J.C. Penny Co Inc. v. Punjabi Narain (Otherwise Known As Punjabi Nick) t/a Penneys Fashion
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IN THE SUPREME COURT OF HONG KONG ORIGINAL JURISDICTION ACTION NO. 1613 OF 1972 __________________
Coram: Leonard, J. in Chamber Date of Judgment: 26.3.1972 ______________ J U D G M E N T ______________ 1. This is an application for an interlocutory injunction to restrain the defendant from passing off his business for that of the plaintiff or for that of any of the plaintiff’s branches by the use in connection therewith of the name “Penneys”. The plaintiff is a corporation with limited liability incorporated in the United States of America where it operates many retail stores. It has a worldwide reputation and carries on business as a retailer also in Puerto Rico, Italy and Belgium. It has buying offices in Hong Kong, Italy, Japan and Taiwan and its subsidiary, J.C. Penney Purchasing Corporation, is registered here as a foreign company. It does not sell goods here but makes substantial purchases here for its retail shops to which it affixes its trade name or logo in which the form of writing is distinctive. 2. The defendant carries on business in Shop G22-B of the Hongkong Hyatt Hotel Arcade, Nathan Road, Kowloon and has so done since September 1971 under the name “Penneys Fashion” and a photograph of his premises clearly indicates the use of the word “Penneys” in writing identical with that used by the plaintiff in some of its logos. 3. The defendant has not condescended to file any affidavit explaining his use of the plaintiff’s name and I have no doubt whatsoever that it is used in a deliberate attempt to deceive and in order, to put it in vulgar parlance, to “cash in” on the reputation of the plaintiff. 4. There are then essentially two points for my consideration. Firstly has J.C. Penney & Co. goodwill and reputation in the Colony entitling its name to protection in our courts. I am satisfied that its subsidy does a very substantial business here and must be well known here and have acquired substantial good-will and reputation in the trade as the subsidiary of the plaintiff. Indeed there is uncontradicted evidence that its purchases here in 1971 exceeded in price US$17 million. True the plaintiff itself has no retail outlets here but this in my view is not a fatal objection to its claim. The business which it does carry on through its subsidiary must necessarily enjoy a local reputation which the plaintiff is entitled to protect. The use by the defendant of its name is likely to damage that reputation by causing confusion in the minds of the public as to whether the parent company has commenced retail business here. Counsel for the plaintiff does not rely before me on the confusion that must arise in the minds of American visitors to the Hongkong Hyatt Hotel and I think he is right in the present state of the law’s development. The confusion caused in their minds damaging to the goodwill which the plaintiff has built up in the United States rather than here. However in these days of expanding travel and tourism I would anticipate a development in the law of passing off whereby the owners of reputation and goodwill acquired abroad may be granted protection for that reputation and goodwill here even though they do not carry on business here and even though its goods themselves have earned no reputation here. No decision on this point is essential to this case. I therefore arrive at none. Clearly the plaintiff through its subsidiary does carry on business here and is entitled to protection against the use of its name by the defendant in a manner which I can only condemn as dishonest. 5. The second point is one which presents considerably more difficulty. It is clear from the affidavit filed on behalf of the plaintiff that the plaintiff’s attention was drawn to the misuse of its name by the defendant in September 1971. No explanation for the delay in bringing this application has been forthcoming but I am satisfied that it is in part attributable to the unfortunate involvement of the plaintiff’s solicitor in the tragic landslide which occurred in June and that the unexplained delay should properly be regarded as one of approximately eight months. This the defendant’s counsel suggest is fatal to an application for an interlocutory injunction. I have had no indication from the defendant that he has suffered in any way by this delay and indeed he has not thought fit to file any evidence in opposition to the proceedings. Nor has he suggested that the injunction if granted will cause him inconvenience or hardship. In Tavener Rutledge Ltd. v. Specters Ltd.[1] a delay of seven weeks proved fatal to an interlocutory application for an injunction. Roxburgh, J. stating
6. In that case the defendant might have suffered grave inconvenience had the injunction been granted for the articles the subject matter of the action for passing off had been manufactured and on the date of the motion the defendant had on hand for delivery to a customer goods to the value of £7,500 which would have been affected by any injunction granted. The case furthermore was a “border line” one. 7. There is no consideration in this case other than that of delay. I have no doubt in my mind that on the hearing the Plaintiff will get the injunction it now seeks. The defendant will not now suffer any hardship by being compelled to desist from his dishonest misappropriation of the plaintiff’s name. For these reasons and notwithstanding the delay equity appears to me to demand that he be prohibited from doing so for one day longer than is absolutely necessary. I grant the injunction and ancillary orders requested on the usual undertaking but in view of the delay make no order as to costs.
Charles Ching (Deacons) for Plaintiff Henry Liang of Peter Mo & Co. for Defendant [1] 1957 R.P.C. 498 | |||||||||||||||||