Mak Pak Yan v. Kwan Hap Wah

IN THE SUPREME COURT OF HONG KONG

(APPELLATE JURISDICTION)

CRIMINAL APPEAL NO. 809 OF 1972

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JUDGMENT

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1.This is a case stated by a magistrate at the instance of the appellant.

2.An information laid by the appellant against the respondent, i.e., against KWAN Hap-wah @ KWAN Chi-ping trading as Sannex Company, was heard at the Kowloon Magistracy on 26th September 1972.  The information was laid under s.3(1) of the Merchandise Marks Ordinance (Cap.41) and charged that the respondent did falsely apply to 331 rolls of toilet tissue; 2 stamps; 5 boxes of name cards and a notebook, the mark “Sannex” so nearly resembling a registered trade mark “Sannex” registered under Registration No. 367 of 1967, as to be calculated to deceive.

3.The learned magistrate dismissed the information without calling upon the respondent to make his defence.

4.The facts found by the learned magistrate were as follows:-

“1. On the 30.5.72 and at all material times the appellant was registered as the proprietor of the Trade Mark Sannex No.367 of 1967 relating inter alia to toilet rolls,

On the 30.5.72 at about 0805 at the Mezzanine Floor of 34, San Shan Road the respondent was in possession of 331 rolls of toilet tissue the wrappers of which bore the name Sannex as well as ‘Sannex Company (H.K.) 1967’, two stamps, one notebook and 5 packs of business cards all bearing the word Sannex,

2A. Exhibit P3A consisted of 4 packs of business cards and Exhibit P3B consisted of one pack of business cards.

2B. The cards in Exhibit P3A, translated, read as follows:

‘Hong Kong Government Registered 1967 Sannex Company (H.K.)

Sannex Company	Narcissus	Sanitary Tissue
	Zebra Brand

Papers

Registered at the
Business Registry

Deals in :	Tissue papers, face tissues, fragrant tissue papers Whole sale
	KWAN HAP WAH (Chee Ping)

Please Note SANNEX Brand

34, Sun Shan Road,
Mezzanine Floor, Tokwawan,
Kowloon.
Telephone No.: K-639338’

2C. The cards in Exhibit P3B, translated, read as follows:

‘To say Thank you

In my recent dispute concerning trade mark with a certain firm I have been vindicated and justice has been done and I therefore write this note to say thank you.

Sannex Company	Narcissus	Kwan Hap Wah
	Zebra Brand

Telephone No. : K-639338’

3. he wrappers of the said 331 rolls of toilet paper bore close resemblance to the toilet roll Exh. P6 sold by the appellant in the course of his business,

4. Such resemblance so nearly resembled the said registered trade mark that it was likely to and was calculated to deceive,

5. The respondent had been, by order of the Supreme Court, enjoined from infringing the appellant’s rights in the said mark.”

5.It was contended on the part of the appellant that those facts warranted a prima facie inference that the respondent had falsely applied the deceptive wrappers to the 331 toilet rolls, 2 stamps, 5 boxes of name cards and the notebook, within the meaning of section 5 of Cap.41.

6.The learned magistrate however, was of the opinion that there was no evidence to warrant the inference that:

“1. The respondent had applied the said mark to the goods within the meaning of section 5(5) of Cap. 41,

2. The respondent had applied the said mark to the goods, their coverings or labels etc. within the meaning of section 5(1)(a) and (b) of Cap. 41,

3. The respondent had such goods in his possession for any purpose of sale trade or manufacture within the meaning of section 5(1)(c) of Cap. 41,

4. The respondent had written any statement to the effect that the said mark was applicable to the said goods,

5. The respondent used the said mark within the meaning of section 5(1)(e) of Cap. 41,

6. The respondent was the sole proprietor of a business particularly described as ‘Sannex Company’”

and, as I have said, dismissed the information without calling upon the defence. 

7.Upon the hearing of the case stated, the appellant was represented by Mr. Denis Chang of counsel.  The respondent was unrepresented and, though personally served with the case stated and with notice of the hearing, was absent.

8.Mr. Chang emphasised that the goods were seized at an address in which the respondent was found, being the same address as that on his name-card which card also bore the same mark as that on the wrappers on the toilet tissues, namely, “Sannex Co., Hong Kong”.  Moreover, the card described the appellant as dealing in tissue papers and face tissues and bore the words “Whole sale” (sic).  It may be useful to set out the contents of the card, which were as follows:–

“Hong Kong Government Registered 1967

Sannex Company (H.K.)

Sannex Company	Narcissus	Sanitary Tissue
	Zebra Brand

Papers

Registered at the
Business Registry

Deals in :	Tissue papers, face tissues, fragrant tissue papers Whole sale
	KWAN HAP WAH (Chee Ping)

Please note SANNEX Brand

34, Sun Shan Road,
Mezzanine Floor, Tokwawan,
Kowloon.
Telephone No.: K-639338”

A further card found on the premises read:

“To say Thank you.

In my recent dispute concerning trade mark with a certain firm I have been vindicated and justice has been done and I therefore write this note to say thank you.

Sannex Company	Narcissus	Kwan Hap Wah
	Zebra Brand

Telephone No.: K-639338”

9.The questions of law arising on the case stated (as amended, upon the direction of Huggins, J.) were stated by the learned magistrate as follows:–

“1. Whether possession of the said 331 toilet rolls together with the 2 stamps, the said 5 boxes of name cards and the said notebook warranted the inference that the respondent had falsely applied the trade mark or word Sannex to the said toilet rolls,

2. Whether possession of the said 2 stamps, 5 boxes of name cards and a notebook warranted the inference that the respondent had falsely applied the trade mark or word Sannex thereto,

3. Whether the evidence warranted the inference that the respondent was the sole proprietor of a business described as “Sannex Company”.

10.In regard to the third question posed, Mr. Chang pointed out, in my view entirely correctly, that it is unnecessary, under the Ordinance, that an individual be proved to be a sole proprietor before he can be shown to be guilty of applying to goods a mark calculated to deceive. Mr. Chang further indicated that in regard to the second question posed, he would find difficulty in answering it since the stamps, boxes and notebook, referred to therein, were not goods in the ordinary meaning of the word. Counsel said that he was not interested in obtaining answers to questions two and three but sought only to show false application in connection with the toilet tissues, which was all that was necessary for a case to answer to be established.

11.I share Mr. Chang’s view of the irrelevance of the second question posed but consider that the third may be of some relevance. If, e.g. the respondent were shown to be one of a large number of partners, his personal responsibility for the application of the mark to the toilet tissues might be much more difficult to establish than if he were shown to be the sole proprietor. I would answer question three in the affirmative for in my view the evidence did warrant at least the prima facie inference that the respondent is the sole proprietor of “Sannex Company”. Some of the cards found upon the premises referred to “my” recent dispute and the cards were those of the Sannex Company and bear the name – and only the name – of the respondent, as did the other type of card which were of the advertisement variety. These facts raise a prima facie inference of sole proprietorship. Moreover the respondent was sued as “KWAN Hap-wah @ KWAN Chi-ping trading as Sannex Company” and it was under this description that he appeared to the proceedings.

12.The nub of the matter however, depends upon the answer to the first question posed. In this connection Mr. Chang relied upon s.5(1)(b), (d) and (e) of the Ordinance which reads:–

“5 (1) A person shall be deemed to apply a trade mark or mark or trade description to goods who –

(a) ...................................

(b) applies to any covering, label, reel or other thing in or with which the goods are sold or exposed or had in possession for any purpose of sale, trade, or manufacture; or

(c) ...................................

(d) makes in any affidavit, declaration or writing any statement to the effect that a trade mark or trade description is applicable to the goods; or

(e) uses a trade mark or mark or trade description in any manner calculated to lead to the belief that the goods in connexion with which it is used are designated or described by that trade mark or mark or trade description”.

13.Section 5(5) reads:-

“A person shall be deemed falsely to apply to goods a trade mark or mark who, without the assent of the proprietor of a trade mark, applies such trade mark or a mark so nearly resembling it as to be calculated to deceive, but in any prosecution for falsely applying a trade mark or mark to goods the burden of proving the assent of the proprietor shall lie on the defendant.”

14.It follows that, since it was not proved that the proprietor of the registered trade mark assented to its use on the goods in the possession of the respondent, once the learned magistrate held that the mark so used had a deceptive resemblance to the registered trade mark, the mark applied was deemed false. The only remaining question under s.5(5) is whether there was evidence of application of the mark by the respondent.

15.In my view the facts were such as to give rise to a strong inference that the mark was applied to the toilet tissues by the respondent.

16.I would answer the first question posed in the affirmative and would remit the case for the magistrate to hear the respondent in answer to the information.

Dennis Chang (Philip K.H. Wong & Co.) for Appellant.

Respondent absent.