BELT COLLINS INTERNATIONAL (HK) LTD v. HONG KONG BEIER GAOLIN BUILDING URBANISM & LANDSCAPE DESIGN ACADEMY LTD

   HCA1042/2008

   IN THE HIGH COURT OF THE

   HONG KONG SPECIAL ADMINISTRATIVE REGION

   COURT OF FIRST INSTANCE

   ACTION NO.1042 OF 2008

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BETWEEN

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J U D G M E N T

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1.   The plaintiff is called Belt Collins International (HK) Limited, the Chinese name is “貝爾高林國際(香港)有限公司”. The defendant is called Hong Kong Beier Gaolin Building Urbanism & Landscape Design Academy Limited, the Chinese name is “香港貝爾高林建築城規興景觀設計研究院有限公司”. It is admitted by the defence that the word “興” is in fact “與” which is a slip on the part of defendant when they registered with the Company Registry as a limited company. They should have used the word “與” but that is irrelevant to this case except that on their own admission it means that they are in the business and services of providing land planning, landscape architecture and environmental consulting services.

2.   There are two causes of action in this case. The first one is the infringement of the trademark in the Chinese name “貝爾高林” which was registered as of 24 September 2004. The plaintiff’s English name of course comes from its group of companies who used the word “Belt Collins” whereas the English name for the defendant is “Beier Gaolin” which is the Putonghua pinyin for the Chinese name “貝爾高林”. The infringement alleged by the plaintiff is in the Chinese name.

3.   In the defence of the defendant, paragraph 6 thereof, the defendant said :

“6. Concerning paragraph 5 of the Statement of the Claim, the Defendant says the following :

(a) it is admitted :

(i) the Defendant’s Chinese Name is “香港貝爾高林建築城規興景觀設計研究院有限公司”;

(ii) the identifiable element of the Defendant’s Chinese Name is the same as the 貝爾高林Trade Mark; and,

(iii) the Defendant’s business is the provision of land planning, landscape architecture and environmental consulting services.

(b) the rest of paragraph 5 thereof is, however, denied. The Plaintiff is put to strict proof thereof.”

4.   In other words it is a clear admission by the defendant that they are using identical Chinese name “貝爾高林” as that of the plaintiff and they are also running a business and providing services identical to that of the plaintiff. However the plaintiff submitted that they do not have to put their case so high if the defendant’s business and services are similar to that of the plaintiff, as the defendant has already infringed their trademark.

5.   Secondly the defendant’s defence is that they have never provided services in Hong Kong. I should have said earlier that the defendant company registered in Hong Kong was made by their headquarter in the Mainland where they had the main business and services.

6.   There is another second cause of action in this case and that is in respect of infringement of the trademark of the plaintiff by the defendant in the Mainland. But the plaintiff accepted that this part of the cause of action is fact-sensitive and therefore the plaintiff is not entitled to summary judgment under Order 14 of the Rules of High Court.

7.   Coming back to the defence that they had never provided any services in Hong Kong, the plaintiff’s case is that the defendant’s website is accessible by all people in Hong Kong who would care to search through the net or reach their website by any computer within this jurisdiction. The plaintiff alleged that the defendant uses and/or have used the name “貝爾高林” in its website www.hkbegl.com. The defendant denied that such a website was put forward by the defendant company. I am however satisfied from the evidence adduced by the plaintiff that it is a website used by the defendant company.

8.   The defendant submitted that by having a website in the net does not mean the defendant is running a business or providing any services within this jurisdiction. To my mind this is a farfetched argument after the internet was introduced years ago. An advertisement from a website provided in the internet is much more powerful than putting up a signboard in Hong Kong or advertising in the magazine or newspaper. Nearly all companies in Hong Kong doing their business or looking for contractors would do so by way of reaching the internet or searching through the internet. One cannot escape the impact of computers nowadays and most would use it in their business dealings. Anyone can reach a website and discover the services of the defendant provided to them albeit the work may be done in the Mainland. The services are offered in Hong Kong because it is the Hong Kong people who could reach the internet and discover such services would be provided. It is even more powerful than putting up signboards in the street saying the defendant company are providing land planning, landscape architecture and environment consulting services in the Mainland. Therefore it is my decision that the defendant actually have provided services in the internet in Hong Kong and that would be an infringement of the trademark of the plaintiff and it is also an act of passing off the defendant’s services as that of the plaintiff’s.

9.   In conclusion I am of the view that the plaintiff is entitled to summary judgment in respect of this cause of action against the defendant. I therefore order in terms of the Order 14 summons as amended. The costs of and incidental to this application be paid by the defendant to the plaintiff and shall be taxed on gross sum assessment basis before a Master of the High Court, if not agreed and to be paid forthwith.