XCHRX SUPERCHEER PROFITS LTD. AND OTHERS v. CHIU KIU INVESTMENT CO. LTD.

HCA No. 4391 of 1998

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

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J U D G M E N T

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1. I have before me an application for summary judgment for breach of trade mark and passing off by the Plaintiffs against 2 Defendants in two different Actions. The first Action is 4391 against Chiu Kiu Investment Co. Limited and in the second Action 4392, the Defendant is GNN (HK) Co. Limited trading as Chun Fai Electrical Co.

2. The three Plaintiffs are the owners of trade mark Clipsal and copyright in various electrical goods ranging from electric sockets to electrical switches manufactured in Hong Kong and China. They discovered in 1998 that the 2 sets of Defendant have been in breach of the Plaintiffs' copyright and trade mark by the sale of the goods very similar to those of the Plaintiffs. Visits were made by the Plaintiffs' people to the shops of the two sets of Defendant and purchases were made and subjected to examinations firstly by the Plaintiffs's Mr. Au and later by the Plaintiffs' associate company Bowden Industries's Mr. Yu and Mr. Lam.

3. Out of the purchases in the first Action of some 83 items, 38 items were found to be counterfeit goods. The breakdown of the relevant goods purchased by the Plaintiffs from the Defendant in the first Action were:-

8 pieces of 1 Gang 1 Way Switch of which one was found to be counterfeit;

20 pieces of 2 Gang 1 Way Switch of which 7 were found to be counterfeits;

2 pieces of 2 Gang 2 Way Switch of which one was found to be counterfeit and

29 pieces of 13A Socket all of which were found to be counterfeits.

4. In relation to the second Action, the position is as follows:-

11 Double Pole Switch with Neon 5 of which were found to be counterfeits;

26 13A Socket of which all were found to be counterfeits and out of 12 1 Gang 2 Way Switch 11 were found to be counterfeits.

5. At the hearing before me various defences were raised by Mr. Lee on behalf of the Defendants. There was a last minute desperation defence of implied consent. There is no evidence to support this defence nor does it feature anywhere in the papers and I would just put it aside and said there is no basis for such defence.

6. There is a defence that there were various manufacturing plants of the Plaintiffs in different places and therefore it may give rise to possibilities of slightly different goods of the Plaintiffs being manufactured or goods manufactured of the same type being somewhat different because of different moulds. Again, there is no credible evidence to support this allegation. It does not feature anywhere in the documentation and more importantly in the affidavit, there is no credible issue raised by the Defendants on this.

7. The real essential question is whether the goods that the Plaintiffs had exhibited alleged to have been purchased by the Plaintiffs' people from the Defendants were counterfeits. There is, on the evidence, no serious dispute that the articles that had been exhibited by the Plaintiffs alleged to be counterfeits were purchased from the Defendants. So the linkage of the goods to the Defendants and Defendants' shops is satisfactory as far as this court is concerned.

8. The only question then is whether the goods that had been exhibited are counterfeits. There are 3 lines that the Plaintiffs rely on in support of the allegation that they are counterfeits.

9. First is their exhibition of the goods. They exhibited the genuine ones and the alleged countefeits and the court therefore can compare them. I have in the course of the hearing looked at the genuine ones and looked at the alleged counterfeits, in relation to each type and I compared them. I also have the benefit, in relation to the first Action, of the Table set out at pages 59-61 of the First Bundle. In my view, it is quite clear that the genuine goods are very different from the counterfeits. To give just an example. In respect of the flush plates, on the back of the flush plates (with the exception of the 13A Sockets), the genuine ones bear on the back the words "the British registered design". The word "British" is correctly spelt. The counterfeit goods misspelled the word "British". Then you have at the back of the genuine ones, what looked like parallel lines running across the middle containing the mechanism, whereas the counterfeit ones are more by way of a centre box rather than 2 parallel lines running all the way across. There are other features which clearly indicate that the counterfeit items were different from the genuine ones. So that is the first source of the Plaintiffs' evidence.

10. The second source is the conclusion of Mr. Au upon examination and that of course came second-hand through the affidavit evidence of Mr. Ho.

11. And finally as a third source, there is the more detailed examination by the team of Bowden, namely Mr. Lam and Mr. Yu. Mr. Lam is a production engineer manager who has been working in Bowden Industry Ltd. for 13 years and his duties include technical support in production. Mr. Yu is a senior superintendent working in the tooling department of Bowden Industries Ltd. for 9 years. His duties include plastic moulding control. So they are both familiar with the Plaintiffs' Clipsal product, particularly those manufactured by Bowden and they came to the conclusion with the result as set out at pages 58 of the First Bundle. Those are strong conclusions which show very clearly that the goods purchased by the Plaintiffs' people from the Defendants and exhibited it as KH1-KH9(10) are all non-genuine Plaintiffs' goods.

12. Mr. Lee in his valiant effort to resist the summary judgment, tried to cast doubt on the validity of these conclusions, but unfortunately he is trying to build bricks without straw and he has got no material to work with. All he has is the evidence that goods were purchased by the Defendants from Plaintiffs' authorised dealers and/or foreign assoicated companies. If he had a credible contrary table of evidence, then that might have been a different matter but there is nothing. I think from the three sources of material which the Plaintiffs rely on in support of their case of counterfeits, I can do nothing but conclude that I am satisfied that they have made out a case of counterfeit of these articles.

13. In the course of my judgment, I refer to the Table at pages 59-61 of the First Bundle in relation to the first Action. There is a similar table in the second Action at pages 58-61 of the Second Bundle with the corresponding Exhibit Numbers reflected therein. The same position of what I have said in relation to first Action applies to the second Action.

14. My conclusion, therefore, is that there is no triable issue raised by the Defendants so as to refrain the court from entering summary judgment against the Defendants. I will now hear the parties on the precise order of the summary judgemnt.