GREAT POWER ELECTRONIC PRODUCTS CO. v. CARSAN INDUSTRIES LTD. AND OTHERS

HCA7333/98

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO. 7333 OF 1998

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J U D G M E N T

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1. This is an application by the plaintiff for final judgment against the defendants.

2. The causes of action is one of passing-off and copyright infringement. It is the plaintiff's case that the defendants offered to sell radio-controlled toy cars which are replicas of the plaintiff's radio-controlled toy car model No. GP841.

3. In support of the application, the plaintiff has adduced affirmation evidence to show that the 2nd defendant had previous business dealings with the plaintiff in the supply of the radio-controlled toy cars in question.

4. In around May or June 1998 the sales representative of the 1st defendant offered to sell to a customer of the plaintiff the toy cars which is almost an exact replica of the plaintiff's model GP841. Even the operating instruction is identical when both contain the same mis-spelling. The price offered by the 1st defendant is substantially lower than that of the plaintiff. There is evidence to the effect that there had been early occasions when the defendant purchased the model GP841 from the plaintiff at a price which is a price higher than the one offered by the 1st defendant.

5. Subsequent enquiry by the plaintiff through a private investigator shows that the 1st and the 2nd defendants are in fact associated companies. The 3rd defendant actually said to the private investigator that the 2nd defendant was the export trading arm of the 1st defendant, and in the presence of the 3rd defendant a Mr LEE offered or agreed to supply sample of this GP841 to the private investigator. But no actual sample was supplied. According to the 3rd defendant, the 1st defendant has a current commitment to another buyer.

6. On another occasion a Mr Jimmy CHAN of the 1st defendant also offered to sell the model GP841 and agreed to offer a quotation for the toy cars in question, and he actually said it would take 30 days to complete the production. And in a catalogue supplied by the 1st defendant, this model GP841 was also depicted. There had been requests by the private investigator for the actual sample from the defendant, but none was made available.

7. In the defence of the defendants, no actual positive defence was put forward as such. It is, however, suggested that there is insufficient evidence to show the plaintiff's reputation pertaining to the model in question, and there is no documentary proof of the plaintiff's volume of sale. It is also suggested that there is no evidence of deception and/or confusion.

8. On the question of copyright infringement, it is suggested that the plaintiff has not produced the actual design drawing of the model in question. It is emphasised repeatedly that the plaintiff in fact is not in a position to produce the actual infringing article allegedly supplied by the defendants.

9. As to the availability of these infringing copies, although in the course of his submissions, Mr LAM actually produces this article allegedly supplied by the defendant to a customer of the plaintiff, it is right that in the affirmation the actual infringing article has not been produced as such. It would have been better, of course, for this infringing article to be produced, but on the available evidence there can be, in my view, no dispute that the defendants were in fact offering to sell this radio-controlled toy car which is an exact replica of the plaintiff's model, No. GP841.

10. I am satisfied that the plaintiff has demonstrated with adequate evidence that the plaintiff owns the copyright of this model and that the defendants were trying to pass off their products as those of the plaintiff. The plaintiff, by the affirmation of Mr YEUNG Chi-ming, confirms that the plaintiff is the copyright owner of the model GP841, which has not been challenged as such.

11. The defendants' assertion as to the source of this infringing article, the denial of the allegations made against them by the private investigator, and the non-involvement of the 3rd defendant, in my view, in the light of the available evidence, is totally unbelievable and not credible. The suggestion that the 3rd defendant was not involved, and the denial by the defendants that they have not infringed the trademark of the plaintiff and have not passed off the goods of the plaintiff, on the totality of the evidence, as I said, is totally incredible.

12. I am satisfied that on the available information at this stage, there is no issue that need to go to trial, except perhaps the question of damages. I think it is right in the circumstances that the Court should grant the order as sought by the plaintiff against the defendants.

13. I make an order in terms of prayer 1 to 3 and 5 to 8 of the plaintiff's summons.