PAN CHUNG PAT WO TONG (HONG KONG) LTD v. LAW YAN WAI t/a SINGAPORE MEDICINE COMPANY

CACV 239/2013

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF APPEAL

CIVIL APPEAL NO 239 OF 2013

(ON APPEAL FROM HCA NO 1719 of 2010)

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J U D G M E N T

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Hon Poon J (giving the Judgment of the Court) :

A. INTRODUCTION

1.   At the trial below, Recorder Ambrose Ho, SC, made a consent order dated 10 May 2013 (“the Consent Order”) :

“ (1) A permanent injunction be granted to restrain the Defendant, whether acting by himself, his servants, partners, employees, agents or any of them or otherwise howsoever, from passing off, threatening to pass off, and/or causing, enabling and/or assisting others to pass off in Hong Kong products, not being products of the Plaintiff, as and for the products of the Plaintiff and/or as products licensed and/or endorsed by the Plaintiff and/or associated with the Plaintiff:-

(a) by the use of any of the marks ‘八和堂’, ‘班中八和堂’, ‘神效華陀油’, ‘救急華陀油’ and the Plaintiff’s device mark ‘關陀像’ [a copy of the said device is attached hereto in Annex A for reference], or any marks confusingly similar thereto;

(b) by the use of any of the [Plaintiff’s] get-ups as shown in Annex B attached hereto, or any get-up confusingly similar thereto; and/or

(c) by any other means.

(2) A permanent injunction is granted to restrain the Defendant, whether acting by himself, his servants, partners, employees, agents or any of them or otherwise howsoever, from infringing the Plaintiff’s Registered Trade Mark No 199708190.

(3) The Defendant’s Trade Mark Registration No 300191961 be declared invalid.”

2.   Later by a judgment handed down on 17 October 2013, the learned Recorder granted, after hearing arguments (“the Injunction”) :

“ (1) A permanent injunction to restrain the Defendant, whether acting by himself, his servants, partners, employees, agents or any of them or otherwise howsoever, from producing, marketing, selling, offering and/or exposing for sale, promoting, exporting and/or dealing in or with any products under or by reference to:-

(a) any of the marks ‘百和堂’, ‘神效華陀油’ and ‘救急華陀油’ or any marks confusingly similar thereto, including for the avoidance of doubt the mark ‘星洲百和堂’ or variations of the mark ‘百和堂’ by means only of the addition of words of a geographical description;

…”

3.   The defendant appealed, seeking to delete the words italicized above (“the Words”) from the Injunction only.  It did not seek to disturb the remainder of the Injunction or other consequential reliefs granted by the Recorder.

4.   On 18 November 2014, after hearing counsel, we dismissed the appeal but, with a view to providing clarity, varied the Injunction by adding the words underlined below :

“ (1) A permanent injunction to restrain the Defendant, whether acting by himself, his servants, partners, employees, agents or any of them or otherwise howsoever, from producing, marketing, selling, offering and/or exposing for sale, promoting, exporting and/or dealing in or with any products Chinese medicinal products under or by reference to:-

(a) any of the marks ‘百和堂’, ‘神效華陀油’ and ‘救急華陀油’ or any marks confusingly similar thereto, including for the avoidance of doubt the mark ‘星洲百和堂’ or variations of the mark ‘百和堂’ by means only of the addition of words of a geographical description, without clearly distinguishing such goods from those of the Plaintiffs;

…”

We will refer to it as the Revised Injunction below.

5.   We now hand down the reasons for our judgment. We will also dispose of the question of costs, which we reserved at the end of the hearing.

B. BACKGROUND

6.   The background facts had been admirably summarized by the Recorder, which we would gratefully adopt and set out below :

“ 2. The Plaintiff’s case is that since sometime in the 1960s, its predecessor had been marketing a Chinese medicated oil in Hong Kong by reference to the following marks : -

(a) the Chinese mark ‘八和堂’;

(b) the Chinese mark ‘班中八和堂’;

(c) the Chinese mark ‘神效華陀油’ or ‘救急華陀油’; and

(d) the device mark known as ‘關陀像’, a copy of which is attached hereto as Appendix 1.

3. Since about 1993, the Plaintiff took over the business of its predecessor and has continued to market the medicated oil 華陀油 (‘Wah Tor Yeow (Oil)’) by reference to the abovementioned marks.  I will refer to the marks as ‘the Plaintiff’s Marks’.

4. In addition, the Plaintiff is the proprietor of a number of other registered trade marks for medicinal products in class 5 in Hong Kong :

(a) the mark ‘劉耀明監製 & device’ (registered in 1962 under no 19640451, and assigned to the Plaintiff in 2002);

(b) the mark ‘關陀像’ (registered in 1995 under no 199708190, and assigned to the Plaintiff in 2002);

(c) the mark ‘班中八和堂’ (registered in 2001 under no 200215500);

(d) the mark ‘班中八和堂華陀’ (registered in 2001 under no 200500384);

(e) the mark ‘關陀像’ (registered in 2002 under no 200304185);

(f) the mark ‘八和堂 & device’ (registered in 2004 under no 300294840);

(g) the mark ‘關陀像’ (registered in 2008 under no 301173131); and

(h) the mark ‘八和堂’ (registered in 2009 under no 301287540).

5. The packaging of the Plaintiff’s medicated oil 華陀油 (Wah Tor Yeow (Oil)) has always been of a distinctive design and colour scheme which incorporates the Plaintiff’s Marks.  It also contains wordings and other drawings of a distinctive character.  I will refer to the medicated oil produced by the Plaintiff (and its predecessor) as ‘the Plaintiff’s Product’.

6. Sometime towards the end of 2004, the Plaintiff became aware that a medicated oil calling itself also ‘神效華陀油’ but apparently produced by one ‘星洲百和堂’ was being sold in the market.  This other product was not produced by the Plaintiff but was later discovered to be a product of the Defendant.

7. The packaging of the Defendant’s product, its design and colour scheme was strikingly similar to the Plaintiff’s.  Not only had it adopted the name ‘神效華陀油’ with an image that closely resembled the Plaintiff’s關陀像, the Defendant’s label ‘百和堂’ also sounded very similar to the Plaintiff’s ‘八和堂’.  Also, the label ‘百和堂’ was positioned, like the Plaintiff’s, prominently across the top of the front panel of the packaging box.  It further transpired that the Defendant had caused the mark ‘百和堂’ to be registered in class 5 in April 2004 (registration no 300191961).

8. In early 2006, the Plaintiff received more complaints from its customers who had purchased counterfeits of the Plaintiff’s Product.  The Plaintiff therefore decided to revise the design on the packaging of the Wah Tor Yeow (Oil) in mid-2006.  The new design still incorporates the Plaintiff’s Marks and retains essentially the same distinctive features.  (I will refer to the packaging used before 2006 and that after 2006 collectively as ‘the Plaintiff’s Get-Ups’).

9. On the other hand, the Defendant, carrying on business under the trade name of Singapore Medicine Co (星洲藥業), had been selling his products in at least three different packagings, that is :

(a) two versions of ‘神效華陀油’ under the label ‘百和堂’, the label ‘百和堂’ being flanked by the words ‘星’ and ‘洲’ on each side respectively;

(b) another version called ‘星洲華陀油’ under the label ‘百和堂’, which was flanked by the words ‘神’ and ‘效’ on each side.

10.   The overall design and packaging on all three versions of the Defendant’s product is clearly very similar to that of the Plaintiff’s Get-ups.

11.   The Plaintiff commenced the present Action in November 2010, alleging passing off and infringement of its trade marks.  The Plaintiff also applies to invalidate the Defendant’s registered mark.”

C.   PROCEEDINGS BELOW

7.   The trial commenced on 6 May 2013.  Shortly after the plaintiff’s counsel, Mr Wong, began his opening, the defendant, through his counsel Mr Lau, indicated to the court that he would not contest a number of issues, which were then formulated on the following day and recorded by the Recorder.[1] The trial then went on with the plaintiff’s director giving oral evidence.  On 8 May, when it was supposedly his turn to give evidence, the defendant decided not to do so.  Nor did he call any witness.  The Recorder then directed the parties to file written closing submissions.

8.   However, instead of filing his written submissions, Mr Lau sent the court a letter dated 9 May, indicating that the defendant would surrender to judgment in open court on the following day.  When the trial resumed on 10 May, Mr Lau expressly told the court that the defendant would surrender “to the statement of claim’s prayer”.[2]

9.   Mr Wong produced to the court a draft order setting out the reliefs that the plaintiff sought.  The draft order contained 11 paragraphs.  Paragraphs 1 to 3 were injunctions.  Paragraph 4 was a declaration.  Paragraphs 5 to 11 were consequential reliefs including delivery up, disclosure, taking of account and payment of sums after taking of the account.

10.   The defendant agreed to the injunctions in paragraphs 1 and 3 and the declaration in paragraph 4.  They became paragraphs 1 to 3 of the Consent Order.

11.   The defendant however disputed paragraph 2 of the draft order, which read :

“ (2) Without prejudice to the generality of Paragraph (1) hereof, a permanent injunction to restrain the Defendant, whether acting by himself, his servants, partners, employees, agents or any of them or otherwise howsoever, from producing, marketing, selling, offering and/or exposing for sale, promoting, exporting and/or dealing in or with any products under or by reference to:-

(a) any of the marks ‘百和堂’, ‘神效華陀油’ and ‘救急華陀油’ or any marks confusingly similar thereto, including any marks which incorporate the mark ‘百和堂’;

(b) the Defendant’s device mark ‘關陀像’ [ie Appendix 3 hereto] or any device confusingly similar thereto; and/or

(c) any of the Defendant’s get-ups as identified as Exhibits P3, P4 and P5, or any get-up confusingly similar thereto”.

12.   What the defendant disputed concerned the words highlighted only.  It did not take issue on other parts of paragraph 2.

13.   Mr Lau took a number of objections.

14.   He first argued that the inclusion of the disputed words would have the effect of unjustifiably enlarging the scope of the reliefs sought in the statement of claim.  There was no plea that the defendant’s mark “星洲百和堂” is confusingly or deceptively similar to the plaintiff’s marks of “八和堂” or “班中八和堂”.

15.   He next argued that the plaintiff’s evidence concerned only the confusion caused by the mark “百和堂” and not by “星洲百和堂”.

16.   He also referred to the defendant’s trademark registrations.  Noting that such registrations were not sought to be invalidated, Mr Lau argued that were the injunction to include the disputed words, the defendant would be unjustifiably restrained from dealing in products bearing its legitimate marks.  As a fallback, Mr Lau contended for an express proviso that the mark “星洲百和堂” should be excepted from the operation of the injunction should the court allow the disputed words to be incorporated.

17.   As to paragraphs 5 to 11 of the draft order, since they were referable to the “Infringing Products” as defined in paragraph 2, the defendant’s objection really harked back to its objections to that paragraph.

18.   After hearing arguments, the Recorder ruled against the defendant’s objections.

19.   He first rejected Mr Lau’s objection based on pleadings.  He ruled, essentially, that on a fair reading of the statement of claim as illustrated with the aid of the photograph bearing the defendant’s mark attached to the statement of claim, there should be no doubt that among the infringements complained of, the plaintiff’s objection included not only the defendant’s use of the mark “百和堂” but also “星洲百和堂” on the infringing products.[3]

20.   The Recorder then dealt with Mr Wong’s other objections thus :

“ 28. The Consent Order provided that the Defendant’s mark ‘百和堂’ is to be declared invalid.  I am satisfied, also, that the Defendant should be restrained from using the mark ‘百和堂’ or any marks confusingly similar to ‘八和堂’ or ‘百和堂’.  Indeed, there is no dispute as to the first part of sub-paragraph 2(a) of the draft order.

29. Counsel for the Plaintiff contended that the words ‘星洲’ (as for example, ‘香港’ or ‘馬拉’) was merely geographically descriptive and the addition of such words to the mark ‘百和堂’ did not and will not make the mark any less confusing or misleading to the public when passed off as the Plaintiff’s Marks.  Counsel referred to the case Brestian v Try [1957] RPC 443, a decision of Danckwerts J which was upheld on appeal, [1958] RPC 161.  That case concerned businesses carried on by both parties as ladies hairdressers.  The plaintiff traded under the name ‘Charles of London’ with branches in London, Wembley and Brighton, while the Defendant used the same name for his business in Tunbridge Wells with the addition of the word ‘Coiffeur’ in a not very prominent manner.  The court granted an injunction to restrain the Defendant ‘from carrying on any business under any name containing ‘Charles of London’ or any words likely to be confused therewith …..’  (emphasis added)

30. Counsel further contended that the insertion of the disputed phrase in the present case is necessary to give full effect to the injunction.  Otherwise, the Plaintiff may be forced to commence separate action to restrain the Defendant from using other variations of ‘百和堂’ whenever they appear in the market.

31. I see much force in the Plaintiff’s argument.  Indeed, as it was remarked by the author of The Law of Passing-Off by Wadlow, 4^th edition, at §10-036 :

‘The form of injunction granted in a passing-off action depends on the circumstances of the case, and is necessarily to some extent a compromise between protecting the rights of the claimant and allowing the defendant to trade legitimately. On a strict analysis, the injunction granted sometimes covers acts which might not be passing-off at all, but this may be inevitable if the claimant is to be given adequate protection. It may be impossible to produce a form of words which is simple and workable but still precisely tailored to what the claimant is entitled to restrain.’

32. Considering the circumstances of the present case, I am satisfied that mere addition of words of a geographical description on the misleading mark ‘百和堂’ is not likely to render the use of the mark less confusing or deceptive.  Nor, indeed, would it have the effect of lessening the confusion by adding words such as ‘神效’ as in Exhibit P5, which are themselves words closely associated with the Plaintiff’s Marks.

33. It is impossible to set out exhaustively all the conceivable permutations in the injunction. The prohibition against the use of ‘the mark ‘百和堂’ and any marks confusingly similar thereto’ should obviously remain the operative part of the injunction.  But in light of the discussion above, I think it is right that the order should provide expressly that the injunction prohibits also variations of the mark by mere addition of words of a geographical description only.

34. I am mindful that it is not possible to pre-judge whether any other permutations would render the use of the mark confusingly similar to that of ‘八和堂’ or ‘百和堂’.  They may have to be dealt with as and when the occasion calls for a determination.  But bearing in mind that while the injunction should afford adequate protection to the Plaintiff it should not be extravagant or excessive.  I think the right balance will be achieved by modifying the disputed phrase so that paragraph 2(a) will be read :

‘(a)  any of the marks ‘百和堂’, ‘神效華陀油’ and ‘救急華陀油’ or any marks confusingly similar thereto, including for the avoidance of doubt the mark ‘星洲百和堂’ or variations of the mark ‘百和堂’ by means only of the addition of words of a geographical description;’

35. I take note that my ruling will have the effect of preventing the Defendant from using the several versions of the marks registered with the words ‘星洲百和堂’.  However, as counsel for the Plaintiff has pointed out, such registrations should not affect the power of the Court to grant redress against passing off: Section 10(3) of the Trade Marks Ordinance.”

21.   He then granted the Injunction and the consequential reliefs as prayed for in the remainder of the draft order.

D.   HEARING BEFORE US

22.   At the outset of the hearing before us, we raised with counsel on our own motion a point which was neither raised before the Recorder nor in the notice of appeal.  We were concerned that in its then current form, the Injunction might give rise to a perception that it was absolute in the sense that it covered any product sold or traded by the defendant.  In this regard, we drew counsel’s attention to Kerly’s Law of Trade Marks and Trade Names, 15^th Edition, §§20-066 to 20-071; and Atkin’s Encyclopedia of Court Forms in Civil Proceedings, 2^nd Edition, Vol 38(2), 2012 Issue, §48 at pp 235-236, and the relevant sample court forms.

23.   Ms Tam, SC, for the plaintiff, very fairly, made it clear to us that it was never the plaintiff’s intention to obtain an absolute injunction.  The plaintiff’s intention is and was always that the Injunction should be read subject to paragraph 1 of the Consent Order.  This is evident by the inclusion of the words “without prejudice to the generality of [paragraph 1 of the Consent Order]” in the draft order placed before the Recorder.  In other words, it is and was always a qualified injunction.  Ms Tam agreed with us that in the interest of clarity the Injunction should be modified accordingly.

24.   Mr Yan, SC, for the defendant, was not content with the modification that we had indicated.  He pressed on with his arguments as to why the Words should be deleted from the Injunction.  For reasons given below, we rejected his submissions.

25.   At the end of the hearing, Ms Tam produced a draft variation to the Injunction for our consideration.  Based on her draft, we amended the Injunction in terms of the Revised Injunction.  We now explain why.

26.   The action for passing off does not confer monopoly rights in a name, mark or get-up.  It prohibits the defendant’s use of a particular name, mark or get-up which amounts to a misrepresentation calculated to cause damage to the business or goodwill of the plaintiff.  Liability depends on whether in all the circumstances of the case the defendant’s conduct is calculated to deceive.  See generally, Wadlow on The Law of Passing-Off, 4^th Edition, §§5-001 to 5-005 at pp 295-298.  As Lord Oliver explained in Reckitt & Colman Products Ltd v Borden Inc & Others [1990] RPC 341, at p 406 :

“ The law of passing off can be summarised in one short general proposition – no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying ‘get-up’ (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff’s goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff’s identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the pro-prietor of the brand name. Thirdly, he must demonstrate that he suffers or, in a quia timet action that he is likely to suffer, damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the plaintiff.”

27.   Bearing in mind that the mischief targeted by the law of passing off is the defendant’s misrepresentation complained of, while the permanent injunction granted must give the plaintiff adequate protection, it should not be couched in such terms which would prevent the defendant from otherwise trading legitimately.  This gives rise to a need for carefully balancing the competing interests in drafting the injunction.  As observed in Waldow, supra, at §10-036 :

“The form of injunction granted in a passing-off action depends on the circumstances of the case, and is necessarily to some extent a compromise between protecting the rights of the claimant and allowing the defendant to trade legitimately. On a strict analysis, the injunction granted sometimes covers acts which might not be passing-off at all, but this may be inevitable if the claimant is to be given adequate protection. It may be impossible to produce a form of words which is simple and workable but still precisely tailored to what the claimant is entitled to restrain. If the choice is between giving the claimant rather more than he is entitled to or rather less, the court at this stage of the action is likely to be more sympathetic towards the claimant.”

28.   In practice, when striking the balance, qualifying words are normally deployed in defining the scope of the injunction. Thus it is stated in Atkin’s Court Forms, supra, at §48 :

“ In passing off cases in particular, the claimant is not necessarily entitled to restrain the defendant absolutely from any acts whatsoever, and may only be entitled to restrain the defendant from doing certain acts relating to the use of words (or as the case may be), with a qualification, for example, ‘so as to be likely to deceive or cause confusion on the part of the public’, or ‘so as to deceive’, or ‘in such a way as to lead to the belief that the defendant’s goods or services are those of the claimant’, or ‘without clearly distinguishing his goods or services from those of the claimant’. But care should be taken in framing the qualification so that it makes sense.

Injunctions so qualified invite the defendant to continue to use in the specified manner if it can safely do so, but how far the defendant may go must be a question of fact in each case. The court will not normally assist a defendant on this point. Whether qualified or unqualified, the value to the claimant of an injunction which refers only to certain prohibited acts is manifest, and all claimants would do well to include such an injunction in the ones prayed for. In interim proceedings an injunction in this form is generally all that the claimant is entitled to.

The simple form of injunction merely prohibiting certain acts seldom contents a claimant because it is too specific.  Having proved that the defendant has committed a specific violation of its rights, the claimant usually wants, and the courts are usually prepared to grant (at least in final proceedings), an injunction in terms wider than the specific acts would by themselves warrant.  Thus, for example, a defendant who has supplied a camera marked ‘Kodak’ may be restrained not only from supplying, but also from advertising.  The injunction may refer not only to cameras, but also to other photographic materials and it may refer not only to goods marked ‘Kodak’, but also to goods sold in connection with that name.  The claimant would, of course, like to restrain the defendant from using in the prohibited way not only ‘Kodak’ but any mark resembling ‘Kodak’ as well.  The courts, however, usually insist that this generality be circumscribed.  For example, by a qualification such as ‘so closely resembling ‘Kodak’ as to be likely to deceive or cause confusion’.  It may, on the other hand, be circumscribed by reference to the legal right protected.  For example, ‘so closely resembling ‘Kodak’ as to be calculated to infringe the claimant’s trade mark’ or ‘to pass off the defendant’s goods as and for the goods of the claimant’.”

29.   Similar remarks are made in Kerly’s Law of Trade Marks and Trade Names, supra, at §§20-069 and 20-071 :

“ In a case where it may be possible for the defendant to use the mark or name in question without passing off, the injunction is granted in qualified form.

Where the mark or name is one in which the claimant cannot claim an exclusive right, but which to many people indicates his goods or business, it is proper to qualify the injunction against using it by such words as ‘without clearly’ (or ‘sufficiently’) distinguishing his goods from the claimant’s. In cases where use of the mark or name without qualification need not be deceptive, an even weaker form may be employed : the prohibition being qualified by the addition ‘so as to represent’ or ‘so as to lead to the belief’ that the defendant’s goods or business are the claimant’s….

The qualification ‘without clearly distinguishing’ is precise enough, and the order should not go into further detail.  ‘It has been said many times that it is no part of the function of this court to examine imaginary cases of what the defendant could or could not do under this form of injunction.  The best guide, if he is an honest man, is his own conscience; and it is certainly not the business of this court to give him instructions or hints as to how near the wind he can sail.”

30.  Here, the plaintiff’s avowed intention is that the Injunction is subject to paragraph 1 of the Consent Order.  Undoubtedly, it was on this basis that the Recorder granted the Injunction.  We think in the interest of clarity the qualification should be clearly incorporated.  We therefore varied the Injunction by adding the qualifying words as we did.  By so doing, we are satisfied that the balance is properly struck.  The Revised Injunction protects the plaintiff’s rights adequately on the one hand and allows the defendant to trade legitimately on the other.

31.   We now turn to Mr Yan’s arguments.

32.   Stripped of its eloquence, Mr Yan’s arguments were in substance a repetition of Mr Lau’s submissions below though presented in a different order.  They all boil down to one single point, namely, the Injunction should not cover the defendant’s mark “星洲百和堂”.  They can be disposed of shortly.

33.   Mr Yan first submitted that in considering whether the defendant’s use of the mark “星洲百和堂” would be objectionable, all the circumstances of such use had to be considered.  In adding the Words to the Injunction, the Recorder erred in effectively treating the plaintiff’s goodwill in the marks “八和堂” and “班中八和堂” as giving rise to monopoly rights or property in these marks, such that any use of “星洲百和堂” on any products would infringe upon such rights without the need to consider the circumstances of such use.  With respect, we disagree.

34.   The Injunction did not have the effect as contended by Mr Yan.  What it sought to enjoin is the use of the plaintiff’s marks or any marks confusingly similar.  Indeed, under paragraph 1 of the Consent Order, the defendant had already conceded to being restrained from committing passing-off by the use of any of the plaintiff’s marks or any mark confusingly similar.  And there can be no doubt whatsoever that the defendant’s mark “星洲百和堂”, if used without other features which would clearly distinguish the products of the defendant from those of the plaintiff, is confusingly similar to the plaintiff’s marks.

35.   Mr Yan next argued that the Recorder erred in accepting that the words “星洲” are geographically descriptive when he held that “the mere addition of words of a geographical description on the misleading mark ‘百和堂’ is not likely to render the use of the marks less confusing or descriptive.”[4]  Again we disagree.

36.   In our view, “星洲” is plainly a geographical description.  There is not a single iota of evidence to show that the defendant’ use of it has rendered its mark “星洲百和堂” distinctive of the defendant’s product or business.

37.   Mr Yan then took the pleading point as Mr Lau did before the Recorder.  This argument must fail because the plaintiff did rely on the defendant’s mark “星洲百和堂” and get-up, attached in Annex D to the statement of claim as part of the particulars of the defendant’s passing off.[5]

38.   Finally, Mr Yan argued that the Injunction might entitle the plaintiff to obtain an order invalidating the defendant’s other trademarks “星洲百和堂” and “星百和堂洲” under Trade Mark Registration No 301338381AA and No 301338381AB in respect of various goods in Class 5 including medicinal oil.  However, as rightly submitted by Ms Tam, the said trademark registrations were neither here nor there because it was no defence to the plaintiff’s claim for passing-off.  Whether the effect of the Injunction would enable the invalidation of those trademarks is irrelevant to the scope of the Injunction once passing-off is established.

39.   For the above reasons, we rejected Mr Yan’s arguments and dismissed the defendant’s appeal.

40.  Ms Tam asked for costs of the appeal.

41.   However, Mr Yan argued that either the defendant should have costs or there should be no order as to costs.  He submitted that the main thrust of the defendant’s appeal was to address its concern that the Injunction was unduly wide.  Although he failed in all his arguments, this Court did vary the Injunction to address the defendant’s concern.  So, Mr Yan reasoned, the defendant had been substantially successful in the appeal.

42.   In our view, had Mr Yan accepted the modification that we had indicated at the outset and had he not pressed on with his appeal, he might have stood a better chance in asking for costs.  But as it turned out, he did press on with his appeal.  Having failed in his appeal, we think costs should simply follow the event.

43.   We order the defendant to pay the plaintiff costs of the appeal, to be taxed if not agreed, with a certificate for two counsel.

44.   Finally, we would like to thank counsel for their able assistance.