Burberry Asia Ltd v. Santa Roberta Polo & Racquet Club Int'L Ltd

HCMP 908/2011

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO. 908 OF 2011

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BETWEEN

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Before : Deputy High Court Judge Burrell in Court

Date of Hearing : 8 February 2012

Date of Judgment : 8 February 2012

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J U D G M E N T

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1.This is an application by the plaintiff by originating summons for an order pursuant to section 45 of the Registered Designs Ordinance, Cap 522 for the revocation of 15 designs registered by the defendant on 26 July 2010 and 3 August 2010 on the ground that, on the dates of the said registrations the designs were not new as required by section 5 of the said Ordinance.

2.In addition the plaintiff seeks an injunction to restrain the defendant from applying for the registration of the same and similar designs in the future.

3.The designs are numbered 1001378.3M001-5 (which I shall refer to as Designs 1-5), and 1001423.9M001-10, (which I shall refer to as Designs 6-15).

Background

4.Between April 2006 and January 2008 another company with a very similar name to the defendant, Polo Santa Roberta Limited (“PSRL”) had registered three designs which were strikingly similar to the designs in the application.  The defendant and PSRL are, to all intents and purposes, the same entity.  They are both owned by Mr Cheung Ko Ming. He is the sole shareholder of both and was a director of both.  Both companies’ tax returns bear the same address, they have the same company secretary and the same solicitors had the conduct of their design registration applications.

5.The plaintiff successfully applied to Reyes J to have the three registrations revoked in Burberry Asia Ltd v Polo Santa Roberta Ltd, HCMP 2696/2009.  PSRL lodged an appeal but later withdrew it.

6.The 15 designs which are the subject of this application were registered very soon after Reyes J’s decision.

Law

7.The registration of a design may be revoked on the ground that it was not a “new” design (Cap 622 section 45).

8.A design is not ‘new’ if the same design has been published beforehand or the design differs from the previously published design in only immaterial details or in features which are variants commonly used in the trade (Cap 522 section 5).

9.The test is summonsed in Russell-Clarke and Howe on Industrial Designs 8^th Ed 3-152 :

“The question which has to be decided is whether the two appearances [of the competing designs] are substantially the same or not. That the eye, and the eye alone, is to be the judge of identity, and is to decide whether one design is or is not an anticipation of another, has been consistently laid down. The design must be looked at as a whole, the question being whether an article made according to the design under construction is substantially similar in appearance to an article made according to the alleged anticipation. The test is not only to look at the two designs side by side, but also apart, and a little distance away.

The novelty should in other words be substantial, and it must be substantial having regard to such matters as the nature of the article, the extent of the prior art and the number of previous designs in the field in question. Especially with fields such as clothing where there is a huge volume of prior art, there must be some clearly marked and defined differences, though the actual standard of ingenuity required on the part of the author is extremely small …”

10.Prima facie differences in colour are not important. Further, the use of words, letters or numbers should not be regarded as forming part of the pattern in the design.

The 15 Registrations

11.Designs 1-5 concerned patterned fabrics, Designs 6-15 concerned handbags of various shapes and sizes.

12.Mr Philip Wong, counsel for the plaintiff, in each case referred the court to documentary exhibits showing (a) the subject design and (b) the plaintiff’s prior publication of the same or similar design. 

13.In the present case the defendant has been absent whereas in HCMP 2690/2009 (supra) they had been represented.  In the present case therefore no evidence has been adduced and no submissions made in support of the designs being new or novel.  In any event they are plainly not.

14.Nonetheless, as the fabric designs in this case are substantially the same as those under consideration in HCMP 2696/2009, the observations made by Reyes J in that case at paragraphs 10-24, with which I wholly agree, are relevant to this application also.

15.Designs 6-15 were of handbags.  As already stated Mr Wong referred the court to prior publications of the same or similar products in every case.  Not only was the fabric design not new, the shape of the handbag was not new either.

16.In addition, Mr Wong referred the court to and relied on previous registered trademarks (on 6 April 2000, 25 April 2000 and 18 June 2004), examples of advertisements of the plaintiff’s products over 30 years and many pages from the plaintiff’s catalogue of goods for sale.

17.The evidence that all 15 designs were not new at the time of the registration was overwhelming and I granted the application under Cap 522 section 45 accordingly.

Injunction

18.I am satisfied that the court has jurisdiction to grant an injunction in the circumstances of this case in addition to revoking the registration of the designs.

19.Applications to register designs in Hong Kong may be made without reference to the existence of other similar designs.  Thus, in this case, the defendant registered these designs almost immediately after PSRL has lost its case before Reyes J in relation to virtually identical patterns.

20.An injunction may be granted to guard against an abuse of the system.  An application had been made to Reyes J in the previous case but was not granted because there was no evidence, at that time, of any such abuse.

21.Now there is.  The same person, albeit thinly disguised in different corporate clothing, has re-registered the same designs. The injunction sought is designed to prevent further abuses of a similar nature.

22.For these reasons I granted the injunction, as sought, at the conclusion of the hearing.

Mr Philips B F Wong, instructed by Messrs Simmons & Simmons, for the plaintiff

The defendant appeared in person, absent