented by solicitors until 10 June 2009. At that time, the defendant’s preparation to defend this action was completed. I understand that last Saturday a director of the defendant has applied to a Master for leave to represent the defendant, but the application was unsuccessful. Infringement of trademark 2.The 1st plaintiff is a listed company. The 2nd plaintiff is an indirectly wholly owned subsidiary of the 1st plaintiff. The 2nd plaintiff is the owner of Hong Kong trademark “ 3.Though the trademark was registered on 5 June 2002, the plaintiffs’ evidence shows that the plaintiffs had been using marks similar to this trademark since 1995. There is also clear evidence that since August 2001 the plaintiffs have been advertising in a number of popular magazines in Hong Kong their cosmetics bearing this trademark. 4.The defendant company sells cosmetics at a shop in a popular shopping mall in Mong Kok. It sells, among other things, personal care, beauty and cosmetic products. Its goods bears the mark “Be”. It alleged in its defence and witness statement that it had been using this mark on beauty and cosmetic products since February 2002, although the evidence suggests that, if the defendant had been using this mark, it was later in August 2002, or even in the year 2006. 5.The common grounds between the parties are that the plaintiffs’ registered trademark is validly registered and the defendant did use its own mark for beauty and/or cosmetic products. 6.Section 18(3) of the Trademarks Ordinance, Cap.559, provides:
7.The plaintiffs therefore have to prove on a balance of probability that the defendant’s mark is similar to the plaintiffs’ registered trademark and the defendant’s use of its mark in relation to its beauty and/or cosmetic goods is likely to cause confusion on the part of the public. 8.Both the plaintiffs’ registered trademark and the defendant’s mark are composed of the letters “B” and “E”. The two marks are pronounced the same. They are aurally identical. They are also conceptually similar being the first two letters of the words “beauty” and “beautiful”. They are also visually very similar. The fact that the plaintiffs’ registered trademark uses a small letter “b” whilst the defendant’s mark uses the capital letter “B” and with an underline does not make the defendant’s mark distinct from the plaintiffs’ registered trademark. Consumers are not supposed to put the two marks side by side for detail comparison. Both marks are also used for similar goods of similar get up. 9.I therefore find that the defendant’s mark is similar to the plaintiffs’ registered trademark and the defendant’s mark is used in relation to goods which are similar to the plaintiffs’ goods for which its trademark is registered. 10.For the same reasons, I also find that the use by the defendant of its mark on its beauty and/or cosmetic goods is likely to cause confusion on the part of the public. Grounds of defence 11.Since the defendant has not appeared, I do not think I need to deal with the defendant’s grounds of defence. However, I would briefly discuss them just to show that they are not valid grounds. 12.The defendant pleaded honest concurrent use as its first ground of defence. This ground is based on section 13(1) of the Trademark Ordinance, which provides:
13.This ground is only for consideration of registration for trademark against which there is an earlier registered trademark. It is not a ground of defence for infringement of a registered trademark by an unregistered mark. This ground of defence therefore fails. 14.The other ground is the defendant’s use of its mark prior to the registration of the plaintiffs’ registered trademark. 15.Section 19(4) of the Trademark Ordinance provides:
16.In order to succeed, the defendant must prove that it had used its unregistered mark prior to the registration of the plaintiffs’ registered trademark and the date of the first use in Hong Kong by the plaintiffs of that mark. 17.The defendant has asserted that its first use of its mark in Hong Kong was in February 2002. However, the plaintiffs’ evidence shows that the plaintiffs had been using and advertising their mark on cosmetics goods since August 2001 before its mark was registered. This ground of defence therefore also fails. Passing off 18.The plaintiffs also claims against the defendant for passing off. The plaintiffs’ sale of cosmetics products bearing the registered trademark has been generating substantial revenue in the last few years. The evidence shows that the turnover since 2002 to 2008 are as follows:
19.The plaintiffs have also incurred substantial sums to advertise these products in Hong Kong. The sums spent from 2002 to 2008 are as follows:
20.On the above figures of sales and advertising, I find that the plaintiff has acquired goodwill to its cosmetic goods bearing the registered trademark in the mind of the purchasing public. 21.For the same reasons that I have found for the plaintiffs for infringement of the registered trademark, I also find that the use by the defendant of its mark on its cosmetics goods amounts to a misrepresentation and is likely to confuse the public into thinking that such goods are those of the plaintiffs or related to or sourced from the plaintiffs. I therefore find that the defendant is liable to the plaintiffs for passing off. Judgment 22.I therefore order that:
Mr Alan Kwong, instructed by C Y Lam & Co., for the 1st and 2nd Plaintiffs Defendant, in person, absent |
” of registration number 2004B06569 for cosmetics in Class 3, number 2004B06567 for beauty care services in Class 42, and number 30044560B for hygienic and beauty care products for human beings in Class 43. The registered trademark was registered on 5 June 2002. The 2nd plaintiff has allowed the 1st plaintiff and other companies in the same group to use the registered trademark for sale of cosmetics.
” mark;