BURBERRY ASIA LTD v. POLO SANTA ROBERTA LTD

HCMP 2696/2009

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO. 2696 OF 2009

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J U D G M E N T

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I.  INTRODUCTION

1.  Burberry applies to revoke 3 designs which Santa Roberta has registered in the Hong Kong Designs Registry.  The 3 designs are Designs Nos. 0800123.8, 0602147.9 and 0601018.5 (Designs A, B and C).  The 3 designs were registered on 18 January 2008, 14 January 2006 and 21 April 2006 respectively.

2.  Burberry contends that, contrary to Registered Designs Ordinance (Cap. 522) (RDO) s. 5, the 3 designs had previously been published by the time of their registration and so were not novel.  In support of its case on prior publication, Burberry says that the 3 designs are nearly identical to the design pattern (known as the “Burberry Check”) which Burberry has been using in Hong Kong and worldwide as its trademark on a whole range of products since the mid-1990s.

3.  In response, Santa Roberta argues that the 3 designs are not the same as the Burberry Check.  According to Santa Roberta, there are significant differences between the Burberry Check and the 3 designs.  On that basis, Santa Roberta says that the 3 designs met the requirement of novelty in RDO s. 5.

II.  DISCUSSION

Principles

4.  Colour reproductions of Santa Roberta’s 3 designs are appended to this Judgment.

5.  The evidence is that Burberry published (and has continued to publish) the Burberry Check from at least 1995, if not earlier.  For example, the Burberry Check appears in trademarks registered by Burberry on 23 November 1995, 6 April 2000 and 18 June 2004.  In addition, the Burberry Check features in Burberry’s 1997-98 catalogues.

6.  There is no question on the evidence that the worldwide marketing by Burberry of goods bearing the Burberry Check pattern long preceded the registration of Santa Roberta’s 3 designs.  Therefore, Santa Roberta must show that its 3 designs contain some novel element distinguishing the designs from the Burberry Check.  Otherwise, the 3 designs would not have qualified for registration under the RDO.

7.  The relevant law on novelty may be shortly stated.  Russell-Clarke and Howe on Industrial Designs (7^th ed., 2005) summarises the operative principles as follows (at para. 3-152):

“The question which has to be decided is whether the two appearances [of the competing designs] are substantially the same or not.  That the eye, and the eye alone, is to be the judge of identity, and is to decide whether one design is or is not an anticipation of another, has been consistently laid down.  The design must be looked at as a whole, the question being whether an article made according to the design under construction is substantially similar in appearance to an article made according to the alleged anticipation.  The test is not only to look at the two designs side by side, but also apart, and a little distance away.  The novelty should in other words be substantial, and it must be substantial having regard to such matters as the nature of the article, the extent of the prior art and the number of previous designs in the field in question.  Especially with fields such as clothing where there is a huge volume of prior art, there must be some clearly marked and defined differences, though the actual standard of ingenuity required on the part of the author is extremely small ...”

8.  Sometimes, there is a question whether differences in colour should be taken into account in determining whether 2 competing designs are substantially similar or different.  On this matter, guidance may be obtained from a dictum of Farwell J in Re Registered Designs Granted to Calder Vale Manufacturing Co Ltd. and Lappett Manufacturing Co. (1935) 52 RPC 119 (at 124-5):

“First of all, there is the question of colour.  I desire with regard to the colours to say this, that while I am very far from suggesting that there may not be cases where differences in colour may be of importance and, indeed, sufficient to differentiate the designs, prima facie, in my view colour is not a matter of any great importance in considering a question of this kind, more especially in a case such as this where the colours are for all practicable purposes limited to a few, in this case four colours, where the variations of the colours is not such in my judgment as materially to affect the similarity of the design, the design being the pattern, which remains the same and has the same appeal to the eye, although the arrangement of the four colours may be different in each case.  Therefore, so far as colour is concerned, in my judgment no importance should be attached, for the purpose of comparing these Designs, to the difference in colour.”

9.  Russell-Clarke and Howe explains the rationale underlying the principle that, in general, “colour is of no importance” thus (at para. 3-88):

“If colour was in the normal course of events taken into account as forming part of the design, ... it would be practically impossible to secure effective protection for any design for a pattern because either it would be necessary to register the pattern in all possible combinations of colours, or trade rivals would be able with impunity to apply the pattern in colours other than those shown in the registration.  It would appear, therefore, that colour must, prima facie, be ignored.  Ordinary differences of colour may, in other words, be regarded as mere ‘trade variants’, which do not alter the identity of the design.  In certain exceptional cases, however (e.g. a shot design for a silk handkerchief), it is possible that the colours and their arrangement might form part of the design, especially if the colouring was called attention to in the statement of novelty.”

Design A

10.  In submission, Santa Roberta’s case was that Design A differed from the Burberry Check for the following reasons:

“a)       because the change in white colour is very dramatic, the prominent feature is the centre intersection (block of 4 squares in white surrounded by black boards and all surrounded by a red square) which is near symmetric and [Design A] is repetition of these intersections.

b)         on the other hand, the most prominent feature of the Burberry Check is the horizontal black/white lines.  By reason there being no change in white colour or the change is very progressive and hard to notice, the Burberry Check is a repetition of these lines.

c)         the centre intersection of the Burberry Check is elongated and rectangular in shape, hence very different from [Design A].

d)         further, because the entire intersection of the Subject Designs are square in shape, the sense of direction ... is low whereas the sense of direction of the Burberry Check is high because their centre intersection are elongated and rectangular in shape.”

11.  I do not agree that the differences noted by Santa Barbara are of material substance.

12.  A visual comparison of the Burberry Check and Design A suggests to me that the 2 patterns are practically identical.  Especially from a distance, the 2 designs would be impossible to distinguish.  Like Design A, the Burberry Check has 4 white squares surrounded by black squares.  In both Design A and the Burberry Check, the black/white square patterns just described are surrounded by a red rectangular (not square in the case of either design) box.  Nor do I find the differences in elongation of the rectangles in the 2 design patterns significantly different.

13.  In my judgment, there is no novelty to Design A.

Design B

14.  In Submission, Santa Roberta’s case was that Design B differed from the Burberry Check for the following reasons:

“a)     the most prominent feature of Design B being the horizontal black/white stripes which make them stand out and appear to be on top and over the vertical brown stripes.  Further, the sense of direction is horizontal.

b)      whereas the Burberry Check seems to be flat and expanding[,] the sense of direction is vertical.”

15.  Again I see no real difference between the Burberry Check and Design B.

16.  A visual comparison indicates that the features of the Burberry Check which I have already noted in connection with my discussion of Design A are also present in Design B. 

17.  Seen close-up, the black stripes of Design B may appear (as an optical illusion) to rest on top of the perpendicular brown stripes of that design.  But colour is of little or no importance.  If one looks at the Burberry Check, the darker black stripes of that pattern may also be regarded as resting on top of the perpendicular lighter dark stripes of the same pattern.  Therefore, I do not regard the feature highlighted by Santa Roberta as materially significant.

18.  In my judgment, there is no novelty to Design B.

Design C

19.  Santa Roberta claimed the following differences between Design C and the Burberry Check in submission:-

“a)     because the change in white colour is very dramatic, the prominent feature is the centre intersection (block of 4 squares in white surrounded by black boards and all surrounded by a red square) which is near symmetric and [Design C] is a repetition of these intersections.

b)      on the other hand, the most prominent feature of the Burberry Check is the horizontal black/white lines.  By reason there being no change in white colour or the change is very progressive and hard to notice, the Burberry Check is a repetition of these lines.

c)      the centre intersection of the Burberry Check is elongated and rectangular in shape, hence very different from [Design C].

d)      further, because the centre intersection of the Subject Designs are square in shape, the sense of direction is low whereas the sense of direction of the Burberry Check is high because their centre intersection are elongated and rectangular in shape.

e)      the polo device on Design C is totally different from the Equestrian Knight on the Burberry Check in terms of design, shape, outlook and theme.”

20.  I am not persuaded by Santa Roberta's contentions on Design C.

21.  Santa Roberta's reasons (a) to (d) for differentiating Design C are essentially the same as those used in the attempt to distinguish Design A from the Burberry Check.  I reject those reasons on the grounds already stated in relation to Design A.

22.  As for Santa Roberta's reason (e), Burberry's Equestrian Knight device appears on some Burberry products superimposed on top of the Burberry Check.  Such use of the device is apparent (among other instances) from photos in Burberry's 1997-98 catalogue.  The device may be described as the silhouette of a knight holding his lance pointed forward while seated on a charging horse.

23.  On the other hand, Santa Roberta's device is the outline of a polo player riding a horse while holding up a polo stick ready to strike down.  That device is superimposed on Design C.  Seen from even just a little bit away, it is difficult to make out or distinguish the 2 devices from each other.  The polo player's stick can be mistaken for a lance, the polo player for a knight, and the polo player's running horse for the knight's charging steed.  Thus, to my mind, a Santa Roberta Design C product may easily be confused at a distance as a Burberry Check with an Equestrian Knight.  I therefore do not think that Santa Roberta's device is a sufficiently distinguishing or material feature of Design C.

24.  In my judgment, there is no novelty to Design C.

III.  CONCLUSION

25.  Santa Roberta's 3 designs were not novel at the time of registration.  Their registrations should accordingly be revoked.  I shall now hear submissions on costs and consequential orders.