BURMAH CASTROL CHEMICALS LTD. AND ANOTHER v. WONG FU AND CO. LTD.

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H E A D N O T E

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[The purpose of O.14 is to enable a plaintiff to obtain a quick judgment when there is plainly no defence to the claim. A defendant in a trademark case whose mark differs from the plaintiffs' mark, and who contends that his mark does not so clearly resemble the plaintiffs' mark as to be likely to deceive or cause confusion in the course of trade, raises an issue which ought to be tried. He plainly dose have a defence to the claim, the strength or weakness of which must depend on an evaluation of the evidence and which cannot be assessed in proceedings under O.14]

1991 No. A4546

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

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J U D G M E N T

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1. This is an application by a judge's summons dated 2nd December 1991 for summary judgment under O.14 of the Rules of the Supreme Court. It is a trademark case. The application comes before me because the claim is a claim for a final injunction to restrain the defendant from infringing the plaintiffs' trademark. (There are other claims in the action but with those claims I am not concerned.)

2. The facts on which the plaintiffs rely are set out in its Statement of Claim dated 7th October 1991. The defendant has put in a Defence dated 18th November 1991. There had been an earlier interlocutory skirmish between the parties in the course of which the defendant gave certain undertakings to the plaintiffs designed to preserve the position until the trial of the action. Notwithstanding these matters, this summons for summary judgment was taken out on 2nd December 1991 (as I have said) and I now have to deal with it.

3. As Parker, L.J. pointed out in Home and Overseas Insurance Company v. Mentor Insurance Ltd. [1990] 1 WLR 158:

"The purpose of Order 14 is to enable a plaintiff to obtain a quick judgment when there is plainly no defence to the claim. If the defendant's only suggested defence is a point of law and a court can see at once that the point is misconceived, the plaintiff is entitled to judgment. If at first sight the point appears to be arguable but with a relatively short argument can be shown to be plainly unsustainable, the plaintiff is also entitled to judgment. But Order 14 proceedings should not, in my view, be allowed to become a means for obtaining in effect an immediate trial of an action which will be the case if the court lands itself to determining on Order 14 applications points of law which may take out hours or even days and the citation of many authorities before the court is in a position to arrive at a final decision."

The observations of Parker, L.J. apply with even more force when the difference between the parties is a difference as to the facts.

4. With these preliminary observations, I turn to the facts in the present case.

5. The plaintiff is entitled to the trademark "Thioflex". The product protected by this mark may be described as a polysulphide liquid polymer sealant used in the building and civil engineering industries and based on the chemical compound shortly described as "Thiokol". The product which the defendant is marketing has the same application. It is described by the defendant as "Thiolex". It will be seen that the only distinction between the two words is that the plaintiffs' mark includes the letter "f" in the middle of the word and the defendant's mark does not. Both parties are using their respective marks as trademarks and the question for determination is whether the defendant's mark so nearly resembles the plaintiffs' mark as to be likely to deceive or cause confusion in the course of trade. The plaintiffs' assertion that it does is expressly denied by the defendant : see paragraph 10 of its Defence.

6. This is a question of fact. The two marks are closely similar but as Pennycuick J. pointed out in The General Electric Co. Ltd. v. Consolidated Electrodynamics Corporation U.K. Ltd. [1963] RPC 1 at p.4 :-

"It may no doubt be shown that, when all the relevant circumstances are taken into account, a mark at first sight nearly resembling the registered mark does not in fact so nearly resemble it as to be likely to cause confusion."

7. And as is pointed out in Kerly's Law of Trade Marks at paragraph 17-16 :-

"It is clear that the tribunal ought not merely to look at the marks as they stand side by side, for, from the nature of the case, they will not be so put before any customer whom it is sought to deceive by means of either of them. He can only contrast the mark upon the goods offered to him with his recollection of the mark used upon those he is seeking to buy, and allowance must be made for this in estimating the probability of deception. Any other rule would be of no practical use."

8. It follows, as it seems to me, that the dispute between the parties (that is to say, the dispute as to whether the defendant's mark does, as a matter of fact, so nearly resemble the plaintiffs' mark so as to be likely to deceive or cause confusion in the course of trade) must, of necessity, require the court to consider evidence as to all the circumstances which go to a proper resolution of that question. The question is ultimately one for the court to decide, not for the witnesses. But it is not sufficient, in my judgment, simply to point to the resemblance between the marks as used and invite the court on that alone summarily to resolve the question in favour of the owner of the trademark. That would be to shut out the defendant from his right to lead evidence with the object of persuading the judge that his mark does not so nearly resemble the plaintiffs' mark as to be likely to deceive or cause confusion in the course of trade.

9. For these reasons, I am quite satisfied that this case was not one which was suitable for an application under O.14 for a final injunction. I propose therefore to dismiss the application, and, although I will hear counsel upon the matter before finally deciding it, to dismiss the application with costs.

[Submissions on Costs]

10. I will dismiss this application and order that the costs of the defendant of this application be taxed if not agreed and paid by the plaintiff to the defendant in any event (I am not going to make an order for immediate taxation of those costs).