RE AMERICAN STANDARD INC

M.P. 1985 No. 1801

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

MISCELLANEOUS PROCEEDINGS

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J U D G M E N T

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1. The applicant American Standard Inc (ASI) has withdrawn its application for a declaration that it is the proprietor of the trademark "Saniwares" under Trademark Application No. 1176 of 1982 and consequential orders with the result that the respondent Sanitary Wares Manufacturing Corporation (SWMC) has proceeded upon its counterclaim for a declaration that it is the proprietor of the trademark under Application No. 2541 of 1983 and a consequential declaration that ASI is disentitled to use the mark under its application No. 1176 of 1982, together with an injunction for passing-off.

2. SWMC was incorporated in the Philippines in 1961 following a joint venture agreement with ASI. There was also a trademark agreement which was later renewed by subsequent agreements. In 1979 SWMC decided to develop a new line of sanitary wares which it decided to sell under the trademark "Saniwares". The trademark was registered in the Philippines on the 3rd October 1980. ASI has, at all material times, been aware of these facts as there has been one representative director of the company on the Executive Committee of SWMC as a result of the joint venture agreement. In fact, SWMC had alleged that the filing of the application for registration of the trademark "Saniwares" by ASI under No. 1176 of 1982 arose as a result of a breach of fiduciary and confidentiality duties owed to SWMC by ASI.

3. Goods under the trademark "Saniwares", the subject of the present application No. 2541 of 1983, have been sold, advertised and promoted in Hong Kong since August 1983 with the following sales and advertising figures from that year until April 1987 which are as follows :-

From these details I am satisfied that SWMC has acquired goodwill and reputation in the goods.

4. With regard to the claim for an injunction as SWMC contends that the issue of passing-off relates to ASI's allegation in paragraph 17 of the points of claim that it first used the trademark in Hong Kong in about July 1983 upon a shipment of lavatory fittings shipped to Hong Kong by ASI's partially owned licensee in Thailand, Sanitary Ward (Thailand) Limited. However, apart from this use, there appears to have been no other user by ASI. Nevertheless at this time, there was no evidence to show that SWMC had acquired goodwill or reputation in the goods. Accordingly, upon the evidence that is before me, the claim for an injunction on the grounds of passing-off must fail. In addition, I agree with miss Sun who appeared on behalf of ASI that having regard to the abandonment of its own claim the second declaration sought by SWMC is unnecessary so that it will be refused.

5. In the result, SWMC will be granted a declaration as against ASI but without binding the Registrar of Trademarks, that it is the proprietor of the trademark "Saniwares" the subject of Trademark Application No. 2541 of 1983 and the only party with the right to claim to be entitled to be registered and which is entitled to be registered as the proprietor of the trademark or of any mark identical thereto. SWMC is also entitled to an order for costs.