KABUSHIKI KAISHA YAKULT HONSHA AND OTHERS v. YAKUDO GROUP HOLDINGS LTD. AND ANOTHER

HCA 2409/2002

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO. 2409 OF 2002

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REASONS FOR DECISION

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1. At the hearing of 20 November 2002, after hearing submissions from counsel, I directed that the present action shall be tried before a judge alone. I further ordered that the leave be given for the publication of my Ruling handed down on 6 September 2002. I now give reasons for those decisions.

2. Regarding the mode of trial, Mr Ho applied on behalf of the Defendants for trial before jury. He submitted that in view of the factual issues in the present action, it would be more just to have the matters decided by a jury than by a single judge. The factual issues identified by him are as follows:

(a) whether there is any goodwill in the name "Yakult";

(b) whether the word "Yakudo" is confusingly similar to "Yakult";

(c) whether there is any spilt of goodwill from Taiwan.

He submitted that the jurors would represent the perspective of the local population regarding those matters and they are more reliable than whatever survey evidence that might be produced by the parties.

3. The law on the subject can be found in Section 33A of the High Court Ordinance. The relevant parts read:

"(1) Where, on the application of any party to an action the Court of First Instance is satisfied that there is in issue-

(a) a claim in respect of libel, slander, malicious prosecution, false imprisonment or seduction; or

(b) any question or issue of a kind prescribed for the purposes of this paragraph by rules of court,

the action shall be tried with a jury, unless the Court is of the opinion that the trial requires any prolonged examination of documents or accounts or any scientific or local investigation which cannot conveniently be made with a jury.

(2) An application under subsection (1) must be made not later than such time before the trial as may be prescribed by rules of court.

(3) An action to be tried in the Court of First Instance which does not by virtue of subsection (1) fall to be tried with a jury shall be tried without a jury unless the Court in its discretion orders it to be tried with a jury."

4. Mr Ho submitted that the present case falls within Section 33A(1)(a) because the claim in issue, passing off, is akin to slander which, he said, included slander of title. He cited no authority for this proposition. Even assuming he were right that slander in this context includes slander of title (which I have some doubts), it is clear to me that passing off is a completely different cause of action from slander of title. According to Bullen & Leake & Jacob's Precedents of Pleadings, Vol. 1, Para. 29-04:

"At common law an action for slander of title lies against the publisher of an oral or written statement which disparages the claimant's title to any property, real or personal, and causes special damages."

Plainly, a claim in passing off does not fall within Section 33A(1)(a).

5. The rules of court do not prescribe any kind of issue or question to be tried in accordance with Section 33A(1). Hence, Mr Ho cannot pray in aid of Section 33A(1)(b).

6. Hence, the application has to be considered by reference to Section 33A(3). Under that sub-section, the normal mode of trial is trial by a judge alone. In A B Volvo v Tanfory Co. Ltd [1990] 2 HKLR 203 at p. 205E to G, Sir Derek Cons VP said:

"I take s.33A, from the words which therein appear, to be a clear directive by the legislature that as from their enactment, and setting aside the five excepted cases, the normal mode of trial should be by judge alone. ... There is still a discretion left to the judge but, like all judicial discretions, it is not one that is to be exercised merely at his whim. It is to be exercised judicially. In this instance, bearing in mind the basic directive that I have just mentioned, that means it should be exercised only for good reason. In the present circumstances I would take good reason to be something which shows that trial by jury would overall be likely to produce a more just result than would trial by judge alone. The onus to persuade the judge to that end rests fairly and squarely upon the party which is asking for trial by a jury."

7. In that case, the Court of Appeal overturned the decision of the judge who directed an action of passing-off and infringement of trade mark to be tried by jury. At p. 206C to E, the learned Vice President highlighted the matters that a judge should bear in mind in the exercise of such discretion. They included whether the issues in the dispute are equally well within the grasp of a single judge as compared with a jury. If not, the judge still have to ask whether the difference in grasp was sufficient to outweigh the other party's legitimate interest in having his case tried by a method unattended by the disadvantages which are normally consequent upon a trial by jury. The court must also consider the public interest that judges and court facilities should not be tied up unnecessarily by one case to the detriment of others.

8. Applying these guidelines, I am of the view that Mr Ho has failed to persuade me that a trial by jury would achieve a fairer result as compared with trial by a judge alone. The issues he referred to, as Mr Liao SC quite rightly pointed out, are secondary facts which the court has to decide by reference to primary facts to be proved by evidence. I am told that most, if not all, of the primary facts are unlikely to be disputed. Judges hearing civil cases have to make finding of facts day in and day out. I do not see anything special about these matters which warrants a conclusion that it would be more just to ask a jury to decide on the same instead of a judge. Similar issues, at least in respect of the first two issues identified by Mr Ho, arise in almost all passing off cases. Mr Liao, who is of course very experienced in this type of cases, cannot recall a single case of passing off or infringement of registered trade mark that was tried by a jury in this jurisdiction after the enactment of Section 33A. Nor do I see why a jury could be in a better position to deal with the third issue.

9. Further, as submitted by Mr Liao, there are quite difficult mixed questions of facts and laws being involved in this action. Some of them have been highlighted by me in my Ruling in September and it is not necessary for me to repeat the same here. It would be a very complicated matter and to expect a jury to understand directions of such complexity may prove to be unsatisfactory. Hence, I am satisfied that not only a trial by jury could not achieve a more just result, it would probably cause unnecessary confusion to and prolongation of the trial. It is not in any party's interest to have a trial by jury in the present circumstances.

10. I therefore held against Mr Ho's application. The only reason why I withheld the publication of my Ruling was the Defendants' intimation that they wish to have a trial by jury. Once such an application has been disposed of, Mr Ho is in fact neutral as to whether the Ruling should be published.

11. Given the developments since my Ruling in September, the details of which I would not go into at this stage due to the fact that the other paragraphs in the summons of 30 October 2002 are still pending, it seems to me that it is in the interest of all parties concerned that I should give leave for the publication of my Ruling. That would enable parties to take whatever steps they deem fit to clarify the position with persons affected.

12. I have consulted parties at the hearing of 20 November 2002 and they have no objection for these Reasons for Decision to be published. I grant leave accordingly.