XCHRX LAU TAK WAH ANDY v. HANG SENG BANK LTD.

1999, No. A3968

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

HIGH COURT ACTION NO. 3968 OF 1999

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J U D G M E N T

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Introduction

1. The Plaintiff is a famous entertainer, actor and singer and the Defendant is one of the major banks in Hong Kong. At the beginning of March, 1999, the Defendant launched a promotional campaign of its credit cards and phone cards which bore, or will bear, the Plaintiff's image and likeness. The Plaintiff considers that this promotional campaign infringes his rights and brings this action in passing off against the Defendant.

The Nature of the Application

2. Further to instituting this action, on 16 March, 1999 the Plaintiff took out an inter partes application asking for an interim injunction restraining the Defendant until after judgment or further order from inter alia manufacturing, supplying, promoting or marketing credit cards or phone cards bearing the name, image and/or likeness of the Plaintiff. The other relief in the application is consequential in nature.

3. The hearing of this application lasted for some two and half days. I informed the parties at the end that I would reserve Judgment to a date to be notified to the parties. This is the Judgment regarding the application for interim injunction.

The Defendant's Promotional Campaign

4. In order to understand the nature of the Defendant's act of which the Plaintiff complains, I propose to set out what the Plaintiff said in his affirmation dated 15 March, 1999:-

"... on or about 2 March 1999, I read from the newspapers that the Defendant was launching a promotional campaign for its "Hang Seng Credit Card" featuring the use of my name and photographs of me and the names and photographs of other performing artists. There is now produced and shown to me marked "LTW-6" a copy of the Defendant's advertisement published in the 9 March 1999 edition of the Oriental Daily News. There are further produced and shown to me marked "LYW-7" samples of the advertising leaflets distributed by the Defendants [sic]. It will be noted from the advertisement and the leaflets that the Defendant is proposing to issue, inter alia, credit cards called "Hang Seng StarSelect Mastercard" bearing my name and photographs of me and that the Defendant is offering, inter alia, free phone cards called "Megastar Collectible Phonecards" again bearing my name and photographs of me as an incentive to applicants for its credit cards.".

5. The exhibit "LTW-6" shows the Defendant's advertisement in the "Oriental Daily News". The caption reads: "Hang Seng StarSelect Mastercard TVB MegaStars rejoice the year 2000 with you And earn Monthly Awards". The narrative relevant to this application reads: "Choose your favourite TVB MegaStars ... ".

6. The exhibit "LTW-7" consists of two documents. One is a promotional leaflet. It states on one side in Chinese and English respectively the following:-

"10 款巨星肖像任你自選1款印在自選偶像MasterCard上";

"Choose your favourite from these 10 MegaStar images and print it on your StarSelect MasterCard".

There is a copyright notice which reads "Photo (c) TVB 1999" at the left bottom corner of that page.

On the other side of this leaflet, there are a total of 32 photographs of the 10 stars (including the Plaintiff's). There is also a similar copyright notice at the left bottom corner.

7. The other document in exhibit "LTW-7" is an application form together with some introductory narration. A prominent caption reads:-

"Hang Seng StarSelect MasterCard" in English and "恆生自選偶像MasterCard" in Chinese.

8. One part of the introductory narration reads:-

"Choose your favourite MegaStar and have his or her image printed on your own Hang Seng StarSelect MasterCard. There are 10 MegaStars to choose from ... You can also put your personal photo on your Card to create your unique Millennium SelectImage MasterCard, or select our specially designed Hang Seng Millennium Commemorative Credit Card.".

9. The application form consists of 4 rectangular boxes. The last of these is for the applicant to fill in which image he chooses together with the relevant details. The upper part of this box states:-

"If you choose StarSelect MasterCard, pleas "√" your choice of MegaStar image where appropriate".

The names of the 10 stars including the Plaintiff's are then set out. The next box reads:-

"If you choose SelectImage MasterCard, please affix your selected photo in the specified box below." .

There is then a space for affixing a photograph. Below that is a list of Notes. Note 5 states:-

"Photo submitted should be under one of the following 3 categories: "People", Scenery" or "Pets"".

10. Mr. Kotewall submitted that both the copyright notice and the TVB programme names (in Chinese) on the photographs are obscure and not easily noticeable. The documents in exhibit "LTW-7" do not indicate any connection between TVB and the Defendant or the Defendant's promotional campaign. He also drew my attention to the new promotional materials which added the name of TVB.

11. On the other hand, Mr. Grossman asked me to note the following:-

(a) the copyright notices on the bottom of the relevant pages of the documents showing that the copyright of these photographs belongs to TVB;

(b) there is a TVB programme name in Chinese on each of the photographs shown in the promotional documents;

(c) the above are even clearer on the actual credit cards and the phonecards.

12. I also notice that the English word "StarSelect" is written as "自選偶像" in Chinese in the promotional documents. This Chinese phrase is translated as "Self-chosen Idols" or "Self-selected Idols" in English. It is also common ground that the section of the public at which this campaign is targeted are the local youngsters. Thus, the Chinese text in the promotional documents would have a greater impact on the ordinary readers of these documents.

Issue 1: Serious Question to be Tried on the Law

13. As stated above, the Plaintiff's cause of action lies in passing off. The legal principles which the Plaintiff contends are applicable in this action are summarized in paragraphs 2 and 3 of the skeleton submissions. At paragraph 2 of the skeleton submission, Mr. Kotewall sets out what I will call the "conventional" cause of action in passing off. I understand the Defendant does not dispute this proposition. The legal proposition set out in paragraph 3, however, is disputed. It states:-

"It is now generally accepted that the cause of action in passing off is available and apt in a case like the present, where a famous personality is seeking to restrain the unauthorized use of his name, image or likeness to suggest his approval or endorsement of a product."

(underline supplied).

14. The 4 cases which Mr. Kotewall placed great reliance in support of the above proposition are:-

(a) Henderson v. Radio Corporation Pty. Ltd. [1969] RPC 218;

(b) Hogan v. Koala Dundee Pty Ltd. (1988) 12 IPR 508;

(c) Pacific Dunlop Ltd. v. Hogan (1989) 14 IPR 398;

(d) Mirage Studios v. Counter-Feat Clothing Co. Ltd. [1991] FSR 145.

15. The Henderson case was a decision of the High Court of New South Wales (both the first instance and appellate jurisdiction). The plaintiffs were ballroom dancers and they sued the defendant in passing off alleging it wrongfully published their photograph on the cover of a gramophone record entitled "Strictly for Dancing: Vol. 1". An injunction was granted on the ground that the use suggested the plaintiffs recommended or approved of the defendant's goods, or had some connection with the goods.

16. The Koala Dundee case was a decision of the Federal Court of Australia. The applicant was a script writer and actor whose fame came from the film "Crocodile Dundee". The respondents ran two small shops which sold clothing and other items of an Australian nature. The applicant sought an injunction to restrain the respondents from using the name "Dundee" in association with a composite image "the koala image". The applicant advanced a case in passing off alleging such use was calculated to induce the public to believe the goods sold were associated with the film or the character portrayed by the applicant in it. The court granted the relief holding that the inventor of a famous fictional character having certain visual or other traits may prevent other using his character to sell goods and may assign the rights to use that character. This "extended action of passing off" protects against the wrongful appropriation of a reputation, or wrongful association of goods with an image belonging to the applicant.

17. In the Pacific Dunlop case, the Federal Court of Australia affirmed a decision which upheld an action in passing off. The plaintiff sued the defendants for a television advertisement which was easily recognizable as being a parody of a scene from the plaintiff's film "Crocodile Dundee". The Federal Court said the test was whether a significant section would be misled into believing that a commercial arrangement had been concluded between the defendants and the plaintiff under which the plaintiff agreed to the advertising.

18. In the Mirage Studios case, Browne-Wilkinson VC, after referring to the Australian cases of Children's Television Workshop v. Woolworths (NSW) Ltd. [1981] RPC 187 and Fido Dido Inc. v. Venture Stores (Retailers) 16 IPR 365, said the law as developed in Australia is sound. There is no reason why a remedy in passing off should not cover a case where the public is misled in a relevant way as to a feature or quality of the goods sold when an action is brought by the people with whom the public associate that feature or quality. An interim injunction was granted. The first plaintiff was the owner of the copyright in the drawings of fictitious humanoid characters known as "Teenage Mutant Ninja Turtles" and part of their business was to license the reproduction of these characters on goods sold by others. The first defendant made drawings of humanoid turtles characters similar in appearance to the first plaintiff's, utilizing the concept of turtles rather than the actual drawings of Turtles.

19. On the issue of misrepresentation, Mr. Kotewall relied on the following passage in the Pacific Dunlop case:-

"The question for the judge to decide in the present case was whether a significant section [of the public] would be misled into believing, contrary to the fact, that a commercial arrangement had been concluded between the [plaintiff] and the [defendant] under which the [plaintiff] agreed to the advertising."

(paragraph 7 of the Plaintiff's skeleton submissions).

20. The Defendant's position as regards the issue of misrepresentation is set out in paragraph 15 of its skeleton submissions:-

"In the context of personality or character merchandising, the actionable misrepresentation requires a suggestion that the plaintiff has endorsed or licensed the defendant's products, or somehow can exercise control over those products".

21. Further, at paragraph 16 of the Defendant's skeleton submissions:-

"There is and there can be no principle that simply because the name or image of a famous personality is used by a trader, that is sufficient for a cause of action in passing off. To do so would be equivalent to granting a monopoly in a name and an image which do not enjoy copyright protection.".

22. I fail to understand why the law was in dispute because it appears to a very large extent there is common ground between the parties as to the nature of a cause of action in passing off as it applies to the area of personality or character merchandising: see paragraph 3 of the Plaintiff's skeleton submissions and paragraph 15 of the Defendant's skeleton submissions. The Defendant disagreed the Plaintiff's case insofar as the Plaintiff contended that a misrepresentation to the effect that "a commercial arrangement had been concluded under which the Plaintiff agreed to advertising" is sufficient to ground an action: see paragraph 16 of the Defendant's skeleton submissions.

23. Looking at paragraph 3 of the Plaintiff's skeleton submissions alone, I doubt if the Plaintiff has taken the law as far as that. It is unclear whether by paragraphs 7 and 8 of the Plaintiff's skeleton submissions, the Plaintiff sought to extend the law beyond that set out in paragraph 3 thereof, or was only expanding on one of the three ingredients of passing off set out in paragraphs 2 and 3 of the skeleton submissions. If the Plaintiff had argued the law is as stated in paragraphs 7 and 8, I do not agree. I conclude the law of passing off in Hong Kong (in the context of personality or character merchandising) includes an ingredient of a misrepresentation that the Plaintiff has endorsed or licensed the Defendant's products, or somehow can exercise quality control over them. Subject to the above, I consider the following are specific questions which are triable:-

(a) whether there needs to be a precise representation that the Defendant's products were personally endorsed by the Plaintiff (para. 4(b) of the Defendant's skeleton submissions compared to paragraph 1 of the Plaintiff's Points in Reply);

(b) whether the reputation enjoyed by the Plaintiff must be a reputation that he maintains or exercises control of quality over any goods (paragraphs 12 and 14-15 of the Defendant's skeleton compared to paragraphs 7 and 8-11 of the Plaintiff's Points in Reply);

(c) whether further evidence is required to show that the misrepresentation was the cause of the public buying the goods in question once misrepresentation is established (paragraph 18 of the Defendant's skeleton compared to paragraph 13 of the Plaintiff's Points in Reply);

(d) whether a mere erosion of the exclusive goodwill in the Plaintiff's name is a sufficient type of damage (paragraph 23 of the Defendant's skeleton compared to paragraph 16 of the Plaintiff's Points in Reply);

(e) whether a mere loss of merchandising rights by way of royalty fees is a sufficient type of damage (paragraphs 26-27(a) of the Defendant's skeleton compared to paragraph 17-18 of the Plaintiff's Points in Reply).

24. Having reached this conclusion, I now turn to consider the other matters relevant to the determination of this application. These are dealt with under the separate headings below.

Issue 2: Serious Question to be Tried on the Facts

25. Although there is to a large extent common ground between the parties regarding the legal principles relevant to this application, it is disputed whether on the facts of this case the Plaintiff has shown a serious question to be tried in a cause of action in passing off as applied to personality or character merchandising.

26. The Defendant argued that by reason of two matters, the Plaintiff has failed to do so. The first matter is related to an agreement reached between the Defendant and TVB with regard to the photographs (in particular the Plaintiff's photographs) which appear in the promotional documents. The Defendant contended TVB is the absolute owner of the copyright of these photographs. The other matter is (the Defendant submits) in any event, the Plaintiff has not on the facts shown a serious question to be tried at common law even if the Defendant is not able to rely on the said agreement with TVB.

27. As a matter of convenience, I shall call these issues the "Contract Defence" and the "Common Law Defence" respectively.

(1) The Contract Defence

28. The affidavit evidence filed herein referred to an agreement made between TVB and one of the Plaintiff's companies, A & D Limited, dated 5 September, 1997. Further, there was an "inducement letter" of the same date signed by the Plaintiff in conjunction with the said agreement. These documents in essence were intended to deal with the duration for which the Plaintiff was to perform for TVB and the related copyright and other rights regarding the products resulting from such performance.

29. The Defendant relied in particular on Clause 10(iv) of the said agreement which reads:-

"(iv) The Consultancy [A & D] ... and agrees and shall procure the Artiste [the Plaintiff] agrees that all and any industrial property rights including copyright in the products of the Artiste's services hereunder shall belong to and be the property of the Company [TVB] absolutely and without prejudice to the generality of the above the Company shall be fully entitled to record, produce, re-produce, broadcast, televise and video tape the Artiste's performance and use, in any form, on any medium and for any purpose whatsoever, any such record ... and further grants and shall procure the Artiste to grant to the Company the sole and exclusive right to use or authorise others to use the Artiste's name, photographs and likeness in any manner and in any form whatsoever and in advertising and exploiting the same.".

30. Further, the Defendant relied on the following paragraphs of the Plaintiff's "inducement letter":-

"I [the Plaintiff] further ASSIGN UNTO the Company absolutely all copyright and rights in the nature of copyright throughout the world in all and any works or subject matters ("the Works") which I, in the course of or incidental to my engagement with the Consultancy for the provision of my services to the Company as an artiste write, compose or otherwise execute or assist in the execution thereof for the full period of copyright and rights in the nature of copyright and all renewals and extensions thereof. I further waive any moral rights I may have otherwise enjoyed in the Works ...

I acknowledge that all rights including all intellectual property, copyright in the product embodying my services in the Works ... shall vest in and belong to the Company absolutely and the Company shall be entitled to exploit any such product in any manner method and form it deems fit.

I hereby grant to the Company the sole and exclusive right to use or authorise others to use my name, likeness and biographical material in connection with my services to the Company for advertising and promotional purposes.".

31. There is undisputed evidence that TVB has licensed the photographs bearing the Plaintiff's image to the Defendant. The evidence further stated that these photographs were taken of the Plaintiff's services during the term of said agreement.

32. Based on the above, the Defendant argued that TVB is and was the copyright owner of the Plaintiff's photographs shown in the Defendant's promotional documents. The Plaintiff, on the other hand, contended that these clauses establish that TVB does not own the copyright and therefore was not in a position to "license" it to the Defendant. Further to the above clauses, the Plaintiff also relied on the following clause in the said agreement:-

"4. Anticipated Date/Date of Engagement:-

Subject to the terms herein, the term of engagement shall be for a fixed term period from 1 December, 1997 to 30 November, 1998 and both parties may not terminate this Contact during the said term. All the terms and condition of this Contract shall remain binding on both parties notwithstanding the completion of the performance stated in Clause 3 by the Artiste.".

33. The Plaintiff's arguments can be summarized into 2 points:-

(a) the rights granted to TVB are limited in duration to the fixed term of one year from 1 December, 1997 to 30 November, 1998;

(b) the rights granted to TVB are limited in scope in that they could only be used in advertising and exploiting the products of the Plaintiff's services.

34. In the Plaintiff's Points in Reply, it was further argued Clause 10(iv) operates as an assignment of 2 types of rights: the intellectual property rights (copyright) in the products of the Plaintiff's services rendered under the said agreement and another right to use the Plaintiff's name, photograph and likeness. Only the first type of the rights was granted to TVB absolutely. The other type of the rights is limited as aforesaid, that is, it was only granted for use in advertising and exploiting TVB's products.

35. I do not agree with the Plaintiff's point (a) above. While it is true that the period of engagement was clearly defined, whether TVB's other rights under the contract is so limited in time depends on the type of rights in question. This is made clear by the following provisions:-

(a) "All the terms and conditions of this Contract shall remain binding on both parties notwithstanding the completion of the performance ... " in Clause 4;

(b) "all and any industrial property rights including copyright ... shall belong to and be the property of the Company absolutely ... " in Clause 10(iv) (this is further made clear by "I ... ASSIGN UNTO the Company ... all copyright ... for the full period of copyright ,,, and all renewals and extensions thereof ... " in the Plaintiff's "inducement letter");

(c) the obligation of observing secrecy of information relating to TVB's affairs under Clause 10(vi);

(d) the obligation of secrecy of any private business between A & D and TVB under Clause 10(vii).

36. However, I consider the Plaintiff has established a serious question to be tried as to whether the Clauses relied upon by the Defendant created two types of rights and the type of right relevant to this application is limited in scope. In this connection, the phrase "I hereby grant to the Company the sole and exclusive right to use ... my name, likeness and biographical material ...for advertising and promotional purposes." (underline supplied) in the "inducement letter" is important to this line of the Plaintiff's arguments.

(2) The Common Law Defence

37. When I consider the parties' submissions relating to this part of the Defendant's case, I proceed on the basis that the "extended" cause of action in passing off relied upon by the Plaintiff is that as I found to be the law under the heading "Issue 1: Serious Question to be Tried on the Law", namely, it includes an ingredient of a misrepresentation the Plaintiff has endorsed or licensed the Defendant's products, or somehow can exercise quality control over them.

38. As this involves the consideration of a number of matters, I propose to deal with each of them under separate sub-headings as follows.

(2A) Plaintiff's Goodwill or Reputation

39. Although the Defendant accepted the Plaintiff had a reputation as a singer and actor, it argued there is no evidence he endorses any goods or services or that he maintains or exercises any control of quality over any goods or services he advertises or endorses: see paragraph 12 of the skeleton submissions. Mr. Grossman argued that although the Plaintiff's affirmation stated that he had endorsed various kinds of goods, they could generally be called "lifestyle goods", for example, shampoo, cellular phones, watches, he has not endorsed any financial services products. I understand the phrase "lifestyle goods" referred to by Mr. Grossman to refer to goods which were presented by the advertisement as associated with a certain way or style of living.

40. With respect, I do not agree with this argument. It is true that there is no evidence the Plaintiff has endorsed financial services products, in particular credit cards. However, in the context of present day advertisement strategies, it is difficult to categorize a product, including a financial services product, as not being a "lifestyle goods". It is not unknown that credit cards are advertised as being used by people publicly recognized to be successful, whether financially or otherwise. To this extent, at least, a credit card can be categorized as a "lifestyle goods".

41. For these reasons, I find that there is a serious question to be tried as to whether or not the Plaintiff enjoys a reputation who might endorse a financial services product, namely, credit cards.

(2B) Misrepresentation

42. I consider that the following facts established by the parties' evidence are relevant to my consideration under this heading. Most of these facts were relied upon by the Defendant; they are:-

(a) the Plaintiff has not expressly been portrayed as promoting the Defendant's products individually;

(b) none of the artistes has been expressly represented by the Defendant as having endorsed the Defendant's products;

(c) not only was the Plaintiff included as among a group, the theme of the campaign is to give the applicant of the card a choice of the image to be put onto the card;

(d) further, the choice is not limited to the 10 artistes. It extends to choosing the applicant's own favourite photograph, which may be one of 3 categories: "people", "scenery" or "pets";

(e) the Plaintiff's name only appears among the other 9 artistes and only for the purpose of confirming his photograph was included;

(f) on each of the photographs, the respective names of the TVB programmes were shown. This indicates the photographs were taken during these programmes;

(g) although it is of lesser importance than the above, a copyright notice stating that the copyright in the photographs is owned by TVB was shown on the photographs as well as on some pages of the promotional documents.

43. Since there has not been any express representation of an endorsement by the Plaintiff, the issue is whether there is a serious question to be tried as to an endorsement having been represented to the public by implication.

44. In the course of Mr. Kotewall's submissions, I have discussed with him the hypothetical case of the sale of the Plaintiff's photographs taken by an enterprising young man during one of the Plaintiff's concerts. Suppose this young man then decides to:-

(a) sell the Plaintiff's photographs taken by him,

(b) gives away one of the Plaintiff's photographs to the buyer who buys a T-shirt from him;

(c) prints one of the Plaintiff's photographs onto a T-shirt when a buyer buys a T-shirt from him.

Mr. Kotewall agreed that without anything more, the Plaintiff may have tremendous difficulties in advancing an action in passing off (although there may be other valid causes of action) in such an operation of a low degree of organisation and sophistication. He argued, however, that the situation may be entirely different if the sale had been more organised. This is because the more organised operation may lead the public to think that the Plaintiff is connected with it.

45. I agree with Mr. Kotewall that the answer to this issue will have to depend on the circumstances of each case. In my view, what the Defendant has done is no more than offering to affix the Plaintiff's photographs onto its credit cards or phonecards when members of the public decide to use the Defendant's credit cards (out of a choice of other photographs, including the photographs of 9 other artistes and photographs of the applicants' own choice). I do not consider that the public would consider the Plaintiff has "endorsed" the Defendant's products. Some members of the public may consider there may be some link between the Plaintiff and the Defendant regarding these photographs "in a vague and unfocussed way" (as the Defendant put it). However, this falls short of enabling one to reasonably imply that any endorsement arrangement had been reached between the Plaintiff and the Defendant. I agree with the Defendant's submissions that any unreasonable belief is to be disregarded: see also Stringfellow v. McCain Foods (GB) Ltd. [1984] RPC 501 at 538.

46. For the above reasons, I find that there is no serious question to be tried under this heading based on the facts of this case.

Causation of Damages, if Any

47. As I already concluded the Plaintiff has not established a serious question to be tried regarding the issue of misrepresentation, it is unnecessary for me to consider this heading. However, if I had found that there had been misrepresentation, I would have found that the Plaintiff had established a serious question to be tried under this heading. Alternatively, the Plaintiff had established a serious question to be tried as to whether further evidence is required to show that the misrepresentation was the cause of the public buying the goods in question.

Issue 3: Merits of the Plaintiff's Case

48. As will be stated below, I find that this is a case where the damages likely to be suffered by the Plaintiff on the one hand (if the injunction is not granted) is as difficult to quantify as those likely to be suffered by the Defendant on the other hand (if the injunction is granted). There is a finely balanced case over this issue. In such circumstances, I consider it appropriate to consider the relative strength of the parties' case: see Series 5 Software v. Clarke [1996] FSR 273 at 286-7; Barnsley Brewery Co. Ltd. v. RBNB [1997] FSR 462 at 472-3; Nin Jiom Medicine Manufactory v. Wai Kong Yiu (1996), HCA No. 11494 of 1996 at pp. 9-10; Centalic Technology Development v. Worldwide Industrial Ltd. [1996] 3 HKC 498 at 510. In this connection, I note that most of the factual evidence filed is not in much dispute.

49. I have concluded that the Plaintiff has not been able to establish a serious question to be tried regarding the issue of misrepresentation. Even if the Plaintiff be able to do so, for the same reasons set out under the heading "(2B) Misrepresentation", I find that the Plaintiff is unlikely to succeed at trial over this issue and consider this to be a factor which militates against this application.

Issue 4: Balance of Convenience

50. I also consider the balance of convenience to lean against granting an interim injunction order. I shall set out my reasons for so concluding under the following headings.

Adequacy of Damages

51. The Plaintiff argued that he cannot be adequately compensated by way of damages whereas the Defendant can; the Defendant argued it was the other way round.

52. The Plaintiff contended the damages he will suffer if this application be refused are not quantifiable, whereas those likely to be suffered by the Defendant are. Further, the harm he will suffer is not capable of being compensated for by any award of monetary damages, but this is not the case for the Defendant. Mr. Kotewall submitted that the Plaintiff will most likely lose the sponsorship of Citibank regarding his pop concerts. It is extremely difficult, if not impossible, to quantify what monetary loss will reflect the loss of such sponsorship. Further, the Plaintiff may also lose the income from potential sponsors if this application is refused. On the other hand, the only loss which the Defendant will face will be the wasted promotional materials, such as the leaflets, posters and application forms. These are easily quantifiable.

53. Mr. Grossman argued to the contrary. He submitted the Defendant's evidence shows that this promotional campaign is part of the larger campaign the Defendant intends to put forward using the Millenium as the underlying theme. Considerable expenses have already been incurred. If an injunction be granted, not only will the promotional materials be wasted, the whole campaign is likely to come to a halt. This is because the other artistes will follow what the Plaintiff does. The Defendant, being a reputable bank, will not risk its reputation by contesting the similar claim of these artistes and therefore will stop using this concept. Further, the interim injunction is likely to damage the Defendant's reputation in the minds of the not so well informed public. These harms are not quantifiable.

54. In my view, the arguments of both parties have substance and it is not possible to say that one party's loss is substantially easier to quantify than the other party's. It is therefore uncertain whether either party can adequately be compensated by any award in damages.

55. For this reason, I consider that the balance of convenience cannot be satisfactorily dealt with by considering this matter.

The Plaintiff's Undertaking as to Damages

56. Mr. Grossman complained that the Plaintiff has not filed any evidence as to his means to meet his undertaking as to damages (which was offered by Mr. Kotewall in the course of the hearing). Mr. Kotewall argued that the Court can infer the Plaintiff has the means to meet such undertaking because the only loss the Defendant will suffer is the wasted promotional materials.

57. I do not agree with Mr. Kotewall over this point. As I found under the heading "Issue 5: Adequacy of Damages", the Defendant's damages should not be limited to the wasted promotional materials but may include other losses like loss of income. This is because it is likely that the whole promotional campaign may have to stop since the other 9 artistes will most likely make similar demands if the Plaintiff obtains an interim injunction order. The potential claim can be very substantial. I therefore agree with Mr. Grossman the absence of evidence regarding the Plaintiff's means is also a factor which weighs against the Plaintiff's application.

Conclusion

58. For the reasons stated above, I consider my discretion should be exercised in refusing the Plaintiff's application.

Costs

59. It was agreed by the parties since the issue of costs depends on my decision and the reasons for it, I should not deal with costs now without hearing submissions first. I agree with this approach and leave the parties to decide whether it is necessary to restore the hearing relating to this matter.