BABYZEN v. ZHONGSHAN YUYU BABY PRODUCTS CO LTD

HCA 74/2017

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO 74 OF 2017

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DECISION

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1.  This is the application of Zhongshan Yuyu Baby Products Co, Ltd (“the Defendant”) by summons dated 30 March 2017, pursuant to Order 14, rules 2 and 5, Order 18, rule 19 and the inherent jurisdiction of the court, for final judgment to be entered against Babyzen (“the Plaintiff”) on its counterclaim and for:

(a) An order that the entry on the Register of Designs kept under the Registered Designs Ordinance (Cap 522) in respect of the Plaintiff’s Registered Design No 1401942.4M001 be revoked under Section 45 of the said Ordinance;

(b) An order that following the revocation of the Plaintiff’s Registered Design, the Plaintiff’s Statement of Claim filed herein against the Defendant for infringement of registered design be struck out on the grounds that:

(i) it discloses no reasonable cause of action; or

(ii) it is scandalous, frivolous or vexatious; or

(iii) it is otherwise an abuse of the process of the court,

and this action against the Defendant be dismissed. 

The Plaintiff’s claims

2.  The Plaintiff is a company incorporated in France, carrying on a business worldwide specialising in, inter alia, the design, development and marketing of baby strollers, which were and are available for sale both in Hong Kong and overseas.

3.  The Defendant is a company which carries on the business of exporting, designing and manufacturing, for wholesale and retail, baby strollers with a business premises at No 47^th Yuanhebei Road, Dongsheng Town, Zhongshan City, Guangdong Province, 528400, the People’s Republic of China. 

4.  In this action, the Plaintiff claims against the Defendant for infringement of its Registered Design No 1401942.4M001 (“the Design”) by manufacturing and selling, in the course of its business, without the consent of the Plaintiff, baby strollers the design of which is the same as, or not substantially different, from the Design, and which does not produce on the informed user a different overall impression.

5.  The Defendant’s case, for the purpose of this application, is simply that the Design was not new as at the date of the application for registration, and is and has at all material times been invalid because the Design was neither new nor original as at the date of the application for registration and was, before such date, registered and/or published in Hong Kong or elsewhere in respect of the same or some other article or differs from such a design only in immaterial details or in features which are variants commonly used in the trade.  The Defendant relies on four specific particulars:

(1)   Prior Registered Community Design in the European Union under Design Registration No 001790973-0001 published on 14 December 2010, the application for registration being filed on 8 December 2010.  (“the European Registered Design)

(2)   Prior registered design patent in the People’s Republic of China under Publication No CN302894843 granted as of 30 July 2014, the application for registration being filed on 9 September 2013.  (“the PRC Registered Design”)

(3)   Prior design registration in Japan under Design Registration No D1419985 registered as of 1 July 2011, the application for registration being filed on 10 December 2010.  (“ the Japanese Registered Design”)

(4)   Common general knowledge. 
(See the Defendant’s Particulars of Objections to the Validity of the Plaintiff’s Registered Design)

6.  For the purpose of the present application, the Defendant did not rely on common general knowledge.  It also did not rely on the second ground as set out in its Particulars of Objections to the Validity of the Plaintiff’s Registered Design, namely, “the Registered Design is ambiguous in that the representations of the article to which the said design is to be applied do not sufficiently and clearly define the shape, configuration, pattern or ornament to be applied to the article nor the scope of the monopoly claimed in respect of the Registered Design.” However, I agree with Mr Wong, for the Defendant, that it does not mean that the Defendant has, in any way, abandoned this ground, if this case has to proceed to trial.  It is just that for this application, the Defendant relies solely on the prior publication of the European Registered Design, the PRC Registered Design and the Japanese Registered Design. 

7.  The Defendant’s case is that as the Design was published previously, it is invalid as the Plaintiff was well aware of the invalidity of the Design when it commenced the present action on 12 January 2017.  In its counterclaim, the Defendant seeks an order that the entry on the Register of Designs in respect of the Design be deleted.  Once the Design is invalidated or deleted, it follows that the present action should be struck out.

8.  Hence, the only issue that this court needs to decide is whether the Design was published previously, through the European Registered Design, the Japanese Registered Design and the PRC Registered Design, such that the Design is not novel and its registration should be revoked (“the Issue”).  If the answer is in the affirmative, then the Defendant is entitled to final judgment and to have the registration of the Design revoked and the present action struck out.  If this court is not able to give an affirmative answer, or is unable to determine the issue without further evidence, then this court should allow the present action to proceed and dismiss the Defendant’s application. 

9.  Both Mr Wong for the Defendant and Ms Ma of the Defendant agreed that this court is in the same position as the trial judge to determine the Issue as the exercise of comparing the Design and the prior publications, namely the European Registered Design, the Japanese Registered Design and the PRC Registered Design, is a matter entirely for the court adopting the tests to be set out further below.  Put in another way, the trial judge would be examining the same evidence and performing the same exercise as this court does in determining whether the Design should be revoked. 

10.  I should also mention that the current owner of the European Registered Design is the Plaintiff, after a transfer of ownership recorded on about 3 December 2014 in favour of the Plaintiff.  There is also no dispute that the Plaintiff is also the current owner of the Japanese Registered Design, whilst the current registered owner of the PRC Registered Design is the Defendant.

11.  As mentioned above, the Defendant’s case is that the Design is nearly identical to the European Registered Design, the Japanese Registered Design and the PRC Registered Design and on the basis of the said prior registrations, the Design is liable to be revoked under Section 45 of the Registered Designs Ordinance, Cap 522 (“the Ordinance”), on the ground that it was not new at the time of its registration and the Plaintiff has no defence to the Defendant’s counterclaim. 

Legal principles relating to applications for summary judgment

12.  The legal principles relating to application for summary judgment are very well established and normally it is not necessary for the court to rehearse those principles.  However, there is an unusual feature in this case.  Mr Wong, for the Defendant, submitted that in the Affirmation of Xavier Laurent De Bure, the Plaintiff has not raised any defence to the counterclaim.  The only issue disputed by the Plaintiff is whether the Defendant has made out a prima facie case of revocation.  Paragraphs 9 and 10 of the Affirmation of Xavier Laurent De Bure read:

“ 9.   Clearly, the Defendant’s allegation in Tang’s Affirmation that the Plaintiff’s Registered Design is “nearly identical” to the Three Designs does not satisfy any of the aforesaid grounds stipulated in section 5 of the RDO.  Such allegation serves no more than an admission by the Defendant that the Plaintiff’s Registered Design is not the same as each of the Three Designs.  The Defendant had not adduced any evidence to demonstrate that the differences between the Plaintiff’s Registered Designs and the EU Design, the JP Design or the PRC Design are immaterial or in features which are variants commonly used in the trade.  Accordingly, the Defendant failed to raise a prima facie case for revocation of the Plaintiff’s Registered Design.

10.  I have been advised and verily believe that the Defendant has not made out a prima facie case for its application for summary judgment and therefore the burden has not been shifted to the Plaintiff to raise any triable issue.”

13.  In view of the Plaintiff’s approach, it is fair to say that prior to the Plaintiff’s filing of its Skeleton Submissions, the Plaintiff has not raised any triable issue.  It basically put the Defendant to strict proof of its counterclaim and contended that the Defendant had not made out a prima facie case on its claim for a revocation of the Design.  Mr Wong, for the Plaintiff submitted that if this court is satisfied that there is a prima facie case of prior publication or disclosure of the Design, that should be the end of the matter and summary judgment should be granted in favour of the Defendant. 

14.  Mr Wong also made a fair point that it is neither open nor appropriate for the Plaintiff’s counsel to give evidence and raise new issues and defence in the last minute by way of submissions.  His arguments are that:

(1)   In the Plaintiff’s Skeleton Submissions (at paragraphs 34 – 42), the Plaintiff’s counsel contended for the first time that there are differences between the designs which are neither immaterial nor common variants used in the trade.

(2)   However, such differences were never pleaded in the Defence to Counterclaim and they were not mentioned at all in the affirmation in opposition to the Defendant’s application. 

(3)   As such differences had never been put in issue by the Plaintiff, the Defendant did not file any reply evidence to deal with such differences.  If the Plaintiff had properly disclosed the defence and stated the facts and particulars relied upon, the Defendant could have adduced evidence in response to address such features and differences.  In the premises, it would be unjust and unfair to allow the Plaintiff to run such arguments in the last minute by way of submissions. 

(4)   More importantly, in order for the Plaintiff to rely on such differences as defence to the counterclaim, the Plaintiff must first show that such features identified by the Plaintiff’s counsel constitute “design” within the meaning of section 2 of the Ordinance.  In other words, the Plaintiff has to adduce evidence showing the features identified have “eye appeal”, that they are “not dictated solely by the function which the article has to perform”, and that they are “not dependent upon the appearance of another article of which the article is intended by the designer to form an integral part”.  The relevance of such evidence is set out in two cases, namely, Interlgo AG v Tyco Industries Inc & Ors [1987] HKLR 619 at 639G – 651E and Amp Inc v Utilux Pty Ltd [1971] FSR 572 at 577 per Lord Reid, at 583 per Lord Morris and at 597 per Lord Pearson.

(5)   In the present case, there is simply no evidence whatsoever to that effect.  Hence, it is not open to the Plaintiff to give evidence by way of submissions and claim, without any evidential basis, that the features identified constitute “designs”. 

(6)   The Plaintiff claims itself to be a well-known designer and manufacturer of baby strollers.  As such, it would be very easy for someone from the Plaintiff to say on oath the features relied upon in the Design are not solely dictated by function, or that they have eye appeal, or that they are not dependent upon the appearance of another article.  For unexplained reasons, no such evidence has been adduced.  Under such circumstances, the only inference to be drawn is that even if the Plaintiff is to adduce evidence, it cannot show that such features constitute “designs” within the meaning of Section 2 of the Ordinance.  (See Ip Man Shan Henry v Ching Hing Construction Co Ltd (No 2) [2003] 1 HKC 256 at 307 per Deputy High Court Judge Lam (as he then was))

15.  In view of the above submissions, insofar as it is relevant to this application, this court applies the following legal principles:

(a)   The underlying policy of the summary judgment procedure is to prevent a defendant delaying the plaintiff from obtaining judgment in a case in which the defendant clearly has no defence to the plaintiff’s claim.  (Man Earn Ltd v Wing Ting Fong [1996] 1 HKC 225) In Manciple Ltd v Chan On Man [1995] 3 HKC 459, Mortimer JA (as he then was) at 466 said:

“ Order 14 proceedings for summary judgment when there is no defence to a claim are an important feature of the legal process. It enables plaintiffs in cases where there is no defence to obtain expeditious summary judgment to avoid unnecessary delay. When applied for, it is for the defendant to show that there is a triable issue or an arguable defence if he is to be allowed his day in court. To deny him his day in court, if he shows a triable issue or an arguable defence, is indeed a fearful injustice. On the other hand, if he has no defence and he obtains leave to defend, equally there is injustice to the plaintiff.”

(b)   The first step is always for the plaintiff to satisfy the court that he or she has raised a prima facie sustainable case in the first case.  Even in the absence of a defence, the plaintiff carries with it the duty to prove its case.  In Ju Yan Di Emperory Genesisy v Yau Wai Han [2015] 1 HKLRD 822, Cheung JA at 827, paragraph 14 said:

“ 14. It is well established that the burden on the defendant in a summary judgment application is to show that he has a credible defence and he must condescend to give particulars of his defence. However, this does not mean that once the plaintiff invokes the application and irrespective of the strength of his case, the defendant bears all the burden of showing that there are triable issues in the case. This is because the starting point in a summary judgment application is that it should only be invoked when there is no defence to the claim. This means that the plaintiff must in the first place demonstrate that the defendant has indeed no defence. This requirement is further recognised in the procedural rules which mandate the plaintiff to state his belief in the verifying affidavit that there is no defence to the claim. This requirement must be kept in proper perspective when assessment is made of the strength of the application, otherwise there is a danger that the attention will be focused solely on what the defendant has said without consideration at the same time of the basic premise of the plaintiff’s claim or its inherent strength and weakness.”

(c)   The second step, then, is for the defendant to condescend upon particulars, whether by affidavit or otherwise, that he or she has a bona fide defence to the plaintiff’s claims.  In Korea Data Systems Co Ltd & Anor v Chiang Jay Tien & Anor [2001] 3 HKC 239 at 248F – H, Deputy Judge Jeremy Poon (as he then was) said:

“ On the evidence before me, it is simply a bare allegation by the defendants that the California judgment is not final and conclusive. The second defendant had failed in his third affirmation to condescend upon particulars why he considered it not final and inconclusive. The first defendant’s position is even worse: this ground never featured in his affirmation or draft defence at all. It was only advanced in Mr Leung’s submissions. None of them had adduced any evidence to contradict Mr Cameron’s opinion. As I understand Mr Chan and Mr Leung, they are not contending that Mr Cameron’s opinion is in any way wrong. In the circumstances, I am not satisfied that the defendants’ bare allegations had even begun to put in issue the question whether the California judgment is final and conclusive: see generally Hong Kong Civil Procedure 2001 para 14/4/4 at p 152.”

(d)   In Toy Major Trading Co Ltd v Hang Shun Plastic Toys Ltd [2007] 3 HKLRD 345, Ma CJHC (as he then was) at paragraph 12, stated that the purpose of the obligation to condescend upon particulars:

“ is to ensure that where a plaintiff raises a plausible and prima facie sustainable case, a defendant can convince the court there exists a triable issue so that leave to defend is given or the application for summary judgment is dismissed. In other words, that the defendant is expected to show a fair probability or reasonable grounds that a bona fide defence exists.”

16.  In Super Town Investments Limited v Ives Developments Limited and Ors HCA 86/2006, unreported, 22 May 2007, Deputy High Court Judge To (as he then was) at paragraphs 5 and 6 said:

“ 5. While the scope of application of Order 86 and Order 14 of the RHC are different, the legal principles applicable to an application for summary judgment under both Orders are the same. These principles are well-established. The cardinal principle is that a defendant ought not be driven from the judgment seat if he has an arguable defence. Thus, summary judgment should only be given where it is a clear and obvious case and ought therefore not be tried: see Hong Kong Civil Procedure 2007 Note 86/4/1, Ng Lung Sang Anita v Lam Yuk Lan [1999] 4 HKC 106 and Chow Yim Woon v Lam Yung Ming [2000] 3 HKLRD 373.

6. A concise statement of the standard approach in an application for summary judgment is to be found in the dicta of Ma J, as he then was, in Schindler Lifts (Hong Kong) Ltd v Ocean Joy Investments Ltd [2003] 1 HKC 438.  The court has to determine two questions: firstly, whether what the defendant says is believable as opposed to whether its version of events is to be believed; and secondly, if it is, whether what the defendant says amounts to an arguable defence in law.  In determining the first question, the court should not embark on a mini trial of the action on affidavit evidence.  The burden of proof is not a heavy one.  It is not the function of the court at this stage to assess if a defence will succeed at trial.  The court should not rule out a defence simply because it thinks the defence would not be believed by the trial judge because of some inherent weaknesses, save where what the defendant says is practical moonshine. Insofar as the second question is concerned, summary judgment will not be granted if there are arguable defences or serious disputes of law: see Man Earn Ltd v Wong Ting Fung [1996] 1 HKC 225 and Ng Lung Sang Anita v Lam Yuk Lan [1999] 4 HKC 106.”

17.  I am of the view that, applying the “eye appeal” test, the details of which are to be addressed below, the Defendant does raise a prima facie case that the Design and the prior publications in the three other registered designs are nearly identical.  The duty then is on the Plaintiff to the counterclaim to condescend upon particulars and to state clearly and concisely what the defence to the counterclaim is, and what facts are relied upon to support it.  Indeed, in all cases, sufficient facts and particulars must be given to show that there is a triable issue.  (Order 14, rule 3) Similarly, if a legal objection is raised, the facts and the point of law arising thereon must be clearly stated.  (Order 18, rule 11).

18.  It is, I must say, a rather risky approach for the Plaintiff to simply put the Defendant to prove a prima facie case without adducing evidence to prove its defence.  It must be remembered that the Defendant’s case is that the Design and the other three prior registered designs are identical or nearly identical, by applying the “eye appeal” test.  It is unrealistic then to expect the Defendant to give a list of what it considers to be immaterial differences.  If the Plaintiff considers that there are material differences, then it should, by way of affidavit evidence, list out all the material differences.  Then the Defendant would have a chance to adduce evidence to respond to the same.  The Plaintiff may apply to put in further evidence to reply to the Defendant’s evidence.  This way the court would have all the relevant evidence before it to decide the case.  I agree with Mr Wong, for the Defendant, that by adopting the approach to put the Defendant to strict proof of a prima facie case, the Plaintiff could not then by way of counsel’s submissions seek to put in evidence to which the Defendant now has no chance of responding. 

19.  In the present case, adopting the approach as set out by Cheung JA in Ju Yan Di Emperory Genesisy v Yau Wai Han (supra), I am of the view that the Defendant does have a prima facie case, unless being contradicted by contrary evidence, that there is no defence to its counterclaim and that the registration of the Design should be revoked. 

20.  In deciding this case, I confine myself to all the filed evidence and nothing more. 

21.  Having said that it does not mean that the Defendant is automatically entitled to final judgment.  I am of the view that the burden still rests on the Defendant to prove its case by convincing the court that the Design and the three prior registrations are identical or nearly identical.  In this process, the Plaintiff is entitled to make submissions as to why the Defendant’s submissions in relation to its application for revocation of the Design are wrong. 

22.  The net result is that the court will still have to decide on the ultimate issue of whether the Design is novel or not and whether the registration of the same should be revoked.  On this issue, I am ably assisted by the very helpful submissions of both counsel. 

Legal principles relating to registered designs

23.  Section 45 of the Ordinance provides:

“ The court may, on application by any person, order the registration of a design to be revoked on the ground that, at the time of its registration, the design was not new or was not registrable for any other reason.”

24.  Section 5(2) of the Ordinance provides:

“ (2) A design for which an application is made shall not be regarded as new if it is the same as —

(a) A design that has been registered in pursuance of a prior application, whether or not that design has been registered in respect of the same article for which the application is made or in respect of any other article; or

(b) A design that has been published in Hong Kong or elsewhere before the filing date of the application, whether or not that design has been published in respect of the same article for which the application is made or in respect of any other article,

or if it differs from such a design only in immaterial details or in features which are variants commonly used in the trade.”

25.  The following legal principles are relevant for the purposes of this hearing:

(1)   It has always been the case that mere slight variation from articles already manufactured are not registrable, that the variation from what has gone before must not be trivial or infinitesimal, and that small variations which any skilled workman might make between the articles which he makes for different customers are not enough.  If all the differences can be categorised either as immaterial details, or as variants commonly used in the trade, then the design in suit is not new;

(2)   The question which has to be decided is whether the two appearances are substantially the same or not.  That the eye, and the eye alone, is to be the judge of the identity, and is to decide whether one design is or is not an anticipation of another, has been consistently laid down;

(3)   The design must be looked at as a whole, the question being whether an article made according to the design under consideration is substantially similar in appearance to an article made according to the alleged anticipation;

(4)   The test is not only to look at the two designs side by side, but also apart, a little distance away;

(5)   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. 

(6)   It is not permissible to make a mosaic of a number of prior documents for the purpose of attacking novelty.  If the attack on novelty is to succeed, the design must be disclosed in the single prior document. 

(7)   A design may well be novel although all the individual features are old at the date of registration, for the combination of two or more old and well-known designs will constitute novelty, if the effect, i.e., the appearance of the combination as a whole, is new.
(See Russell-Clarke and Howe on Industrial Designs 9^th Ed (2016) at paragraphs 3 – 124, 146, 151 – 152)

26.  In Samule Heath Son & Rollason [1898] AC 499, at 503, Lord Herschell said:

“ Of course in the present day it is very difficult to register any design that does not contain in it something which has been done before. Very often a very successful design may be one in which the difference from previous designs can on analysis be shown to be very slight, where nevertheless the result is to make the one so much more pleasing than the other that it is a successful design. Whilst on the one hand we certainly ought not to give protection to a design in which the variations are trivial and unimportant so that it is substantially the same design as one already registered or known, on the other hand we ought not to refuse it where the design is practically a new one which may be more attractive.”

27.  In Gaskell & Chambers Ltd v Measure Master Ltd [1993] RPC 76 at 79, Aldous J said:

“ The decision whether the registered design and the designs of the alleged infringements are substantially different is for the court and cannot be delegated to the opinions of the witnesses. It must be decided on a comparison of the features which appeal to, and are judged by, the eye. To do this, the court must adopt the mantle of a customer who is interested in the design of the articles in question as it is the eye of such an interested person, the interested addressee, which is relevant. To adopt the mantle it is often helpful to look at what was available before the priority date of the registered design as the eye of the interested addressee could be drawn to details if the design of the registered design only differs from the prior art by such details. However, where a design differs radically from previous designs then the interested addressee’s eye would be more likely to concentrate on and he would be more likely to remember the general form of the new design rather than the details.

It is settled law that the comparison must be made between the registered design and the alleged infringement side by side and also upon an assumption of “now and later”, namely upon the assumption that the two designs are compared side by side and thereafter the interested addressee goes away and comes back later to the alleged infringements. It is in that way that the court can conclude which features of the design would in reality appeal to and be noticed by the eye and then decide whether the designs are or are not substantially different.”

(Emphasis added.)

28.  In Household Articles Ltd’s Registered Design [1998] FSR 676 at p 683, paragraph 19, Laddie J said:

“ 19. Novelty of a registered design is to be assessed by the court as if through the eye of the customer for or trader in the relevant goods. Evidence from experts may sometimes assist the court to understand the designs but the court does not delegate the task of assessing novelty to the experts. In some respects the experts are poorly equipped for that task. Their training is likely to provide them with a much more profound appreciation of the similarities and differences between designs than customers or members of the trade would have and they are likely to be less impressed by designs containing many features which individually they have seen before.” (Emphasis added.)

29.  In Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2008] FSR 8, at paragraph 3, Jacob LJ said:

“ The most important things in a case about registered designs are:

(1) The registered design;

(2) The accused object; and

(3) The prior art.

And the most important thing about each of these is what they look like.

30.  At paragraph 27, the learned judge further said:

“ [t]he point of protecting a design is to protect that design as a design. So what matters is the overall impression created by it: will the user buy it, consider it or appreciate it for its individual design.”

31.  In Valor Heating Co Ltd v Main Gas Appliances Ltd [1972] FSR 497 at p 502B-C, Whitford J said:

“ From that time onwards a good deal of play has been made in a great many cases on “imperfect recollection”. It is quite obvious that it may be very easy to take it too far, but the cases which were cited to me by counsel for Valor, Wallpaper Manufacturers Ltd. v. Derby Paper Staining Co. (1925) 42 R.P.C. 443, the relevant passage being at page 449, Watson (R.B.) & Co. Ltd. v. Smith Bros. (Wirewares) Ltd [1963] R.P.C. 147, the relevant passage being at page 153, and Dunlop Rubber Co v. Golf Ball Developments Ltd. (1931) 48 R.P.C. 268, the relevant passage being at page 281, do I think establish this, that quite plainly in the past in considering registered designs this court has taken the view that you must consider infringement not merely upon the basis of a side by side comparison, but also upon the basis of having had a look at the registered design, then having gone away and come back and perhaps been put in a position of deciding whether some other article is the one you originally saw.”

32.  In Russell-Clarke and Howe on Industrial Design 9^th Ed (2016), the learned authors at paragraphs 3-152 and 3-153 stated that:

“ The test is not only to look at the two design side by side, but also apart, and a little distance way. 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….

Although the words “substantial” and “substantially similar” are used in some of the judicial decisions referred to above, it should be noted that the Act uses the words “immaterial details” in the test of novelty, and a different phraseology, “not substantially different”, in the test of infringement. Are these two tests meant to be the same or different? If they are different, which is wider? Is it possible for a prior art design to be far enough away from the registration that it differs in more than “immaterial details”, but still be close enough that it is “not substantially different”, so that continued production of a prior art design could infringe a later registration? There are strong policy reasons for believing that this cannot be intended, since the purpose of the test of novelty is to permit the public to continue to use prior published designs without interference from a later monopoly. In Valor Heating Co Ltd v Main Gas Appliances Ltd, Whitford J considered that, despite the difference in wording, “by and large the test must be the same.”

33.  At paragraph 2-150 of Russell-Clarke and Howe on Industrial Design 9^th Ed (2016), the learned authors also stated:

“ Although the task of the court, of necessity, is to go through a verbalised list of features that are similar between designs, in the end the exercise is a visual one. What matters is the overall impression left by the designs in question on the informed user, not a verbalized list of features. Thus, having reviewed features which are similar or different between the two designs and given appropriate weight to each feature in the light of the design corpus and features which are excluded from consideration because they are functional, the court must step back and assess whether they collectively do or do not create the same overall impression on the informed user. It is possible for a piece of prior art to be relevant to the question of validity but not sufficiently well known to be part of the design corpus for this overall assessment.”

34.  In Household Articles Ltd’s Registered Design (supra), Laddie J, at p 683, paragraph 18 said:

“ 18. One of the difficulties in any registered design case is to explain in words why the court has come to the conclusion it has. Registered designs are concerned with what appeals to the eye. A design may be valid over prior art even though individual features are very similar. To the eye the impact of small differences may be considerable. Conversely differences may be substantial but the overall visual impact may be very similar. Language is not well suited to explaining why in each case.”

Comparison exercise

35.  With the benefit of the above legal principles, in particular, the helpful guidance given by Laddie J in Household Articles Ltd’s Registered (supra) and applying the test of not only looking at the two designs side by side, but also apart, and a little distance way, I compare the Design and the European Registered Design, the Japanese Registered Design and the PRC Registered Design in the Annexure to this Decision.  It contains 12 dimensions of the Design in comparison to the other registered designs. 

36.  I come to the view that the overall visual impact of the Design and the three other registered designs is very similar if not indeed identical.  The Plaintiff’s statement of novelty reads: “The features of the design for which novelty is claimed are in the shape, configuration, pattern and ornament of the article as shown in the representations.” However, I do not consider the claimed novelty to be substantial, having regard to the nature of baby strollers and the three prior registrations.  They look strikingly similar to me. 

37.  Miss Ma, for the Plaintiff, submitted that there are a number of differences between the Design and the other three prior registered designs, I should address them one by one below, but overall I consider all of them to be immaterial differences. 

38.  First, Miss Ma submitted that the canopy in the Design consists of three parts, but the European Registered Design and the Japanese Registered Design consist of two parts only.  Mr Wong, for the Defendant, disagreed and submitted that if the canopy shown in the European Registered Design and the Japanese Registered Design consists of two parts only as alleged, one would be able to see through from the back of the baby stroller. 

39.  I do not need to decide on this dispute as I am of the view that the canopy is foldable in any event.  Whether it consists of two parts, three parts or even four parts, applying the eye appeal test, and bearing in mind the imperfect recollection element, I do not see that whether the canopy consists of two parts or three parts is material as far as eye appeal is concerned.  This is particularly so given that the position of the rear part of the canopy depends on whether one has attached firmly the rear part of the canopy to the back of the seat.

40.  Secondly, Miss Ma for the Plaintiff, submitted that the handrails of the Design are flat blade-shaped.  First, I must admit that the difference in the handrails, if any, is hardly noticeable.  Applying the doctrine of “imperfect recollection”, I can hardly see any difference.  I refer to the comparison of the left side elevational view between the Design and the European Registered Design in the Annexure.

41.  Mr Wong, for the Defendant, also submitted that the handrails are solely dictated by function and the average consumer will not buy a stroller because of the design of the handrails.  There is some force in this submission but it is neither here nor there.  The key issue is that this court cannot spot any material differences in the handrails. 

42.  Thirdly, Miss Ma, for the Plaintiff, submitted that there are no holes between the canopy and the seat and no holes between the handrails and the seat in the European Registered Design.  But it appears to me that in the European and the Japanese Registered Design they also have the same holes as well.  Miss Ma then submitted that there are differences in the size of the holes.  If there were differences which I cannot spot, I am of the view that the same does not have any impact on the overall eye appeal.  I agree that the holes themselves cannot possibly have “eye appeal” unless they are very special holes and there is no evidence to suggest that the so-called holes would “seize the attention of a potential customer because of their appearance is appealing”.  See Laddie, Prescott and Vitoria, The Modern Law of Copyright and Designs 4^th Ed (2011), Vol 2 at paragraph 54 – 104.

43.  Fourthly, Miss Ma, for the Plaintiff, submitted that from the representation of the European Registered Design, the baby stroller does not appear to have seat belts but the Design does have seat belts.  I doubt very much baby strollers would have no seat belts.  But in any event, I agree with Mr Wong’s submission that the seat belts are solely dictated by function, and there is no evidence to suggest that the seat belts would seize the attention of a potential customers and it cannot possibly constitute a design under Section 5 of the Ordinance. 

44.  Fifthly, Miss Ma, for the Plaintiff, submitted that the bottom view of the Design and the European Registered Design are different.  However, it is difficult to see how the bottom part of the baby stroller can seize the attention of a potential customer because its appearance is appealing.  In any event, I do not find anything eye appealing about the bottom of the Design. 

45.  As the European Registered Design and the Japanese Registered Design are almost identical and the differences relied upon by the Plaintiff are the same, no separate submissions were made in respect of those differences.  In any event, I am of the view that the differences advanced by the Plaintiff are all immaterial. 

46.  Insofar as the PRC Registered Design is concerned, an additional difference relied upon by the Plaintiff is the presence of a “tail” underneath the canopy.  I agree with Mr Wong for the Defendant that this is likely to be a string attached somewhere for functional purposes and cannot be a design as such. 

47.  Miss Ma, for the Plaintiff, also submitted that the slope of the seat is not the same as that of the frame and the back of the seat is not positioned at the same level as the frame and the back of the seat appears to be so loosely attached to the frame only and is positioned well beyond the frame (see left side elevational view).  I agree that these differences are hardly noticeable and are likely caused by the adjustment of the seat or the back of the seat, which is a common feature in all baby strollers.

48.  All in all, I do not find the differences relied upon by the Plaintiff to be material.  They are all, in my view, immaterial differences. 

Disposition

49.  For all the reasons stated above, I make an order in terms of paragraphs 1 and 2 of the Defendant’s Summons dated 30 March 2017 with a costs order nisi that the Plaintiff do pay to the Defendant the costs of and incidental to this action, including the costs of and incidental to this application, on a party to party basis, to be taxed, if not agreed.  Unless parties apply to vary the costs order nisi within 14 days from the date of this decision, the same should be made absolute after the lapse of the 14-days period. 

50.  Finally, it remains for me to thank Mr Wong for the Defendant and Miss Ma for the Defendant for their able and helpful assistance rendered to this court.

Annexure