STICHTING GREENPEACE COUNCIL v. INCOME TEAM LTD t/a GREEN PEACE AND OTHERS

HEADNOTE

          Trade mark infringement held by the use of the words registered as a trade mark on hang-tags, sales memos, shopping bags, mailing list application forms, business cards, the windows and the names of shops.

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

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JUDGMENT

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1. This is a Trade Mark and passing-off action. The Writ was issued and served on the 9th May 1995. On the 22nd June of that year directions were given for the conduct of the Action. Regrettably those directions were not followed. It has not been possible or appropriate to discover the full reasons why the directions were not complied with but the failure to do so has resulted in only the trade mark issue coming on for trial.

2. Despite preliminary hearings belatedly fixed in the week prior to the Action coming on for trial, on the day this Action was due to commence I was informed by Counsel that it would not be possible for the passing-off action to be heard as the preparation was not ready. I was told that agreement had been reached between the parties that the trade mark claim should proceed immediately, subject to a short further adjournment to enable the parties to make the necessary arrangements. Despite subsequent concerns which I had about such an arrangement, which, of course, had initial attractions, I was persuaded that it was in the parties' interests that as much use as possible of the time fixed for the case should be made and that a resolution of the trade mark issue in isolation from the passing off was feasible and might have practical advantages for the parties. The issues at the hearing were confined to and this Judgment, therefore, concerns only the question of infringement of trade mark.

BACKGROUND

The Plaintiff

3. The Plaintiff is the well-known non-profit making international environmental organisation commonly known as "GREENPEACE". It is based in the Netherlands. It is a charitable organisation incorporated as a "stichting" which is the equivalent of a charity or foundation. Its registered office is in the Netherlands.

4. The movement which evolved into the Plaintiff started after a demonstration against the United States nuclear testing on the island of Amchitka in 1971. The aim then was and still is to increase awareness of the environment and man's relationship with the environment around the world.

5. Since 1971, the Greenpeace organisation has grown enormously. The Plaintiff was incorporated in 1979. It has also set up national offices in different countries. The Greenpeace organisation now comprises national organisations in 32 countries around the world. It is unnecessary to list those but they include the United Kingdom, the United States of America, Japan, Australia, New Zealand, Canada, France, Germany, Netherlands and Russia.

6. The Greenpeace organisation campaigns internationally in respect of issues of global importance including, inter alia, (a) saving endangered species such as the whales, (b) the depletion of the ozone layer, (c) nuclear issues such as the dumping of nuclear waste.

7. As a charity, the Plaintiff receives most of its income from supporters' subscriptions, donations, fundraising and merchandising and licensing. Supporters of the Greenpeace organisation consist of supporters of the Plaintiff (usually people who reside in countries where the Plaintiff does not have a national office) as well as supporters of Greenpeace national offices (usually people who reside in a country where the Plaintiff has a national office).

8. As at January 1996 the Greenpeace organisation had over 4,600,000 supporters worldwide.

9. The Plaintiff has registered the trade mark "GREENPEACE" in some 120 countries around the world. The goods in respect of which the mark is registered are usually clothing and paper articles. Merchandising items are sold under or by reference to the trade mark "GREENPEACE" in a number of ways, e.g. through Greenpeace national offices, direct mail order catalogues sent to supporters or to retail outlets or shops managed by a national Greenpeace office.

10. In Hong Kong the Plaintiff is the Registered Proprietor of the Trade mark GREENPEACE which is registered in Part A of the register as of the 25th February 1984.

11. Thus far there is agreement between the parties. Indeed there is little dispute of substance about much relating to the Defendants and their activities.

The Defendants

12. The first Defendant is a company incorporated in July 1990. Although the intricacies of corporate existence do not appear to be necessarily of foremost concern to Mr. Sham Kar Wai who gave evidence, this company really seems to be the holding and operating company for the trading activities of Mr. Sham and his brother and sisters and, perhaps, a cousin. The company buys clothes which those responsible feel will appeal to the younger generation. The purchases are made primarily, if not exclusively, overseas. The first Defendant then imports the goods to Hong Kong and sells them in a number of shops which it operates. It is unnecessary to enumerate all the types of clothes in which the first Defendant deals or all the shops which it operates where those clothes are sold. The operation of at least one of the shops, namely shop 9 of the Prudential Centre Kowloon has been transferred to another company since the issue of the Writ (and of the events the subject of complaint in the Re-re-amended Statement of Claim). That transfer seems to have been part of a reorganisation of the structure of the Defendants' organisation and nothing seems to turn on it so far as the present proceedings are concerned.

13. The second Defendant was incorporated much more recently, in January 1994. It is part of what is, in effect, and is treated by Mr. Sham as the family business of which the first Defendant is apparently the key corporate organisation. The second Defendant apparently operates 4 shops. The buying of the goods sold in the second Defendant's shops is done centrally with all the companies in the family business. Only one of those shops features in the Plaintiff's complaints in this Action.

Commencement of the Defendants' business

14. The business which the first and second Defendants are now running first started in 1988. In November of that year Mr. Sham Kar Wai and his sister Ms. Sham Sau Wai and his younger brother Sham Kin Wai opened a boutique in Elizabeth House, Causeway Bay. It was a small shop. It was only 200 sq. feet. It sold imported clothes and shoes. One of the brands of shoes was called "Dr. Martens". Mr. Sham said in evidence that the business started becoming famous as a result in part of introducing those shoes to the Hong Kong market. It acquired the agency for those shoes and was one of the sources for them.

15. The business at that time was run in the name of the Mr. Sham's sister Ms. Sham Sau Wai. Gradually the business has been moved into the name of the corporate Defendants and Ken Chart Limited. It seems that primarily it is the first Defendant which is the main operating company. There has been no formal assignment of the business or any goodwill from Ms. Sham Sau Wai to the Defendants but nothing apparently turns on that.

Use of the name GREEN PEACE

16. The Defendants and their predecessor have since the commencement of business in November 1988 used the trading name GREEN PEACE. I will, of course, return to that in a moment since it is the central point in the case. Nothing was volunteered as to the reason for the choice of that name. There was one article in one of the exhibits which seemed to touch upon the reason for the selection of the name. For the purposes of the present part of the proceedings, the parties did not wish to enter into an investigation or consideration of that aspect and indeed were disposed to leave the reasons for the choice of GREEN PEACE as a name used by the Defendants for the trial in respect of passing off.

17. The Defendants have been remarkably successful in their businesses. There is no doubt in my mind that that success is attributable to the flair of those running the Defendants' business(es) in selecting clothing which would appeal to the younger market. A number of magazine and newspaper articles were in evidence, produced almost entirely by the Defendants. Perusal of those leaves no doubt that those responsible for running the businesses have taste in clothing which appeals to the segment of the population which comprises the Defendants' target customers. To take as an example an article which appeared in the Sing Tao Newspaper it was said:

"Besides, young executives are also their objects and therefore careful selections have to be made often in the domestic introduction of famous brands from foreign countries with a view to opening up local consumers' visions while letting them pick the beloved clothes, decoration, shoes and socks for purchase ..., Since the founders of Green Peace at the time of foundation were at the ages of 18 to 25 respectively, therefore understood the needs of youngsters and teenage consumers and could accurately domestically introduce popular famous brands or emerging new brands such as Green Peace that opened up its fame by wholesaling Dr. Martens (it was not principal agent)."

18. Mr. Sham agreed that this statement, albeit perhaps not perfectly translated into English, was correct. He was concerned in his evidence to emphasise the fact that the Defendants' shops only sold name brand goods. But these, as he admitted, included not only known brands but also brands which were new to Hong Kong and therefore unknown here. Indeed he emphasised the difficulty of introducing new brands which would sometimes take up to 4 or 5 seasons of sales and promotion before the business for that brand would become better. Mr. Sham was proud of the fact that the Defendants, by introducing new brands and by selection of the clothes, were trend setters.

19. An illustration of the Defendants' approach is contained in the 2 promotional booklets or press releases of the first Defendant. These were prepared for distribution to members of the press, suppliers and potential suppliers, bankers and landlords of the premises which were to be rented. The first of these was produced in 1993 or 1994. It begins by saying:

"While we have undergone tremendous growth since opening our first store in 1988, our philosophy remains unchanged: to promote the highest quality designer-label clothing to young, affluent Hong Kong consumers."

20. A little lower down it is said:

"Between the ages of 16 and 35, our customers know that any label sold in a Green Peace shop represents the best in international style."

21. Mr. Sham agreed with what had been stated in another article this time appearing in the Ming Pao last July: the Defendants had their own philosophy of selection, only the things liked by those in control would be brought in and sold in their shops.

22. The first Defendant's second booklet follows up on this. That was produced in 1995. When asked about what was said on the second page Mr. Sham confirmed he was proud of being a trend-setter. He had spent a great deal of time and effort in trying to secure sole agencies, for instance that for Hudson, the shoe brand, and that for the Katharine Hamnett label. On the previous page of the booklet it was said:

"Green Peace provides an assurance -- while the public may be able to pick up low-price, low-quality goods in other outlets, they know that Green Peace imports only from innovative, stylish, high-quality labels."

23. The page finishes with a paragraph which reads:

In Hong Kong, Green Peace guarantees peace of mind."

24. I have no doubt that the expertise and skill which has been devoted to the Defendants' business(es), particularly in the choice and selection of the goods which are bought and acquired for sale in the shops in the organisation, has been a major if not the major ingredient for the success of the business. The accounts produced by the Defendants show that in little over 6 years from the opening of the 200 sq. foot shop on the 1st floor of Elizabeth House the organisation had progressed to the state where the 1st Defendant had a turnover of more than $110 million a year. Such fast success is in my view, based on the evidence, accounted for, as I have said, by the skill of Mr. Sham and his relatives and others involved in selecting what to market.

The Complaints

25. As I have indicated this Action has proceeded on the basis of the allegation of infringement of trade mark; the allegations of passing-off have been left to be dealt with when the action in that respect is ready.

26. The Plaintiff's complaint is that the Defendants have infringed the trade mark rights by using the name GREEN PEACE on clothing and shoes and boots. The particulars itemise 7 broad categories of use of which complaint is made:

The Hang-tags

27. All the goods on display in the first Defendant's shop (save for some shoes) and at least one neck tie that was recently purchased from one of the second Defendant's shops have hang-tags bearing the name GREEN PEACE. A sample has been exhibited as P.6. One side is purple in colour with the words GREEN PEACE in bright yellow letters. That is quite distinctive and the letters can be read at quite a distance; for example somebody browsing through a shop would see and read it from many feet, if not yards, away. The reverse of the tag is white, on it is stuck a label. That label is white with black lettering. The most obvious feature of the white label is the price and a bar code. In addition is a reference number, that is presumably meaningless to a customer. There is a number in equally large letters and that may be, although it was not explained to me, the size of the article. In smaller typescript just above the bar code is the following description:

28. The size and prominence of that description is in no way comparable to the name GREEN PEACE on the other side of the hang-tag. The hang-tags are removed from the clothes at the time of purchase. Thus although the customer will see the hang-tag when inspecting and buying the goods he or she does not retain it after purchase of the goods. Similar labels are attached to footwear but only apparently if the soles of the items cannot take a self adhesive label.

29. There is no dispute as to the validity of the registration of the Plaintiff's Mark.

30. Infringement of trade mark is, of course, governed by statute. Infringement of Trade Mark is quite different from passing-off. Section 27 defines the rights of the proprietor of the mark. I have emphasised the parts of that which I consider material for this action:

"Subject to the provisions of subsections (2) to (4) hereof, and of Sections 33 and 34, the registration (whether before or after the commencement of this Ordinance) of a person in Part A of the register as proprietor of a trade mark (other than a certification mark) in respect of any goods shall, if valid, give or be deemed to have given to that person the exclusive right to the use of the trade mark in relation to those goods and, without prejudice to the generality of the foregoing words, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of the permitted use, uses in the course of trade a mark identical with or nearly resembling it, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either-

31. I should mention that there is no dispute in this case that the name GREENPEACE whether in capital letters or lower case so nearly resembles the trade mark GREENPEACE that infringement would ensue provided all other conditions are satisfied.

32. "mark" is defined in the definition section as including a device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination thereof.

33. Thus far it seems to me that there is no question about infringement. The name GREEN PEACE which is a name and therefore a mark, nearly resembles the trade mark GREENPEACE and has clearly been used in relation to goods in respect of which the mark GREENPEACE has been registered. The only question which remains is whether the use has been use as a trade mark relating to goods.

34. Again the definition section contains the relevant definition namely:

"trade mark relating to goods" means a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the mark whether with or without any indication of the identity of that person."

35. It will be noted that the words "for the purpose of indicating" would imply an intention, whereas the words "or so as to indicate", would imply a result.

36. I have absolutely no hesitation in saying that the use of the hang-tags bearing the name GREEN PEACE is such a use. The name GREEN PEACE on the hang-tag must signify to anybody who sees it that these are goods which have been selected and sold by the person who is the proprietor of the name GREEN PEACE. The words GREEN PEACE clearly mean to people who see it that the goods to which these labels are attached have a connection to the person who is entitled to use that name. Whereas, it is necessary in a passing-off case to prove that the relevant public may be confused that the Defendant's goods are the Plaintiff's what is necessary in a Trade Mark action is purely and simply that the Plaintiff should prove that his statutory rights have been infringed.

37. The fact that some other trade mark is also attached to the goods does not affect the issue. Exhibit P.2 which is a hat which features in the particulars (e) to paragraph 11 of the Re-re-amended Statement of Claim contains the trade mark "Diesel" on a label sewn onto the outside of the hat. There is also another hang-tag attached to the hat also bearing the trade mark "Diesel". That does not prevent the name GREEN PEACE from being used as a trade mark relating to goods and it does not prevent an infringement by such use.

Defendants' argument as to non-infringement

38. Mr. Liao Q.C. on behalf of the Defendants argued strenuously that this use of the name GREEN PEACE was not an infringement of the trade mark. In a nutshell his point was that to constitute infringement the use must be trade mark use and that was use which indicated origin of the goods.

39. There are 2 answers to this. First, as with any other statutory provision the important approach is to construe the statute. Having done that it seems to me beyond dispute that there is here infringing use. It is a use which indicates a connection between the goods and the owner of the name.

40. However, even if one goes on to consider the historical derivation of the statutory provision the position is no different. The purpose of a trade mark is and always has been to indicate origin. However origin is not and never has been confined to manufacturing origin. It includes and has always included selection and offering for sale.

41. Mr. Sham in his evidence was at pains to point out that whenever goods were sold in the Defendants' shops they bore the manufacturers' marks. For example when being asked about magazine articles which he had produced which referred to goods only by the name GREEN PEACE and had no reference to the manufacturer's name he said that these were mistakes and emphasised that "Our shop did not sell any goods manufactured in our name." That, however, is not and never has been the sum total of what constitutes trade mark use.

42. The Patents, Designs and Trade Marks Act 1883 was somewhat shorter in some of the sections than the present provisions. Section 76 read:

"The registration of a person as proprietor of a trademark shall be prima facie evidence of his right to the exclusive use to the mark and shall, after the expiration of five years from the date of registration, be conclusive evidence of his right to the exclusive use of the trademark, subject to the provisions of this Act."

43. In the first edition of Kerly published in 1894 at page 49, is a section which is headed:

Made, worked upon, imported, selected, certified, or sold."

The opening words of that passage:

          "The office of the trade-mark is to indicate some connection between the goods to which it is applied and a particular trader (e)."

44. Then there is a reference to page 27, to which I shall turn in a moment.

"What this connection is, is immaterial; but it should be a constant one."

45. Page 27 is in the chapter dealing with the definition of a trademark. It starts with the definition, which is:

"A trademark is a symbol which is applied or attached to goods offered for sale in a market so as to distinguish them from similar goods and to identify them with a particular trader or his successors as the owners of a particular business as being made, worked upon, imported, selected, certified or sold, by him or them, or which has been properly registered under the Acts as the trademark of a particular trader."

46. Amongst the cases which the learned author of that work cited is to be found at page 27 the following paragraph:

"And in Ford v Foster, Vice-chancellor Bacon described a trademark in the following terms: "The meaning and use of a trademark is that the same person dealing in the goods, no matter of what kind, whether of his own manufacture or not, having a certain defined shape, if he stamps upon them some indication that that particular article is his and his only, may thereby acquire, so far an exclusive right to it, that no man may imitate his mark, and the legal right goes no further than that.""

47. In the Trade Marks Ordinance 1909 the definition of "trade-mark" was as follows:

"A trademark shall mean a mark used or proposed to be used upon or in connection with goods for the purpose of indicating that they are the goods of the proprietor of such trade-mark by virtue of manufacture, selection, certification, dealing with or offering for sale."

48. It is noteworthy that C.D. Wilkinson in his book on Hong Kong trade mark law published in 1911 had this to say at page 2:

"The definition of a trade-mark as meaning a mark ... (then he sets out the statutory provision) would appear to enable any person, whether he is the manufacturer, importer, or merely the retail seller, of a particular class of goods, to invent, and register, a trade-mark for use by him on that class of goods. A trade-mark cannot be assumed to denote that its proprietor is the actual manufacturer of the goods to which the mark is affixed. All that it denotes is that the goods to which such trade-mark is affixed are goods in which the proprietor of that trade-mark deals, and that the goods are probably similar in quality to goods previously purchased from the same proprietor, and with the same trade-mark affixed thereto."

49. The passage in the book goes on to explain that an importer's mark is different from a manufacturer's mark.

50. The 1909 Trade Marks Ordinance followed the provisions of the Trade Marks Act 1905. The case of Aristoc v Rysta 62 RPC 65, which went to the House of Lords, involved the question of whether a user of a mark in connection with a repair service for stockings was a trade mark use. The House was unanimous that such a use did not denote a connection in the course of trade within the meaning of the definition section corresponding in relevant respects to the current definition of trade mark relating to goods. The members of the House of Lords referred to the difference in the sections between the 1905 and the 1938 Acts and noted the new provision was clearly wider than the old. At page 74 line 31 Lord Maugham said:

"My Lords, it seems to me beyond doubt that hitherto a registered trade mark has been understood as being used in relation to goods for the purpose of indicating the origin of the goods, in other words, for the purpose of indicating either manufacture or some other dealing with the goods in the process of manufacture or in the course of business before they are offered for sale to the public."

51. There is no doubt to my mind that Lord Maugham in referring to origin was deliberately including other things not merely manufacture. Specifically, he was referring to matter which would affect the quality of the goods as his citation from other authority a little later on the same page makes clear. What he was doing was drawing a distinction between something which the public could rely on as relating to quality of the goods and some process such as cleaning which gave no indication as to the character or quality of the goods. See e.g. page 70 lines 7 to 24. One can note there such expressions as "the maker or the merchant" when Lord Maugham is referring to what is a mark of origin.

52. Lord Wright in his speech referred to the word "origin" being used in a special and technical sense but said it denoted that at least that "the goods are issued as vendible goods under the aegis of the proprietor of the trademark, who thus assumes responsibility for them, even though the responsibility is limited to selection, like that of the salesman of carrots on commission in Major v Franklin [1908] 1 K.B. 712." see page 82 line 42.

53. On the facts of this case, as I have said, I have no doubt that the Defendants organisation headed by Mr. Sham and his brother and sisters have acquired a considerable reputation for their selection of clothes. I have no doubt that that selection and indeed the offering for sale of the clothes by the Defendants has given the Defendants a considerable reputation. As I have already referred to, the first Defendant's own publicity material designed to be used inter alia by the news media has statements such as Green Peace provides an assurance -... the public ... know that Green Peace imports only from innovative, stylish, high-quality labels .... In Hong Kong, Green Peace guarantees peace of mind.

54. In addition to and quite apart from selection the Defendants have offered the goods for sale under and by reference to the mark. That in itself constitutes Trade Mark use.

55. Before turning from this topic, I would also mention the further use in the second booklet produced by the first Defendant, on the page headed "The Stores". There is a passage which reads as follows:

"The largest Green Peace store in Causeway Bay, Sino Plaza, has a floor area of more than 14,000 square feet and retails both the Green Peace and the GREEN PEACE stocks."

56. I have no doubt that what the Defendants have done is more than enough to constitute trade mark use.

57. Mr. Liao Q.C. on behalf of the Defendants sought to rely upon the case of Furnitureland Ltd v Harris [1989] FSR 536 in support of the proposition that the use of a label by a retailer on name brand goods might not constitute trade mark use. It was said in that case that the Aristoc case was formidable support for the proposition that the mere retail sale of goods, not being goods for which the retailer accepts any responsibility beyond that of any normal retailer, is not use of a name or mark in a trademark sense. However, not only was that case an interlocutory injunction decision where the Vice-Chancellor did not come to any concluded view but held that the Plaintiff had an arguable case, but his reference to mere retailer cannot be ignored. I doubt that he would have intended to cast doubt on the proposition that a seller of goods can acquire a valid trade mark.

58. The position of a retailer is not dealt with specifically in Kerly, but the Second edition of Shanahan on the Australian Law of Trade Marks at page 34 specifically deals with the position of a retailer acquiring by use a trade mark in connection with a mark it has used in connection with goods to which the manufacturer's mark has also been applied. That learned author, who of course is not dead, but has a distinguished reputation, finds no difficulty in the concept of the use of a retailer acquiring and using a mark alongside a manufacturer. He cites as a matter of example Caterpillar Tractor Company- opposition No. 14629 by B&T (Bantel) Limited, a decision of Mr. Myall, a very distinguished hearing officer. The only report of the Decision currently available is in 1982 Intellectual Property Decisions. The case involved the use of the Trade Mark CAT on toy tractors made by a famous toy making company. The toy maker put its own trade mark as a manufacturer on the goods. The word CAT appeared on the macro tractor and therefore also appeared on the models. The models were then supplied to the applicant (the maker of the macro tractors) who sold them. The hearing officer held that the use of the toy manufacturer's mark on the toys did not preclude the use of the retailer's mark CAT, the applicants not of course being manufacturers of toys but retailers. Interestingly he drew the distinction between the words "for the purpose of indicating a trade connection" which he left open as to whether they were satisfied, and held that the use of the word CAT on the toys was used "so as to indicate" that connection.

The use of the name GREEN PEACE on sales memos and credit card receipts in relation to the sales of goods

59. 2 relevant sales memo's have been exhibited P.13 which was obtained when the scarf P.12 was purchased at the GREEN PEACE shop at Sino Plaza and P.9 which was obtained at the shop 9 at the Prudential Centre Kowloon when the T-shirt P.8 was purchased.

60. P.13 bears the words GREEN PEACE in large capital letters. P.9 bears the words green peace in lower case lettering. In my view both these uses are uses in connection with goods. In so far as the first Defendant seeks to say that the words denote the name of the shop that in my view cannot assist it. The shop is the business of the first Defendant. It is a business which importantly includes selecting goods. Naturally it also includes selling the goods.

61. The sales memo, P3, is that which is referred to in paragraph 11A of the Re-re-amended Statement of Claim. That is a sales memo which is headed "Paul Smith G.P. Boutique". Underneath it bears the words "Shop GO4", and then a little to the right "GREEN PEACE". That, again, uses the name "GREEN PEACE" and, in my view, clearly uses it in connection with the goods, since the whole purpose of the invoice is to relate to the goods which are the subject of the invoice.

62. The word GREEN PEACE is a name. The question is does that use indicate a connection between the goods identified in the invoice and the Defendants. The answer must be yes.

63. Use is defined as upon or in physical or other relation to goods. If authority were needed for the proposition that use on an invoice were sufficient proximity to constitute use for the purposes of the Ordinance then the decision of Morritt J. in Cheetah Trade Mark [1993] FSR 263 where he gave summary judgment in respect of use on an invoice supplied long after the supply of the goods provides such an authority.

The use of the name GREEN PEACE on the shopping bags supplied with purchases made at the Defendants' shops

64. I find little distinction between the position in respect of the hang-tags and the shopping bags. There is one name and one name only on the outside of the shopping bags. That is the name GREEN PEACE. The use of that name is clearly in relation to the goods which the bag is provided to carry. I find the allegation proved in respect of in particular the particulars 11(d)(ii) and 11(f)(ii) of the Re-re-amended Statement of Claim.

The use of the name GREEN PEACE on mailing list application forms available at the second Defendant's retail premises

65. The mailing list application form is exhibited P.10. That is identical to the one referred to in paragraph 11A of the Re-re-amended Statement of Claim. It is a yellow card and on the front is printed a purple border. The most prominent words on the card is the name GREEN PEACE printed in red at the top. The legend invites the recipient of the card to fill it up if he or she wishes to receive "future sale announcement, seasonal image catalogs and special event notices." This clearly refers to goods, since that is what the sale announcements will be about and the catalogues will undoubtedly be catalogues of goods namely clothes.

66. I have no hesitation in holding this is trade mark and infringing use.

The use of the name GREEN PEACE on business cards of the first Defendant which carry the second Defendant's address

67. The business card which has been obtained and is exhibited P.11 is even more curious. On the front of the card is a yellow and purple design with the name GREN peace in red letters as the only wording. On the reverse are 4 headings. GREEN PEACE, KATHERINE HAMNETT, JEAN PAUL GAULTIER AND PAUL SMITH-GP BOUTIQUE. There are then addresses of the various shops listed under each name. These shops sell clothes and boots and shoes. It seems to me again that when the point of a card is to direct attention to a shop or shops which sell clothes including boots and shoes the use of name in the way it has been on this card must be in relation both to those shops and what they sell.

68. Again, I find infringement proved.

The use of the name GREEN PEACE as the name of the Defendants' shops

69. Perhaps at first blush it might seem surprising that the use of a name of a shop or business should be alleged to be a trade mark use. What is alleged in this case is that the use of the name GREEN PEACE and green peace as it appeared outside the Defendants' shops was an infringement of the Plaintiff's mark.

70. The question which arises here is purely and simply whether that is a use in relation to goods. That is a question of fact. When consideration is given to the names outside shops it can be appreciated that in many instances the names are in reality a reference to the goods on sale in the respective shop. A name outside might for example be the name of the manufacturer of the goods on sale in the shop; the proprietor of the shop might not even be carrying on business under the name but the shop might be stocked with goods of that manufacturer's name. In other instances the name may signify both the name under which the business is carried on, as well as being the name of the goods, or, at any rate, as well as being a use which has relation to the goods.

71. In the instance of the first Defendant's shops the name GREEN PEACE is the name which the first Defendant has chosen to call its business. It can be noted that in its own publicity material the first Defendant has on at least one occasion used that name in circumstances which can only be said to be in relation to goods and not the business.

I have already made reference to that. It is the page headed "The Stores", and the sentence is:

"The largest Green Peace store in Causeway Bay, Sino Plaza, has a floor area of more than 14,000 square feet and retails both the Green Peace and the GREEN PEACE stocks."

72. But even in cases where the name GREEN PEACE is used by the first Defendant as the name of its business the next question to be asked is what is that business. It is, as I have held, a business which consists of selecting the goods to be purchased by the first Defendant and acquired for the purposes of sale in the Defendants' own shops. It is therefore a business intimately connected with goods namely clothing including shoes and boots. By using the name GREEN PEACE outside the shop the first Defendant is clearly using the name in relation to the goods. The public associate and have been lead to associate the first Defendant's business as one connected with the selection and retailing of goods. The use of that name outside the place of business where the significant part of that business from the public's point of view is carried on is clearly a use in relation to goods.

73. The late Mr. Justice Hunter appreciated the point in relation to the use of the name of a restaurant outside the restaurant and on menus. In the Maxim's case [1983] HKLR 287 he said at page 291.

74. That decision has been criticised in a new book on Hong Kong Intellectual and Industrial Property Law by Mr. Pendleton. That criticism is that a use of a trade mark in a restaurant is treated as use as a trade mark for services. It is based on the decision of the Palm Trade Mark [1992] RPC258. With due respect to the hearing officer in the Palm Trade Mark decision, he does not appear to have appreciated the point that was raised by the late Judge that the supply of food in a restaurant constitutes sale of goods. Indeed it was the Judge himself, in view of his considerable experience of general matters of law who drew the attention of the parties to the case of Lockett v Charles [1938] 4 AER 170. The point about sale of goods was important in the Lockett case because a patron of the restaurant who had become ill after eating the food had no claim in tort because negligence could not be proved but had a claim for breach of warranty in respect of the sale of goods.

75. The Palm case was decided on the basis that there was no bona fide intention on the part of an American restaurant proprietor to use his mark in the United Kingdom. Moreover, not merely had there been 5 years of non-use from the date of registration of the American proprietor's UK mark but there had been 9 years of non-use. On the basis that the proprietor's intention to trade was not bona fide and there had been no subsequent use the mark was struck off. The hearing officer then added 3 sentences as follows:

"Additionally, I do not overlook that the application was made for registration of a trade mark, to cover goods, i.e. prepared meals in class 29. The evidence indicates that the registered proprietor has not used PALM as a trade mark in his home country, but rather as a service mark. At the time the application was filed, service mark registration was not available in this jurisdiction."

76. He appears to have made these obiter remarks on the basis that restaurant use per se was service use and the only use that might constitute use of a trade mark relating to goods was use in relation to take away food. In my respectful view Hunter J. was correct. In any event this does not in any way alter or detract from Hunter J.'s holding that the use of a name outside the premises can, depending on the facts, be use in relation to goods supplied inside those premises.

77. For the reasons which I have already outlined and the fact that the goods inside in the shop were all marked with the hang-tags bearing the name GREEN PEACE I have no doubt that the use of the name even in the light box for the name of the shop is and was a use in relation to the clothes sold inside the shop.

78. The position with regard to the name GREEN PEACE as it appeared on the shop windows in plastics cut-out lettering is in my view even more a reference to the goods. It is by no means uncommon that the names of goods on sale inside a shop are written up in such lettering outside a shop. Seldom indeed would it be supposed that such form of use of a name related to the identity of the shop or its proprietor and not the goods.

79. In my view in this respect too infringement has been proved.