Attorney General v. Sony Kabushiki Kaisha and Another
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CACV000101/1983 IN THE COURT OF APPEAL
BETWEEN
Coram: Roberts, C. J., Yang & Barker, JJ.A, Date: 17 November1983 __________ JUDGMENT __________ Barker, J. A.: 1. The judgment I am about to deliver is the judgment of the Court. 2. This is an appeal by the Attorney General from an order by Mayo, J. made on an Originating Summons, that the Commissioner of Customs and Excise should disclose to the Plaintiffs Sony Kabushiki Kaisha (also Known as Sony Corporation and Sony Corporation of Hong Kong Limited, hereinafter referred to as Sony, certain information and documents obtained by the Commissioner in two raids carried out by his officers on the 9th and 11th days of October 1982 by virtue of his powers under the Trade Descriptions Ordinance Cap. 362 - the information and documents being alleged to relate to forged trade marks. 3. The Originating Summons was expressed to be made under section 17(2) of that Ordinance and the sole question raised in this appeal is whether the said section 17 confers on the High Court an originating jurisdiction to order a person to disclose information obtained by him in pursuance of the Ordinance to others. 4. Three matters should be mentioned at the outset. First, Sony require this information and these documents to enable them to bring civil proceedings against persons alleged to have infringed their trade marks. Secondly, without such information or documents, Sony will find it difficult, if not impossible, to institute civil proceedings, since they do not at present know either the names or the addresses of the alleged infringers. Thirdly, the Commissioner acknowledges that he has received a great deal of information from Sony, which enabled the raids to be carried out, and would willingly furnish to Sony such information or documents as he is permitted by law to disclose. It is, however, his contention that he is not so permitted. 5. It is to be observed that the object of the Ordinance is to stamp out illicit trade in goods bearing a false trade description by rendering it criminal. In pursuance of this object, the Commissioner is, by sections 15 and 16, given power to enter premises and inspect and seize goods and documents. Nowhere (with the possible exception of section 30(7) - an ill drafted section to which reference will be made hereafter) does the Ordinance deal with civil proceedings. 6. It is against this background that we turn to section 17. It reads as follows:
7. The Judge ruled that section 17(2)(ii) empowered him to make the order for disclosure. We are of the view that it did not. 8. Although the Ordinance was passed to replace the Merchandise Marks Ordinance, it was largely modelled on the Trade Descriptions Act 1968. Section 28 of this Act, however, could lead to difficulties, because it contains an absolute bar to disclosure. As was pointed out by O'Keefe, at page 3/313 of his book on the Law Relating to Trade Descriptions, the giving of evidence in civil proceedings, if this involves the disclosure of information of the kind referred to in section 28 of the Act, could well amount to the commission of an offence. It was in our view to obviate the possibility referred to by O'Keefe that section 17(2)(ii) was enacted. 9. This view is reinforced by the terms of section 17(5). Re cannot think that these words, used as they are to relieve an officer from a liability to prosecution, are apt to found an original jurisdiction to grant an order for disclosure to enable civil proceedings to be brought. So to hold would mean that the Legislature must be taken to have changed the law by a side wind and we do not believe that this would be a reasonable interpreta-tion of its intentions. 10. Discovery (and the Order made by the Judge clearly amounted to an order for discovery) is normally limited -
11. Subject to the foregoing, the normal principle is that discovery will be ordered against a mere witness only where he has become involved in the tortious acts of others. (See Norwich Pharmacal Co. v. Customs and Excise Commissioners (l), per Lord Reid at pp. 174 and 175.) There is no question in the present case that the Commissioner has become so involved, nor does this case come within (a), (b), (c) or (d) supra. 12. In consequence we are of the opinion that the Judge had no jurisdiction to make the order which he did. 13. An argument was addressed to us as to whether jurisdiction could be conferred by section 40(3) or 40(4) of the Interpretation and General Clauses Ordinance, Cap. 1 which provides -
14. By section 3 of Cap. 1, "person" is defined, so far as relevant, as follows:
15. But in our judgment this argument fails, for two reasons. First, if it had been intended by the Legislature to bring the Court within the ambit of section 40, it would have said so. Secondly, notwithstanding the wide definition of "person in section 3, we do not consider that a court is a "public body or other person". 16. This appeal must be allowed and the order of the Judge be set aside. It is a result which gives this Court little satisfaction. It will not encourage trade mark proprietors to cooperate with the Commissioner, since they can expect little information from him in return. All they will get is provided for by section 30(7) of the Trade Descriptions Ordinance which reads:
17. But notify the proprietor of what? The date of seizure, the nature of the goods seized, when seized, from whom? The subsection is silent. Moreover, it is arguable that the duty of the Commissioner arises only when it is proved that a forged trade mark is applied. 18. It would require but little amendment of section 30(7) to empower (and if necessary oblige) the Commissioner to give to the proprietor the information which Sony have sought, unsuccessfully as we have held to obtain in this matter. Trading in genuine goods, and the elimination of fakes, are vital to the economy of Hong Kong. The sooner this aid to such ends is enacted the better. (1) 119741 A. C. 133 Representation: Frank Stock, Esq. & S.H. Franklin, Esq. (Legal Department) for Appellant (Defendant). Anthony Rogers, Esq. (Messrs. Baker & McKenzie) for Respondent (Plaintiffs). | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||