XCHRX TITAN LTD. v. DENG ZHISHUN

1999, MP No. 4804

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO. 4804 OF 1999

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J U D G M E N T

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1. There is an application by way of Originating Summons under s.45 of the Registered Designs Ordinance for an order that the registration of the Defendant's design should be revoked on the ground that at the time of its registration in April 1999, the design was not new. There is also a claim for relevant directions for the revocation of the design, for damages and further or other relief.

2. Today is the first hearing of that Originating Summons and a notice of appointment together with the Originating Summons and the affidavit in support of it have been served on the Defendant in the following manner. First of all, the documents had been served at Deacons' office. Deacons' address was the address designated for service of documents under s.12 of the Registered Designs Ordinance. Indeed, prior to that the Plaintiff's solicitors have also been in correspondence with Deacons in relation to this matter. Apart from service of the relevant documents on Deacons, the papers had also been sent to the Defendant at his address on the Mainland.

3. I would note that procedurally there are no specific rules in the Rules of High Court in relation to proceedings under the Registered Designs Ordinance. Although I note that no translation of the documents had been provided to the Defendant, I have taken into account the fact that the Plaintiff's solicitors had had correspondence with Deacons before the start of proceedings, and there is also the fact that part of the Originating Summons was in Chinese.

4. Therefore, I find that there has been sufficient service of these proceedings on the Defendant although neither Deacons nor the Defendant has appeared today.

5. Furthermore, it is quite clear under O.28, r.3 that although most originating summonses are not dealt with at the first hearing, the rules do allow originating summons matters to be dealt with at the first hearing if the facts are sufficiently clear and liability is established. In the present case, I find that liability has been established under s.45 of Registered Designs Ordinance.

6. Registration of a design may be revoked on the ground that it was not new. I have been referred to the evidence which shows that in September 1998, Mr. Chan Chung Hung had registered his design for a holder for clothes hangers. It has been shown to me. I have also looked at his Certificate of Registration of Design which has been exhibited to the affirmation of Mr. Birt. I have also examined the Defendant's registered design which was registered in April 1999 and it does bear a striking resemblance (looking at the article as a whole) to Mr. Chan's registered design.

7. I have taken into account the fact that there is a distinction between the two, in that two out of the three places where poles are meant to be placed are closed in Mr. Chan's design, but they are all open in the Defendant's design. However, I find that that is not a substantial difference, because one has to look at the article as a whole, and as a whole, it would appear quite clear that they are substantially similar.

8. Accordingly, I would give an order in terms of the Originating Summons with costs to the Plaintiff.