XCHRX LI PO FAI t/a LANDFORD INDUSTRIAL CO. v. RADIANT ELECTRONICS LTD.

HCA 1213/2001

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO. 1213 OF 2001

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REASONS FOR DECISION

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1. This is an application for summary judgment against the defendant for a number of orders and damages in respect of the defendant's infringement of the plaintiff's registered design and copyright in a watch box. At the hearing I gave judgment in terms of the summons and now give my reasons for so doing.

2. The plaintiff manufactures and sells watch cases and is the owner of the registration in respect of the watch box the subject of these proceedings. The date of registration was 15 October 1999 and the plaintiff has since publicly advertised and promoted it and offered it for sale in Hong Kong. It is not disputed by the defendant's Mr Wong Po Yiu that he has had manufactured and has offered and advertised for sale a watch box which he concedes looks similar to the plaintiff's. It first came to his attention that there may be a claimant to the design at a watch fair in September 2000 at which he had a picture of his box in a catalogue but was advised to withdraw it from display by the TDC, and the registration was drawn to his attention. He continued to offer it for sale however, and the plaintiff via an acquaintance arranged for the purchase of two in February 2001.

3. Mr Wong opposes the application for judgment and claims that there are sufficient differences between his box and the plaintiff's to say that it is not an infringement. He admits that the design is not his own but copied from a similar box which he acquired from a company called S.A. Holdings Ltd, which he conceded at the hearing may be a customer of the plaintiff. He liked the design and decided to copy it, but made a number of alterations, as he said "to avoid problem". These may be summarised as reducing the size by about 15 - 20%, reducing the thickness of the plastic body, changing the opening mechanism, and changing the watch stand inside. He says the result is sufficiently different from the plaintiff's not to be an infringement.

4. However, I have to agree with Miss Lam for the plaintiff that these relatively minor changes do not assist the defendant. The test of similarity is by a comparison in the eyes of inexpert customers. Barker J set out the means by which this should be done in Tang Fun Kee Manufacturing Co Ltd v Fortuna Plastic Manufactory [1980] HKLR 184, where he says, at page 189:

"The Defendants nevertheless say that, even so, D1 does not infringe the registered design. Whether it does or not is a matter of fact. I have to judge the matter solely by the eye. In deciding whether or not there has been infringement I must do so with the inexpert eye of a customer - I must consider solely the shape and configuration and not the object for which the article was made. (See Hecla Foundry Co. v. Walker Hunter & Co. [1889] 6 R.P.C.554.). I am entitled to look not only at the registered design but also at the article manufactured therefrom. And I then can lay that side by side with the alleged infringing article and make my comparison. I must also apply what has been called somewhat infelicitously: "the doctrine of imperfect recollection".

In the case Valor Heating Co Ltd v Main Gas Appliances Ltd [1973] R.P.C.554. Whitford J. said at p. 878: -

"In considering registered designs you must consider infringement not merely upon the basis of a side by side comparison, but also upon the basis of having had a look at the registered design then having gone away and come back and perhaps been put in a position of deciding whether the same article is the one you originally saw."

5. I have had the opportunity of seeing both the plaintiff's watch box and the defendant's, and, apart from the defendant's being slightly smaller than the plaintiff's, they seem to my inexpert eye to be almost identical. They are certainly sufficiently similar for a customer to believe they are the same, with minor differences only. I am forced to the conclusion therefore that the defendant's case is not substantially different from the design of the plaintiff's. There is accordingly a clear infringement of the plaintiff's rights under the Registered Designs Ordinance, Cap. 522.

6. I am also satisfied that there is infringement of copyright. The plaintiff has exhibited copies of his original drawings made in or about July 1999 of the design of his watch box, which are clearly original artistic works within the meaning of sections 2 and 5 of the Copyright Ordinance, Cap. 528, and the plaintiff qualifies for copyright protection under sections 177 and 178 of that ordinance. I agree with Miss Lam that there is a striking similarity between the defendant's watch box and the plaintiff's drawings to give rise to an inference that it was derived from the plaintiff's, and is a substantial reproduction.

7. Apart from his contentions referred to above that some changes were made in the design for his version of the box, the defendant offers little by way of defence. He admits some similarities, that he has offered it for sale, and that customers might prefer his as it is cheaper. He also has previous experience of accusations of infringement of copyright in products by Seiko and Casio. Indeed, his main complaint in these proceedings seems to be that the plaintiff's solicitors have dealt with him far more harshly than those in the previous cases, where he was able to settle the matter by signing undertakings and paying a small amount or nothing by way of costs and damages.

8. For the above reasons I find that the defendant has put forward nothing which constitutes an arguable defence to

these proceedings, which are in respect of the clearest possible case of infringement of registered design and copyright.