Read the full judgment text of CACV 000162/2000 on BabelCite. This Court of Appeal judgment was delivered on 3 November 2000 before Rogers VP, Stock JA, Le Pichon JA.
Civil law – contract – Settlement Agreement dated 1 May 1980 – construction – clause 6(5) prohibiting registration of marks confusingly similar to plaintiff's Emblem mark 'in any part of the world' outside Hong Kong – whether defendant breached clause 6(5) by applying for and obtaining registration in the PRC of crocodile device marks – clause 6(9) – whether clause 6(9) provided a defence – whether clause 6(5) confined to disputes specified in the recitals – whether 'confusingly similar' should be assessed under Hong Kong trademark law or law of jurisdiction of registration – whether injunction should be confined to PRC – form of mandatory and prohibitory injunction – costs – whether successful party should be deprived of costs on issues lost – defendants' crocodile in trademark no. 19 of 1954 held confusingly similar to plaintiff's Emblem mark – clause 6(9) addresses market confusion in Hong Kong, not registration outside Hong Kong, and provides no defence – 'confusingly similar' bears ordinary English meaning assessed under Hong Kong law – injunction appropriately extended worldwide given defendant's history of repeated crocodile mark applications in the PRC – trial judge not shown to have applied wrong principles on costs – appeal dismissed with costs to the plaintiff.
Legal issues: Whether the defendant breached clause 6(5) of the Settlement Agreement by applying for PRC trademark registrations confusingly similar to the plaintiff's Emblem mark · Whether clause 6(9) of the Settlement Agreement provides a defence to breach of clause 6(5) · Whether the form of injunction granted was too wide · Whether the trial judge's costs order should be disturbed
Outcome: Appeal dismissed. The defendant was in breach of clause 6(5) of the Settlement Agreement.