MIRACLE BLADE LLC v. MARS INTERNATIONAL HOUSEWARES CO LTD

HCA 3193/2003

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO. 3193 OF 2003

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D E C I S I O N

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1. The Plaintiff applies for summary judgment. I am not, however, satisfied that the Defendant has no arguable case.

2. In relation to the distinctive features which Mr Ho (appearing for the Plaintiff) has drawn to my attention as constituting significant features of the Miracle Blade, the Plaintiff's product, I am not satisfied that I can say in a summary hearing that the same (whether individually or in combination) are original ideas in which copyright is capable of subsisting, as opposed to general or merely commonplace ideas which cannot be subject to copyright. The features of his clients' individual knives highlighted by Mr Ho were essentially as follows:-

(1) plastic handle with ball-shape at the end;

(2) ball at the top of blade;

(3) curvature and shape of the blade;

(4) number of slots (7) on the "Rock 'N Chop" blade.

Given that there are only so many functions, shapes or forms which a knife can have, I cannot preclude argument at trial that the features highlighted by Mr Ho are merely general ones. I regard the features of the Plaintiff's wooden block (for the storage of its blades) in the same light.

3. There is a dispute whether the allegedly infringing sample obtained by the Plaintiff's investigator from the Defendant was or was not sold to the Plaintiff. The Defendant says that the sample was an actual Miracle Blade set legitimately in its possession which the Defendant provided without charge to the Plaintiff (after much importuning by the latter's investigator) to show the quality of the Defendant's workmanship. The Defendant says that the video evidence secretly obtained by the Plaintiff of the provision of the sample supports the Defendant's case, if one listens closely enough. The Defendant says that it was still preparing generic blades and a wood block for its would-be customer. No ultimate product was ever finally put together according to the Defendant. I do not see how I can assess the validity of the evidence one way or another on the foregoing points without recourse to trial, in particular cross-examination.

4. I have read the transcript evidence provided by the Plaintiff of the video evidence it secretly obtained. The transcript does not seem to me conclusive. The Defendant says that the transcript is selective. Further, attention needs to be paid to the nuances and context of the situation to ascertain precisely what the parties were discussing and the Defendant was really saying. I have not seen the video which was made available here in Court, should I wish to view the same. I do not think that it would be appropriate for me to embark on a mini-trial as to the meaning of the video-recorded transactions in a summary hearing. That is better left to trial, cross-examination and submission in light of the totality of the evidence.

5. Mr Ho points me to some e-mail sent by the Defendant to the Plaintiff's investigators. In one there are photos of what appears to be a Miracle Blade, but bearing the logo "Cuchilla Milagrosa". The Defendant says that, read in context, this was simply the Defendant showing the investigators what the chosen logo "Cuchilla Milagrosa" might look like on a knife. It did not amount to an offer (contrary to what Mr Ho submits) to sell Miracle Blades under a different logo. Mr Ho says that the e-mail correspondence read as a whole suggests that the Defendant's case is pure moonshine. I am not able, however, to arrive at such conclusion summarily. The Defendant's evidence may be implausible, but that does not mean that it is incapable of belief. That being the case, the matter should proceed to trial.

6. Nor am I persuaded on a summary basis that use of the logo "Cuchilla Milagrosa" (literally, "Miraculous Knife" (not precisely "Miracle Blade") in Spanish) would constitute the passing off of the Plaintiff's Miracle Blade in the sense of being actionable as a tort or civil wrong in Hong Kong or Mexico. To the extent relevant, I would need evidence of the likely way in which consumers (possibly here or in Mexico) might understand or be confused by the name "Cuchilla Milagrosa". I therefore do not think that I can decide the question of passing off summarily today.

7. The Plaintiff may be right or wrong in its case at the end of the day. But it seems to me that there are considerable difficulties along its way if it wishes to have judgment today in the absence of trial.

8. For all the above reasons, I give the Defendant unconditional leave to defend. I shall hear the parties on costs.