CROCODILE GARMENTS LTD. v. LA CHEMISE LACOSTE S.A.

FAMV No. 14 of 2001

IN THE COURT OF FINAL APPEAL OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

MISCELLANEOUS PROCEEDINGS NO. 14 OF 2001 (CIVIL)

(ON APPLICATION FOR LEAVE TO APPEAL
FROM CACV NO. 162 OF 2000)

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DETERMINATION

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Mr Justice Bokhary PJ:

1. In seeking leave to appeal to the Court of Final Appeal, the applicant contends that its proposed appeal lies as of right. It seeks leave solely on that basis. In so doing it relies on s.22(1)(a) of the Hong Kong Court of Final Appeal Ordinance, Cap. 484, which provides that:

"An appeal shall lie to the Court in any civil cause or matter ... as of right, from any final judgment of the Court of Appeal, where the matter in dispute on the appeal amounts to or is of the value of $1,000,000 or more, or where the appeal involves, directly or indirectly, some claim or question to or respecting property or some civil right amounting to or of the value of $1,000,000 or more."

2. The proposed appeal concerns a contract between the applicant and the respondent. It involves the question of whether the applicant is free under that contract to apply for registration in the Mainland of its crocodile pictorial trade marks.

3. Such freedom is put forward by the applicant as "property or a civil right" worth at least $1 million. The burden of showing that lies on the applicant as the party who asserts it. In refusing leave to appeal against its decision, the Court of Appeal held, on the material before it, that the applicant had failed to discharge that burden.

4. We gave the applicant leave to file further evidence on the value of the property or civil right in question. It has filed such further evidence. Given an opportunity to file countervailing evidence, the respondent has chosen not to do so. It relies instead on its argument that the evidence filed by the applicant is inadequate.

5. The applicant's valuation evidence is to the effect that in the Mainland its crocodile pictorial and name marks would be worth $42 million more as registered than they would be worth as unregistered. That, it is to be noted, goes to the pictorial and name marks. But the property or civil right concerned is the right to apply for registration of the pictorial marks. The valuation evidence includes a bare assertion that the pictorial marks are worth more than the name marks. If so, the valuation evidence points to the pictorial marks being worth over $21 million more registered than unregistered in the Mainland. But it is unsatisfactory for us to have to deal with the matter on this vague basis of a bare assertion.

6. Furthermore there is the point that the right to apply for registration is not the same as registration. We accept that the value of registration is a legitimate starting point when trying to ascertain the value of the right to apply for registration. But that leaves the question: what are the chances of the application for registration succeeding? On this there is no evidence from any Mainland lawyer. It is true that the courts often have to struggle with putting a value on a chance. But the absence of evidence from a Mainland lawyer creates uncertainty which could have been avoided. This uncertainty cannot be laid at the respondent's door. We feel unable to say that the applicant has discharged the burden on it. Accordingly we refuse leave to appeal to the Court of Final Appeal.

[Costs not being opposed,
the application was dismissed with costs.]