WONG TO YICK WOOD LOCK OINTMENT LTD v. IMPERIAL CHARITY HALL MEDICINES LTD AND ANOTHER

HCIP 7/2021

[2021] HKCFI 1252

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

INTELLECTUAL PROPERTY PROCEEDINGS NO 7 OF 2021

(TRANSFERRED FROM ACTION NO 793 OF 2012)

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DECISION

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1.  In these proceedings[1], the plaintiff (“P”) claims against the 1^st and the 2^nd defendants (“D1” and “D2”, collectively “Ds”) for:

(1)  passing off; and

(2)  trade mark infringement under sections 18(3) and (4) of the Trade Marks Ordinance (“TMO”).

2.  By a summons filed on 18 December 2020 (“the O14 Summons”), P applies for summary judgment against Ds.  The summons is supported by the Affirmation of Tang Kwok Fai (who is P’s General Manager) filed on 18 December 2020.  No evidence in opposition has been filed by Ds.  In the circumstances, the matters deposed in Tang’s affirmation should be taken as undisputed.

BACKGROUND

3.  P was incorporated on 22 July 1988 to take over the business previously carried on and the goodwill previously built up and owned by Wong To Yick through his businesses under the trading names “中國跌打風濕醫館 (黃道益醫館)” and “China Medical Laboratory 中國醫館製藥廠” which were established in 1967 and in 1982 respectively.

4.  P was and is the manufacturer and distributor of a medicated balm or oil under and by reference to the name and/or mark “Wong To Yick Wood Lock Medicated Balm 黃道益活絡油” (“P’s Product”).

5.  According to the Re-Amended Defence filed by Ds on 30 April 2013:

(1)  D1 has been carrying on a business of selling Chinese medicinal oils or balm, beauty care and health care products at the retail level.

(2)  D2 is the sole director and shareholder of D1.

6.  Since 1986, P’s Product has been manufactured, marketed and sold under and by reference to the marks “黃道益” and/or “黃道益活絡油” (“P’s Marks”) in a distinctive get-up (“P’s Get-up”).  Although the get-up has been updated from time to time over the years, certain elements and features of the packaging remain unchanged.

7.  Throughout the years, P’s Marks and P’s Get-up have been extensively used and promoted in Hong Kong.  The sales revenue of P’s Product for the year ending 31 March 2016 was over HK$720,000,000.  P’s marketing efforts of the P’s Product included advertisements on/via (1) radio broadcasts and local newspapers; (2) bus, tram and MTR stations; (3) TV channels as well as (4) sponsoring a registered charity in Hong Kong “Caring for Children Foundation”.

8.  P is also the proprietor of 2 registered Trade Marks in class 5 (collectively “P’s Registered Trade Marks”):

Registration No.	Mark	Date of Registration
1995B09582		07-12-1991
300721764		14-09-2006

9.  It has been held that substantial goodwill subsists in the P’s “黃道益” Mark, P’s Registered Trade Marks, and the P’s Get-up.[2]

P’s CASE

10.  P claims that Ds have infringed P’s intellectual property rights in various aspects.

Passing-off and trademark infringement

11.  P’s case is that, prior to the issue of the writ of summons herein, Ds have sold and supplied medical oil under or by reference to the mark “金牌道益” (“the Infringing Mark”) and in a get-up which infringed P’s Registered Trade Marks and which were deceptively similar to P’s Marks and P’s Get-up amounting to passing off (“the Infringing Product”).

12.  P’s case is that each of the acts complained of against D1 was directed, authorised, counselled or procured to be done by D2 who renders himself joint and severally liable for the infringing acts of D1. Alternatively, Ds committed the acts complained of pursuant to a common design and each of them should be liable as joint-tortfeasors.

Intention to deceive

13.  P also claims that D1 and D2 have calculated and deliberately intended to deceive members of the public in Hong Kong, including visitors from Mainland China to believe that the Infringing Product is the product licensed and/or endorsed by and/or associated with P by reason of the following:

(1)  Given P’s extensive use and promotion of P’s Marks, and P’s Get-up over the years, Ds, who are in the same trade, must have been fully aware of P’s Product, P’s Marks and P’s Get-up.

(2)  The Infringing Mark is deceptively similar to P’s Marks and are used in a manner and context, on goods, and on packaging materials identical or closely similar to P’s Product.  Therefore, an inference ought to be drawn against Ds that the Infringing Mark must have been adopted by Ds with the intention to cause confusion, deceive and mislead members of the public who know of P’s Product by reference to P’s Marks.

(3)  The deliberate adoption of the Infringing Mark and a get-up which is so confusingly and deceptively similar to P’s Marks and P’s Get-up could not be a mere coincidence and could not have been coined without copying the latter.

Actual deception

14.  There have been instances of actual deception caused by the use of the Infringing Mark “金牌道益” as evidenced from copies of posts from internet forums and newspaper articles exhibited by P.

Related High Court Action

15.  The Infringing Product was at all material times manufactured and distributed by Wah Sing Pharmaceutical Limited which was one of the defendants in the HCA 1605/2011, who were sued by P for passing off and trade mark infringement.  Shortly before the commencement of the trial, the defendants in that action admitted liability and submitted to judgment for passing off and trade mark infringement.

Ds’ CASE

16.  In the Re-Amended Defence, Ds admitted that they have sold, supplied medical and/or displayed for sale oil or balm under or by reference to the marks “金牌道益” and/or “金牌道益活絡油”.  However, Ds deny passing off and trade mark infringement. Ds’ pleaded case is as follows:

(1)  Ds deny that the Infringing Product (including the get-up and the Infringing Mark thereof) are confusingly/deceptively similar to P’s Product, P’s Marks, P’s Get-up and P’s Registered Trade Marks; by reason of the differences therein.

(2)  Ds rely on a trademark registration of the mark “金牌道益”.

(3)  That “活絡油” is generic and P’s marks are devoid of distinctiveness.

(4)  There has been no instance of deception known to Ds.

(5)  The Infringing Product is “very well-known” in Hong Kong and in Mainland China.

17.  At the beginning, Ds were legally represented. However, by notice dated 22 July 2020, D2 gave notice to P that he intended to act in person in place of his former solicitors.  By D2’s letter to P’s solicitors dated 18 August 2020, D2 stated that he would not defend the action.  Pursuant to Master Ho’s Order dated 20 August 2020, D1’s former solicitors ceased to act for D1 in this action. 

PRINCIPLES - SUMMARY JUDGMENT

18.  The principles concerning summary judgment are trite.  In an application for summary judgment, if the plaintiff’s application is properly constituted, he is prima facie entitled to judgment unless the defendant shows cause to the contrary or the application is dismissed.  The burden shifts to the defendant to satisfy the court why judgment should not be given against him.  It is for the defendants to show that there is a triable issue or an arguable defence.  A mere general denial that the defendant is not liable will not suffice[3].

ANALYSIS

19.  For the reasons below, I am of the view that P has clearly shown a case that P is entitled to have judgment against Ds, and Ds have failed to show any reason why judgment should not be given to P.

Passing off

20.  The principles of passing off has been set out by the Court of Final Appeal in Re Ping An Securities Ltd.[4] In that case, Gault NPJ cited with approval the speech of Lord Oliver in Reckitt & Colman where his Lordship stated the trinity of passing off as:

“First, [the plaintiff] 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.

Second, [the plaintiff] 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 on 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 proprietor of the brand name.

Third, [the plaintiff] 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.” (Emphasis added)

21.  In Wong To Yick Wood Lock Ointment Limited v Sky Harvest Medicine Co Ltd[5], Wilson Chan J stated that:

“15. The assessment of the likelihood of confusion or deception in passing off and trade mark infringement is a matter for the court— Neutrogena Corp v Golden Ltd [1996] RPC 473, 482. Proof of actual confusion or deception is unnecessary if the sign is in the opinion of the court likely to deceive. If there is evidence of confusion or deception, this will afford very strong evidence that the resemblance between the mark and sign is so close as to be likely to confuse or deceive and may be decisive — Harrods Ltd v Harrodian School [1996] RPC 697, 716.

16. It is not necessary for a plaintiff to establish that the defendant consciously intended to deceive the public as a probable result of his conduct. Nevertheless, the question why the defendant chose to adopt a particular name or get-up is always highly relevant. If it is shown that the defendant deliberately sought to take benefit of the plaintiff ’s goodwill for himself, the court will not “be astute to say that he cannot succeed in doing that which he is straining every nerve to do” — Slazenger & Sons v Feltham & Co (1889) 6 RPC 531, 538.

17. In British Telecommunications Plc v One in a Million Ltd [1999] FSR 1, 18, it was held that a name can be an instrument of deception in 2 scenarios:

(1) A name which will, by reason of its similarity to the name of another, inherently lead to passing off; or

(2) If a name does not inherently lead to passing off, it does not follow that it is not an instrument of deception. In such instance, the court should consider the similarity of the names, the intention of the defendant, the type of trade and surrounding circumstances. If it be the intention of the defendant to appropriate the goodwill of another or enable others to do so, there is no reason why the court should not infer that it will happen, even if there is a possibility that such an appropriation would not take place.”

22.  In Wong To Yick Wood Lock Ointment Limited v Singapore Medicine Co (a firm) & Ors[6], Wilson Chan J said:

“65. In assessing a case of passing-off by imitation of get-up, one postulates that the average purchaser is neither the very careful nor the very careless buyer but an average purchaser, who has a general idea in his mind’s eye of what he means to get but not an exact and accurate representation of it. Nor will he necessarily have the advantage of seeing the two products side by side. Nor will he be alerted to single out the fine points of distinction or definition. Although the law of passing-off is not designed to grant monopolies in successful get-ups, the moment a party copies he is in danger and he escapes liability only if he makes it “perfectly clear” to the public that the articles which he is selling are not the other manufacturer’s, but his own articles, so that there is no probability of any ordinary purchaser being deceived – Blue Lion Manufacturing (Pty) Ltd v National Brands Ltd [2001] (3) SA 885 (SCA) at §§3 & 4.

66. Under the principle of imperfect recollection,

“the question is not whether if a person looking at the two trade marks side by side there would be a possibility of confusion; the question is whether the person who sees the proposed trade mark in the absence of the other trade mark, and in view only of his general recollection of what the nature of the other trade mark was, would be liable to be deceived and to think that the trade mark before him is the same as the other, of which he has a general recollection.” - Kerly’s Law of Trade Marks and Trade Names, 16^th ed, §20-207.

…

72. Where a trader, having knowledge of a particular market, borrows aspects of a competitor’s get-up, it is a reasonable inference that he believes there will be a market benefit in so doing.  The obvious benefit will be the attraction of custom which would have otherwise gone to the competitor.  It is an available inference that the trader considered that such borrowing was fitted for the purpose and therefore likely to deceive or confuse.  Such copying may well be of only part of the competitor’s get-up. – Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157 at §§117 & 121.” (Emphasis added)

23.  Unless the circumstances of a case suggest otherwise, the court is entitled to find, if passing-off is established, that the plaintiff has suffered some damage.[7]

24.  As set out in the above, the undisputed evidence shows that substantial goodwill subsists in (1) P’s Get-up; (2) P’s Marks and P’s Registered Trade Marks.

25.  The use of the Infringing Mark and the get-up of the Infringing Product by Ds constitute a misrepresentation which is likely to deceive members of the public into believing that the Infringing Product offered by Ds are the products of, or products associated with or authorised by P.  The likelihood of deception is plain and obvious.

(1)  The Infringing Mark and the get-up of the Infringing Product are deceptively and strikingly similar to P’s Get-up, P’s Marks and P’s Registered Trade Marks:

(a)  The entire colour scheme of P’s Product, namely an overall white background with a yellow colour fading off into white has been copied and adopted in the Infringing Product.

(b)  The presence of a dark blue horizontal banners spanning across the top of the front part of the box with bold Chinese characters in the Infringing Product.

(c)  The use of a photographed portrait of a male adult on the front label of the bottle which is visible through a window (which has been cut substantially to fit the shape of the bottle) in the carton box packaging of the Infringing Product.

(d)  The Infringing Product copied entirely the Chinese words “道益”; “活絡油” and “舒筋活絡” used in P’s Product.  The design of four bold Chinese characters in a vertical line printed in a conspicuous and contrasting colour against the white background on either side of the window on the box packaging in P’s Product had been reproduced in the Infringing Product.

(e)  The infringing mark “金牌道益” is put forward as the main indicia to distinguish the Infringing Product.  “金牌道益” is identical to the P’s mark “黃道益” and P’s Registered Trade Mark No 1995B09582 except in respect of the first two Chinese characters. The differing characters “金牌” is insignificant in the sale of the Infringing Product and/or get-up as a whole.

(f)  For these reasons, the get-up of the Infringing Product is deceptively similar to P’s Registered Trade Mark No 300721764.

(2)  In view of the above, the substantial goodwill in P’s Marks, P’s Get-up and P’s Registered Trade Marks and Ds’ admission of knowledge of P’s Get-up and P’s Product, the Infringing Mark and the get-up in the Infringing Product could not have been coined without copying from P. Further, notwithstanding the allegation of copying put forward by P in its pleading, Ds have not positively denied copying nor have they pleaded a case of independent creation.  Ds have proffered no explanation as to how the Infringing Mark and the get-up of the Infringing Product were devised.  In the circumstances, I accept P’s submission that the purpose of copying the Chinese characters “道益” and P’s Get-up is to deceive and mislead members of the public.

(3)  P has produced evidence, which is not challenged by Ds, showing instances of actual deception by the use of the Infringing Mark “金牌道益”.

26.  Insofar as damage is concerned, in view of the diversion of the sales to Ds and also the dilution of the exclusivity of the P’s Marks and the P’s Get-up, I am satisfied that P has suffered damage as a result of the passing off committed by Ds.

S.18(3) of TMO

27.  S.18(3) of the TMO provides: -

“A person infringes a registered trade mark if—

(a) he uses in the course of trade or business a sign which is similar to the trade mark in relation to goods or services which are identical or similar to those for which it is registered; and

(b) the use of the sign in relation to those goods or services is likely to cause confusion on the part of the public.”

28.  “Use” is defined in section 18(5) of the TMO: -

“For the purposes of this section a person uses a sign if, in particular, he -

(a) applies it to goods or their packaging;

(b) offers or exposes goods for sale under the sign;

(c) puts goods on the market under the sign;

(d) stocks goods under the sign for the purpose of offering or exposing them for sale or of putting them on the market;

(e) offers or supplies services under the sign;

(f) imports or exports goods under the sign; or

(g); uses the sign on business papers or in advertising.”

29.  In assessing likelihood of confusion, the guidelines laid down by the Court of Appeal are as follows:[8]

(1)  the likelihood of confusion must be appreciated globally, taking account of all relevant factors;

(2)  the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;

(3)  the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;

(4)  the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;

(5)  nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;

(6)  and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;

(7)  a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;

(8)  there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;

(9)  mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;

(10)  the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense;

(11)  if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion.

30.  As to what constitutes a likelihood of confusion on the part of the public, Gummow NPJ in Tsit Wing (Hong Kong) Co Ltd v TWG Tea Co Pte Ltd (No 2)[9] held that “while a mere possibility of confusion is not enough, it is sufficient if the result of use by the defendant of the sign in question will be that a number of ordinary persons will entertain a reasonable doubt and be caused to wonder whether it might not be the case that the goods or services in respect of which the defendant’s sign is used have the same provenance as those in respect of which the trade mark is used.” The threshold of demonstrating a likelihood of confusion is not high.

31.  In Wong To Yick Wood Lock Ointment Limited v Singapore Medicine Co (a firm) & Ors[10], Wilson Chan J said:

“101. An additional factor in the global appreciation test is the intention of the defendant, who as a person who knows the market in which he is offering his good or services. Thus whether the defendant copied the Plaintiff’s Mark or deliberately sailed close to the wind are factors that should be taken into account - Specsavers International Healthcare Ltd, supra, §115-116.

102. In Portakabin Ltd v Powerblast Ltd [1990] RPC 471 at 480, Mummery J in comparing the marks Portoblast and Porta, had regard to the idea of the mark and said that “the addition of the next five letters, “blast”, in the defendant’s mark, does not diminish the resemblance of “portoblast” to the registered mark “porta” in its essential features of idea.”

103. For the purposes of section 18(3), the court has to assume even if it were not so in fact that the mark owner has a reputation and goodwill in his mark. In other words, the court has to assume that the mark has been in use and developed a reputation and goodwill for the entire specification of goods or services. This is what distinguishes registered trade mark rights from the common law right of passing-off. The former confers protection ahead of use. Infringement will occur irrespective of any use – the mark may not have been used at all. The kind of use contemplated when a mark is unused or minimally used has to be that of notional and fair use. When the mark sued upon has actually been used on a substantial scale, one can take that actual use into account in assessing its distinctiveness but it does not limit the circumstances under which confusion may occur – Reed Executive Plc v Reed Business Information Ltd [2004] RPC 40 at §§79-81.

104. Proof of actual deception is unnecessary.  If one or more cases of actual deception are made out to the satisfaction of the court, this will be very strong evidence that the resemblance between the marks in question is so close as to be likely to deceive –Kerly’s Law of Trade Marks and Trade Names, 16^th ed, §23-019.”

32.  In my view, the Infringing Mark “金牌道益” as found on the Infringing Product is confusingly and/or deceptively similar to the Plaintiff’s Trade Mark No. 1995B09582.

The Plaintiff’s Trade Mark no. 1995B09582	The Infringing Mark

33.  As deposed by Tang in his affirmation, the Infringing Mark “金牌道益” is visually and phonetically highly similar to the Plaintiff’s Registered Trade Mark “黃道益” in that the last two Chinese characters of the former are identical to the last two characters of the latter.  The replacement of the Chinese character “黃” with “金牌” does not diminish the resemblance of “金牌道益”to the registered mark “黃道益” in its essential features of idea.  In addition, the Infringing Mark is presented in the same or a closely similar script as P’s “黃道益” Trade Mark.

34.  Further, the box packaging or the get-up of the Infringing Product is confusingly and/or deceptively similar to P’s Trade Mark No. 300721764 which is registered in colour and in monochrome (thus it is regarded as registered in respect of all colours). 

The Plaintiff’s Registered Trade Mark No. 300721764	The Infringing Product

35.  In the Re-Amended Defence, Ds admit that the Infringing Mark and the get-up of the Infringing Product have been used on goods identical to the goods in respect of which P’s Registered Trade Marks are registered.

36.  In my judgment, applying the global appreciation test, there would be a likelihood of confusion amongst members of the public:

(1)  The Infringing Mark and the get-up of the Infringing Product and P’s Registered Trade Marks are visually, aurally and conceptually confusingly similar.

(2)  The Infringing Mark and the get-up of the Infringing Product have been used in identical goods in respect of which P’s Registered Trade Marks are registered.

(3)  The likelihood of confusion is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any consumer who places his order for goods with both the marks clearly before him, for orders are not placed, or are not often placed, under such conditions[11].

(4)  The likelihood of confusion is increased due to enhanced distinctiveness of P’s Registered Trade Marks either per se or through extensive use of P’s Product over the years.

(5)  The medicated balms are not expensive and potential or actual customers may not exercise great care in selecting the medicated balm since they are for external application.

S.18(4) of TMO

37.  S.18(4) of TMO provides:

“A person infringes a registered trade mark if—

(a) he uses in the course of trade or business a sign which is identical or similar to the trade mark in relation to any goods or services;

(b) the trade mark is entitled to protection under the Paris Convention as a well-known trade mark; and

(c) the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark.”

38.  As succinctly summarised by Lok J in Louis Vuitton Malletier v Cuvee XLV French Wine Ltd[12], to establish liability for infringement under section 18(4), the plaintiff must show that:-

“(i) its mark is registered and “well-known”;

(ii) the defendant has used in the course of trade or business a sign which is identical or similar to the well-known trade mark;

(iii) on a global appreciation of the similarity between the mark and the sign, the goods and services in issue, the distinctive character of the mark and the reputation of the mark, the use of the sign gives rise to a link with the mark in the minds of the relevant public;

(iv) in consequence of that link, the use of the sign:

(a) takes unfair advantage of the distinctive character or repute of the mark;

(b) is detrimental to its distinctive character; or

(c) is detrimental to its repute; and

(v) the sign is used without due cause.”

39.  It has been held that P’s Registered Trade Marks are well-known marks within the meaning of TMO, Schedule 2.[13]

40.  I agree with P that there is a “link” between P’s Registered Trade Marks and the Infringing Mark and the Infringing Product by reason of the following:

(1)  the high degree of visual, aural and conceptual similarity between the marks in issue;

(2)  the goods in question are identical;

(3)  P’s Registered Trade Marks are well-known and have a very strong reputation;

(4)  P’s Registered Trade Marks are highly distinctive either per se or through extensive use over the years; and

(5)  there exists likelihood of confusion as stated above.

41.  By adopting and using the Infringing Marks and get-up of the Infringing Product which are highly similar to P’s Registered Trade Marks and in relation to identical goods, Ds had obtained an unfair advantage by riding on the coat-tails of the P’s Registered Trade Marks.

42.  Ds have not adduced any evidence of “due cause” and there is no evidence of prior use.

No arguable defence shown

43.  In my judgment, Ds have failed to show any arguable defence to P’s claim.

44.  Ds deny that the Infringing Product is confusingly /deceptively similar to P’s Marks, P’s Get-up and P’s Registered Trade Marks by citing various detailed and minute differences between them.  Such contention is wholly misconceived for it ignores the principle of imperfect recollection as set out in Wong To Yick Wood Lock Ointment Limited v Singapore Medicine Co (a firm) & Ors as set out in [22] above.

45.  Ds’ reliance on a purported trademark registration no. 301743426 of the mark “金牌道益” is without merits.  The same has been expunged from the Registrar of the Trade Marks pursuant to the Order of the DHCJ Kent Yee dated 1 December 2015.

46.  Ds contend that “活絡油” is generic and Ps’ marks are devoid of distinctiveness.  This is again misconceived because Ps’ Marks and P’s Registered Trade Mark No. 1995B09582 are “黃道益” not “活絡油”.

47.  Ds allege that that there has been no instance of deception known to Ds.  However, P has adduced evidence showing instances of actual deception, and there is no evidence from Ds showing the contrary.

48.  Ds alleged that the Infringing Product is “very well-known” in Hong Kong and in Mainland China.  This allegation is not proved by any evidence and must be rejected.

Procurement of infringing acts by D2

49.  I accept P’s submissions that the infringing acts done by D1 are procured by D2, and hence both D1 and D2 are jointly liable for the same.

50.  At all material times, D2 was the sole director and shareholder of D1.  Where a person is a sole director and shareholder of a company, this raises an evidential presumption that all of acts done by the company were done at the instigation of that person alone and that he is under an evidential burden to show why, contrary to one might expect, the acts complained of were not initiated and controlled by him.[14]  There is no evidence from Ds rebutting the presumption.

Joint Tortfeasance

51.  I also accept P’s submission that D2 should be liable to P for the infringing acts committed by D1 under the doctrine of joint tortfeasance.  In order to hold D2 liable under this claim, P has to prove (1) D2 must have acted in a way which furthered the commission of the tort by D1; and (2) D2 must be done so in pursuance of a common design to do or to secure the doing of acts which constituted the tort.[15]

52.  For the reason set out in [50] above, I am satisfied that P has also proved this claim.

DISPOSITION

53.  For the reasons set out in the above, it is clear that P is entitled to have the summary judgment (including costs) sought in the O14 Summons.  I make an order in terms of the summons.

54.  I thank counsel for the helpful assistance rendered to the court.