ABG JUICY COUTURE, LLC. v. BELLA INTERNATIONAL LTD t/a JUICY GIRL AND OTHERS

HCA 1764/2008

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO. 1764 OF 2008

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J U D G M E N T

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1. The plaintiff is a corporation incorporated in Delaware, USA. It claims against the 1st to 4th defendants for infringement of its registered trademarks and passing-off. This action was initially instituted by a Californian corporation Juicy Couture Inc. (“JCI”). JCI assigned its rights in this action together with other assets and rights to the plaintiff on 6 November 2013. Notice of assignment has been given to the defendants. The plaintiff then took over this action from JCI on 25 November 2013.

2. The 1st and 4th defendants are companies incorporated in Hong Kong.  The 2nd defendant is the wife of the 3rd defendant. The 2nd and 3rd defendants are the directors of the 1st and 4th defendants.  Each of them used to hold 50% of the shares of the 1st defendant.  On 30 December 2011, they transferred their respective shareholdings in the 1st defendant to the 4th defendant.  The 2nd and 3rd defendants also used to hold 40% and 60% of the shares in the 4th defendant respectively. On 31 December 2011, they transferred their respective shareholdings in the 4th defendant to Juicy Girl Group Ltd, a BVI company.

3. The 1st and 4th defendants are and were corporate vehicles through which the 2nd and 3rd defendants have operated their BELLA Fashion Group (“BELLA”). The 4th defendant has operated a number of outlets in Hong Kong marketing and promoting ladies’ fashion wear bearing the JUICY GIRL trade marks.

BACKGROUND

4. Prior to 6 November 2013, JCI used to carry on the business of designing and marketing contemporary casual apparel and fashion accessories primarily for young ladies. The plaintiff claims that JCI had since about 1996 promoted and used in U.S.A. the word marks “JUICY” and “JUICY COUTURE”.  These marks were used as word marks and also in a variety of designs and forms.  They were used alone or incorporated with some elements of design on JCI’s fashion products and related retail services.  The plaintiff further claims that JCI had marketed and promoted the fashion goods under the “JUICY COUTURE” brand as a US brand with emphasis on its origin in Los Angeles and/or California.  The business of JCI is being continued by the plaintiff since 6 November 2013. 

5. The plaintiff’s trade marks that are registered in Hong Kong and the particulars of registration are as follows:

Registration No.and Date of Registration	Trade Mark	Class No.	Goods/Services Covered by Registration
200102574   7 April 2000		25	clothing, shirts, dresses, pants, skirts, jackets, hats and caps; all included in Class 25
200105670   7 April 2000		25	clothing, shirts, dresses, pants, skirts, jackets, hats and caps; all included in Class 25
200108572 7 April 2000		25	clothing, shirts, dresses, pants, skirts, jackets, hats and caps; all included in Class 25
300195480 14 April 2004		3, 9, 14 and 18	Class 3 cosmetics; nail polish; fragrances, namely perfume and cologne; personal cleaning and bath products, namely soaps, skin scrubs, shower gels, bath oils, and bubble bath; hair care products, namely shampoo, conditioner, and styling compounds; personal care products, namely moisturizer and face and body powder; tanning and sun products Class 9 eyewear and accessories therefor, namely, eyeglasses, sunglasses, eyewear cases, eyewear frames, and chains and cords for eyewear Class 14 candle holders made wholly or primarily of precious metals; clocks and watches; jewelry, namely necklaces, bracelets, rings, earrings, pendants, jewelry pins and cufflinks; pill boxes Class 18 luggage, sports bags, purses, handbags, backpacks, wallets, credit card cases, key cases, passport cases, cosmetic cases sold empty, umbrellas
300715374 6 September 2006		35	retail store services, online retail store services and mail order services, all in the field of apparel, leather goods, fashion accessories, jewelry, footwear, cosmetics, personal care products, eyewear, luggage and home products and personal care products

6. The plaintiff claims that the defendants in selling their ladies fashion wear and accessories under or in the brand name of “JUICY GIRL” have infringed the plaintiff’s trade marks, passed off their retail business as and for that of JCI or the plaintiff or associated with or approved by the plaintiff and passed off their goods as and for the plaintiff’s fashion products.

LEGAL PRINCIPLES ON INFRINGEMENT OF TRADE MARKS

7. The plaintiff relies on section 18(3) of the Trade Marks Ordinance, Cap. 559.  The section provides:

“(3) 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.”

8. Ms Tam, leading counsel for the plaintiff referred to the principles for discerning similarity as summarized by Kitchin J in Julius Samaan v Tetrosyl Ltd [2006] FSR 4 at [51] which were cited by Deputy Judge H Wong, SC in Guccio Gucci v Cosimo Gucci [2009] 5 HKLRD 28at [79]:

“79. The question of similarity between the alleged offending signs and the registered trade marks is closely related to the question of likelihood of confusion. In this regard, I would gratefully adopt the summary of basic principles set out by Kitchin J in his judgment in the case of Julius Samaan (at [51]) :

(a) the likelihood of confusion must be appreciated globally, taking account of all the relevant factors : Case C-251/95 Sabel BV v. Puma AG [1997] ECR I-6191; [1998] R.P.C. 199 at [22] to [24];

(b) the matter must be judged through the eyes of the average consumer of the goods in issue, who is deemed to be reasonably well informed and reasonably observant and circumspect : Sabel at [22] to [24]; Case C-342/97 Lloyd Shuhfabrik Myer & Co. GmbH v. Klijsen Handel BV [1999] E.C.R. I-3819; [2000] F.S.R. 77 at [26] to [27];

(c) in order to assess the degree of similarity between the marks concerned the court must determine the degree of visual, aural or conceptual similarity between them and, where appropriate, evaluate the importance to be attached to those different elements taking into account the nature of the goods in question and the circumstances in which they are marketed : Lloyd at [27] to [28];

(d) the visual, aural and conceptual similarities of the marks must therefore be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components. The perception of the marks in the mind of the average consumer plays a decisive role in the overall appreciation of the likelihood of confusion : Sabel at [22] to [24];

(e) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details : Sabel at [22] to [24];

(f) there is a greater likelihood of confusion where the earlier trade mark has a highly distinctive character, either per se or because of the use that has been made of it : Sabel at [22] to [24];

(g) the average consumer 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; further the average consumer’s level of attention is likely to vary according to the category of goods in question : Lloyd at [26] to [27];

(h) appreciation of the likelihood of confusion depends upon the degree of similarity between the goods. A lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods, and vice versa: Case C-39/97 Canon Kabushiki Kaisha v. Metro Goldwyn Mayer Inc. [1999] R.P.C. 117 at [17] to [28];

(i) mere association, in the sense that the later mark brings the earlier mark to mind, is not sufficient for the purpose of the assessment : Sabel at [26];

(j) but the risk that the public might believe that the goods come from the same or economically linked undertakings does constitute a likelihood of confusion within the meaning of the section : Canon at [29] to [30].”

9. Ms Tam also referred to section 7(2) of the ordinance which provides that the likelihood of confusion includes a likelihood of association:

“(2) For greater certainty, in determining for the purposes of this Ordinance whether the use of a sign is likely to cause confusion on the part of the public, the Registrar or the court may take into account all factors relevant in the circumstances, including whether the use is likely to be associated with a registered trade mark.”

10. Ms Tam further referred to [80 to 82] of the judgment of Guccio Gucci to illustrate different types of association:

“80. ... The ECJ in Sabel (at [10]) alluded to 3 types of association as follows:

‘… The likelihood of association may arise in three sets of circumstances : (1) where the public confuses the sign and the mark in question (likelihood of direct confusion); (2) where the public makes a connection between the proprietors of the sign and those of the mark and confuses them (likelihood of indirect confusion and association); (3) where the public considers the sign to be similar to the mark and perception of the sign calls to mind the memory of the mark, although the two are not confused (likelihood of association in the strict sense).’

81. It is only the first 2 types of association, i.e. those which give rise to a likelihood of either direct or indirect confusion, that are sufficient for the purpose of infringement. Mere association which the public might make between 2 trade marks as a result of their analogous semantic content is not in itself a sufficient ground for concluding that there is a likelihood of confusion (see, Sabel at [26]).

82. As Lewison J explained in the O2 case mentioned above (at [125]):

‘The first kind of confusion takes place where the public considers that the sign and the mark denote a common origin of the goods and services in question.  The second kind of confusion arises where the public considers that there is an economic link or association between the proprietor of the mark and the proprietor of the sign.  The third kind of association is where the [sign] merely calls the mark to mind, without making any linkage between the goods or services offered under the mark and the sign respectively; or without making any economic linkage between the proprietor of the mark and the sign respectively.’”

11. Ms Tam further submitted that 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.  She referred to Reed Executive Plc v Reed Business Information Ltd [2004] RPC 40 at [79-80] where Jacob LJ said:

“79. …  I have a few further observations.  First, as to proposition one.  The Court has laid down the “global assessment” test (Sabel para. 22, Lloyd para. 18).  This requires the court to take all the circumstances into account.  As the Judge observes this involves many of the factors involved in passing off.  But there is this difference: in the case of passing off the court has regard only to the actual reputation and goodwill of the claimant at the time the defendant starts his activities.  In the case of Art. 5.1(b) (or section 10(2) of the Trade Marks Act 1994 which is similar to section 18(3) of the Trade Marks Ordinance) infringement the court must assume, even if it be not so, that the mark owner has a reputation and goodwill in his mark.  In other words the court must assume that the mark has been in use and developed such a reputation and goodwill for the specification of goods or services.

80. Were this not so, there could never be Art. 5.1(b) infringement of an unused registered mark.  That would defeat one of the key purposes of trade mark registration – the conferment of protection in advance of use, before a reputation under the mark has been developed.  For once there is a reputation most (probably all – I have never heard of one that does not) systems of law confer protection independently of registered trade marks by some sort of unfair competition rules.  In the UK that is by the law of passing off.”

12. On likelihood of confusion, both Ms Tam and the defendants further referred to Specsavers International Healthcare Ltd & Ors v Asda Stores Ltd [2012] EWCA Civ 24 (31 January 2012) where Kitchin LJ said at [87]:

“In my judgment the general position is now clear. In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer's mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context.” (emphasis supplied)

13. Ms Tam also submitted that members of the public may be confused and thus wrongly regard the JUICY GIRL brand as a subsidiary line of the plaintiff.  She referred to Guccio Gucci at [92] where Deputy Judge H Wong described the “vertical extension” of a mark:

“92.  The fact that the “GUCCI” mark is not descriptive of the nature or function of particular goods enables its distinctiveness to be applied to a broad range of products of very different nature.  The mark is capable of being applied not only to goods which it is originally associated with, but also to completely new products and products of new design.  So strong is the mark of “GUCCI” that when the same is used in a new product, or a product with a wholly new design, customers will naturally assume that the new product or new design to which the mark is applied originates from Gucci.  Such an “extension” of the branding effect may take place both horizontally and vertically—horizontally when the mark is applied to other products of a different nature from those to which the mark originally applies, or vertically when the mark is applied to another line of goods of the same nature but intended to appeal to a different market, for example, a younger line, or a second male or female line.  On the evidence before me, such vertical extension is quite common with famous brands—some examples are “RL by RALPH LAUREN”, “POLO by RALPH LAUREN”, “SEE by CHLOE” and “MARC by MARC JACOBS”.”

THE DEFENDANTS’ RELIANCE ON SECTION 19(4)

14. The defendants’ defence is that they had been using the their “JUICY GIRL” trade mark either alone or in conjunction with other trade marks for ladies’ fashion wear in Hong Kong in or about early to mid 1998 through sales in BELLA.  They rely on section 19(4) of the Trade Marks Ordinance:

“19. (4) A registered trade mark is not infringed by the use by any person in the course of trade or business in Hong Kong of an unregistered trade mark or other sign in relation to goods or services if the unregistered trade mark or other sign has been so used in Hong Kong by that person or a predecessor in title continuously from a date preceding the earlier of-

(a) the date of first use in Hong Kong of the trade mark which is registered; and

(b) the date of registration in Hong Kong of that trade mark.”

JCI’S ADVERTISEMENTS IN AMERICAN MAGAZINES

15. In addition to relying on the trade marks “JUICY”, “JUICY JEANS” and “JUICY COUTURE” in Class 25 registered on 7 April 2000, the plaintiff also argued that JCI had used its marks in Hong Kong prior to the defendants’ alleged use in or about early to mid 1998.  The plaintiff submitted that the use was by way of JCI’s advertisements of garments under its mark in the Seventeen magazine published in the USA in 1996 to 1998 which, because of subscription by public libraries or beauty salons, became available in Hong Kong.  The plaintiff relied on the advertisements in the following editions of the Seventeen magazine copies of which are kept in the archive of the HK City Hall Library:

(1)  April 1996 issue: Juicy cardigan (page 70);

(2)  May 1996 issue: Juicy cardigan (page 42);

(3)  April 1997 issue: Juicy mini-skirt, cardigan (pages 37, 141, 143);

(4)  August 1997 issue: Juicy Jeans (page 209);

(5)  September 1997 issue: Juicy Couture pants and skirt (pages 227 and  another illegible page number);

(6)  February 1998 issue: Juicy Couture sleeveless tee (page 28); and

(7)  June 1998 issue: Juicy Couture tee and tank (pages 100, 184).

16. The defendants however argued that the plaintiff had not pleaded that JCI had used its marks “Juicy” and “Juicy Couture” in Hong Kong prior to July 2000.  Ms Tam in reply relied on para. 8 of its Re-Re-Re-Re-Amended Statement of Claim (“Statement of Claim”) which pleaded that:

“Starting from or about 1996 substantial and extensive use has been made in U. S. A. and elsewhere including in Hong Kong of the word marks “JUICY” and “JUICY COUTURE” through substantial and extensive marketing of the plaintiff’s fashion products under the “JUICY” and “JUICY COUTURE” marks both as word marks and in a variety of distinctive designs and forms incorporating the word marks.”

17. The plaintiff in fact provided particulars of the alleged use of the marks in support of this averment which are numbered (a) to (h).  However, none of the particulars referred to advertisement in any magazine whether published in the US and circulated in Hong Kong or otherwise at any time. 

18. I also note that para. 9 of the Statement of Claim pleaded that:

“The Trade/Service Marks, the Juicy Girl trademarks, and the Juicy Trade Marks have all been extensively promoted and used in relation to the Plaintiff’s fashion products from about late 1990’s in the U.S.A. and from about July 2000 in Hong Kong, and the Plaintiff continues to promote and use the same in relation to the Plaintiff’s fashion products worldwide.” (emphasis supplied)

19. From the above, it is clear that the plaintiff had not indicated in its Statement of Claim that it would be relying on the said advertisements published in the various editions of the Seventeen magazine above-mentioned or that the marks had been promoted or used in Hong Kong prior to July 2000.  It is thus unfair to require the defendants to deal with this issue at the trial.  I therefore hold that the plaintiff is not entitled to rely on the said Seventeen magazines to prove that JCI had used the marks prior to July 2000. 

SECTION 19(4) AND ADVERTISEMENTS IN AMERICAN MAGAZINES

20. In case I were wrong in the decision on the pleading point, I would also deal with the arguments on the substantive merit of the plaintiff’s attempt to rely on the said Seventeen magazines.

21. The defendants argued that the “use” contemplated in section 19(4) should mean ‘genuine use’ as in the context of revocation proceedings under section 52(2)(a).  They disagreed that the placing of advertisements in some foreign fashion/beauty magazines which circulated in Hong Kong because of the subscription of it by a few subscribers can amount to “use” under section 19(4) of the trade marks as may be depicted in the advertisements. 

22. I should also mention that Ms Tam could not tell me the extent of circulation of these magazines in Hong Kong except that they are available in the HK City Hall library and some high class beauty salons in Hong Kong.  There is also no evidence that JCI had placed the advertisements in the magazines intending to promote or use the trade marks in Hong Kong.  JCI’s goods bearing the said trade marks were not available in Hong Kong when these magazines were published and circulated in Hong Kong.

23. Ms Tam disagreed with the defendants’ argument and referred to the judgment of Barma J (as he then was) in Brands Inc Ltd v Kabushiki Kaisha Regal Corp [2007] 2 HKC 110.  The learned judge held in that case that importing into or exporting from Hong Kong goods bearing a trade mark would constitute infringement against the trade mark owner’s rights under sections 18(1) and 18(5)(f) of the Ordinance.  Such activity however would not constitute genuine use by the owner for the purpose of revocation proceedings under section 52(2)(a).  This shows the emphasis of the law in protecting the interest of the trade mark owner so that activities that would not constitute genuine use of the mark if carried out by the owner, may still be regarded as infringing use if carried out by a non-owner.

24. However, the use by an owner for the purpose of maintaining the owner’s rights in the mark and to prevent the registration from being revoked needs to be more substantial.  Barma J pointed out in para. 18 of his judgment that what is essential for genuine use is that the mark should have been used by being exposed to third parties (other than the owner or licensees or agents) on a market in Hong Kong for goods of a type in respect of which the mark was registered.  The reason being that the mark must be used in such a way as to act as a badge of origin, or a guarantee of the source or origin of the goods to which it affixed.

25. The defendants referred to the judgment of Jacob J (as he then was) in Euromarket Designs Inc v Peters and Crate & Barrel Ltd [2001] FSR 20.  In that case, the plaintiff, an American company selling household goods and furniture, owned a registered trade mark of “Crate & Barrel” in the United Kingdom.  The defendant ran a single shop in Dublin, Ireland called “Crate & Barrel”, was also selling household goods and furniture.  The defendant placed an advertisement in a magazine published in the UK which circulated in the UK and Ireland.  At the top of the single full page colour advertisement are the words “Crate & Barrel”.  The plaintiff sued the defendant for infringement of trade mark and applied for summary judgment against the defendant.

26. The Trade Marks Act 1994, sections 10(1) and 10(4)(d), which are almost identical to sections 18(1) and 18(5)(g) of our Trade Marks Ordinance, provide:

“10 Infringement of registered trade mark.

(1) A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.

…

(4) For the purposes of this section a person uses a sign if, in particular, he —

…

(d) uses the sign on business papers or in advertising.” (emphasis supplied)

27. The plaintiff argued that the appearance of the advertisement in the UK was enough to constitute an infringement as defined in sections 10(1) and 10(4)(d).  Jacob J said in para. 14:

“14. Miss Vitoria recognised that her argument is as true for a magazine that has primarily a United Kingdom circulation as it is for one which is primarily foreign and has only an incidental United Kingdom circulation. If she is right the consequences are far reaching. Many newspapers or magazines have some limited overseas circulation. What if, for instance, the advertisement in question had been placed in the Irish Times rather than Homes & Gardens? That newspaper probably has quite a number of readers in this country. If the use were an infringement then the effect of the United Kingdom registration would be to prevent people in the position of the defendants from advertising their Irish business in an Irish newspaper. The reverse could happen. Suppose the defendants had an Irish trade mark registration: then an advertisement of the claimant in a section of the New York Times which had an Irish circulation might infringe.”

28. The defendant argued that the advertisement did not constitute “use in the course of trade” in section 10(1).  Jacob J granted the defendant leave to defend.  The learned judge said in paras. 19 and 20:

“19. …The right question, I think, is to ask whether a reasonable trader would regard the use concerned as ‘in the course of trade in relation to goods’ within the Member State concerned. Thus if a trader from state X is trying to sell goods or services into state Y, most people would regard that as having a sufficient link with state Y to be ‘in the course of trade’ there. But if the trader is merely carrying on business in X, and an advertisement of his slips over the border into Y, no businessman would regard that fact as meaning that he was trading in Y. This would especially be so if the advertisement were for a local business such as a shop or a local service rather than goods. I think this conclusion follows from the fact that the Directive is concerned with what national law is to be, that it is a law governing what traders cannot do, and that it is unlikely that the Directive would set out to create conflict within the internal market. So I think Mr Miller is right. One needs to ask whether the defendant has any trade here, customers buying goods or services for consumption here. It was that sort of concept I had in mind in 800 FLOWERS Trade Mark.

20    On the facts here, I think the advertisement in Homes & Gardens is not an infringing use.  I recognise that my view is provisional, this being only an application for summary judgment.”

29. Ms Tam submitted that in the present case, section 19(4)(a) referred simply to the “date of first use in Hong Kong”.  She said when this was read in conjunction with section 19(4)(b), it was clear that the provision was to preserve existing rights by affording a defence to an “earlier user” who could show that he had “got there first”.  She further submitted that there was no warrant to superimpose any requirement that such use had to be “genuine” in the sense of preserving an outlet.  Hence, she submitted that JCI’s marks had, by the circulation of the said magazines, “got to Hong Kong” sometime in or shortly after April 1996.

30. If Ms Tam’s submissions are correct, the consequence will also be far reaching.  Hong Kong is a cosmopolitan city. Numerous foreign newspapers and magazines have circulation here.  These newspapers and magazines contain advertisements of numerous kinds of goods of various brands that are not on sale in Hong Kong.  The merchants selling these goods may also have no outlet or sales agent here.  However, on the strength of Ms Tam’s submissions, the incidental circulation of the advertisements of goods in these foreign newspapers and magazines in Hong Kong will earn the merchants of these goods the rights under section 19(4) of the Ordinance.  If this interpretation of section 19(4) is right, it may well hamper business development in Hong Kong as many foreign marks and signs may gain an earlier use right under section 19(4) without intending to acquire it for the reason that they are marks of foreign goods the advertisements of which have already circulated in Hong Kong though the goods have never been available here.  Such interpretation does not appeal to a reasonable businessman.

31. I think the “use” of the mark that can make the owner the “earlier user” must be genuine use for the purpose of trade or business.  The mark when used should be exposed to third parties (other than the owner’s agents or licensees) on a market in Hong Kong in relation to goods or services that are available in Hong Kong.  I agree with the defendants that “use” in section 19(4)(a) should mean genuine use for the purpose of revocation proceedings under section 52(2)(a).  The plaintiff therefore cannot rely on JCI’s advertisements in the said magazines as the dates of the use of JCI’s marks in Hong Kong.

LEGAL PRINCIPLE ON PASSING-OFF

32. Lord Oliver of Aylmerton has summarized the law of passing off in Reckitt & Colman Products Ltd v Borden Inc. & Ors [1990] RPC 341 at 406, lines 23-43:

“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 proprietor 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.”

THE PLAINTIFF’S PLEADED CASE ON GOODWILL

33. The plaintiff pleaded that a substantial number of members of the public, upon seeing the mark “JUICY” either used alone or in conjunction with some other words or elements of design on fashion products or related retail services, are likely to believe that there is a connection in the course of trade between such products or services with the “JUICY COUTURE” brand and none other.

34. The words, elements of design and associated features of get-up used with the trade marks are the fonts of type, logos and colours referred to above which the plaintiff claimed are highly distinctive of its products and services.  They are:

a.  the word “GIRL”;

b.  the “JUICY Crown” Design referred to below and variations thereof;

c.  the use of Gothic, Old English, Cloister or Cursive font for the presentation of the “JUICY” and “JUICY COUTURE” marks and the letters “J” and “JC” signifying these marks;

d.  the “JUICY Crown” Design and variations thereof used in conjunction with the word marks “JUICY” and “JUICY COUTURE” and the letters “J” or “JC” in font styles referred to above;

e.  the “JUICY” and “JUICY COUTURE” marks have often been presented in a distinctive colour scheme with the juxtaposition of a tone of dark brown (pantone #7533) and a tone of soft pink (pantone #182 and/or pantone #182 @ 25%);

f.  the incorporation of “JUICY” or “JUICY GIRL” into any slogan or epithet; and/or

g.  the use of the letters “J”, “JC” or combination of letters visually similar to “JC”.

35. The plaintiff also pleaded that JCI had since or about 2001 made substantial and extensive use of the mark shown in Appendix A1 hereto called “the “JUICY Crown” Design” and the variations thereof.  Some of the designs and marks used by JCI and the plaintiff are shown in Appendices A1 to A8 hereto.  Two of the variations of the “JUICY Crown” Design which the plaintiff alleged that the defendants had infringed are shown in Appendices A3 and A4. 

36. The plaintiff also claimed that the “JUICY Crown” Design featuring the “Two Terriers”, the classically styled words “Love P&G” in Old English font, has since its creation been stitched on the inside tag of each item of JCI’s fashion products.  The words “Love P&G” had later been changed to “Love G&P” and the word “MADE” had also been changed to “BORN”.

37. The plaintiff also claimed that JCI since the late 1990’s had also made substantial and extensive use of the “JUICY” word mark by incorporating it in slogans and epithets and applying them onto fashion products to indicate their origin in or connection in the course of trade with JCI (or the Plaintiff since 6^th November 2013).  The slogans and epithets include “CHOOSE JUICY”, “VIVA LA JUICY”, “Life is Juicy”, “BASICALLY JUICY”, “Juicy Couture BABY” and “LET JUICY SHINE”;

38. The plaintiff now operates not less than 80 stores under and by reference to the said marks throughout the world.  The marks have at all material times been promoted and used by JCI (and the Plaintiff since 6^th November 2013) and/or their licensees/distributors.  Their fashion products have also been promoted through the website www.juicycouture.com since about 2005. 

39. The Lane Crawford Joyce Group has since Spring of 2002 been marketing the Plaintiff’s fashion products under the aforesaid marks in Hong Kong at the retail stores of Lane Crawford alongside retail stores of other distributors and also free-standing “JUICY COUTURE” shops that were opened in Hong Kong since 2006.

40. JCI’s fashion products bearing the “JUICY GIRL” mark have been sold in Hong Kong since about 2004.

41. The free-standing “JUICY COUTURE” shops in Hong Kong are at:

(i) the IFC Mall, 8 Finance Street, Central (opened on 14 December 2006);

(ii) the Landmark Atrium, Queen’s Road, Central (opened on 15 January 2007);

(iii) the Times Square, Causeway Bay (opened on 6 August 2007); and

(iv) the Gateway Arcade, Harbour City, Kowloon (opened on 22 August 2007).

42. The revenue generated for the years of 2003 to 2007 from the sale of products under and by reference to the said marks in Hong Kong by Lane Crawford in its outlets were:-

Year	Approximate Amount (HK$)
2003	in excess of 6,543,470
2004	in excess of 5,961,000
2005	in excess of 3,098,340
2006	in excess of 7,000,000
2007	in excess of 85,000,000

43. The advertising/marketing expenditure incurred in Hong Kong was in excess of HK$3,898,000 for the period from December 2006 to March 2007 and in excess of HK$2,331,000 for the period from April 2007 to March 2008.

44. The plaintiff thus claimed that it has a substantial goodwill and reputation in Hong Kong earned through extensive sales and promotion in Hong Kong since 2002.  Ms Tam said in her closing submissions that the date for assessing the plaintiff’s goodwill for the passing-off claim should be mid-2007.

THE ALLEGED BREACH BY THE DEFENDANTS

45. The plaintiff further pleaded that the defendants had infringed its marks as registered in Hong Kong as referred to above.  The plaintiff also pleaded that the defendants had passed-off their retail business as and for that of JCI or the Plaintiff or associated with or licensed by them and/or L. C. Licensing, Inc.  The plaintiff also pleaded that the defendants had passed-off their goods as and for the fashion products of JCI or the Plaintiff. 

46. The particulars of infringement and passing off relied upon by the plaintiff are the following:-

(a)   In about October 2007, the 1st defendant opened a fashion retail business in the name “JUICY GIRL” at Ground Floor of No. 4 Yiu Wa Street, Hong Kong (“Defendants’ First Premises”).

(b)   In about September 2007 the 1st defendant opened a concession counter at Level 2 of SOGO Department Store (“Defendants’ Second Premises”) selling clothing and accessories under and by reference to the name and/or mark “JUICY GIRL”.

(c)   The 1st defendant registered “JUICY GIRL” website at www.juicygirl.us on 6 June 2006 and advertised through this site its business and goods.  The said website targeted at the young city girl market liked the Plaintiff’s Juicy Couture and Juicy Girl product lines.  In so doing the 1st defendant misrepresented its business as being based in the U.S., and its products as being of a U.S. company contrary to the fact.

(d)   The 1st defendant registered the “Juicylicious” website at www.juicylicious.us on 9 February 2007.  The 1st defendant advertised through this site its business and its trade marks.  It also advertised a crown design (“the Defendants’ Crown Device”) which was printed on a T-shirt worn by a female model featured on a web page of the site (B-2229).  The Defendants’ Crown Design is very similar to two of the variations of the plaintiff’s “JUICY Crown” Design as shown in Appendices A3 and A4 hereto though without the letters “JG” and the words “Juicy Couture”.

(e)   The defendants’ trade marks and Defendants’ Crown Design as advertised through this website were confusingly similar to the plaintiff’s trade marks and Crown Design.  The said website also targeted at the young city girl market like the Plaintiff’s Juicy Couture and Juicy Girl product lines.  The 1st defendant thus made the same misrepresentation through this site about its business as being based in the U.S., and its products as being of a U.S. company contrary to the fact.

(e)   The 1st defendant sold a lady’s tube top to an employee of JCI’s solicitors on or about 6^th March 2008 at the Defendants’ First Premises.  The lady’s tube top bore a sewn-on label and a hang-tag which had embroidered and printed thereon the name/mark “Juicy Girl” in Old English or Cloister style font.  The receipt for the sale also had the Defendants’ Crown Device and the initials “JG” for “Juicy Girl” in Old English or Cloister style font printed thereon.

(f)   The 1st defendant sold a scarf to an employee of JCI’s solicitors also on or about 6^th March 2008 at the Defendants’ Second Premises.  The scarf bore a small ornamental metal plate with the name/mark “Juicygirl” embossed thereon and a hang-tag identical to the one referred to in the last sub-paragraph.

(g)   The 1st defendant distributed product catalogues bearing the name/mark “JUICY GIRL” and the domain name www.juicygirl.us.  The catalogues depicted the Defendants’ Crown Device which was substantially similar to the “JUICY Crown” Design.  There were also the initials “JG” for “Juicy Girl” in Old English or Cloister style font, which was visually similar to the letters “JC” used by the plaintiff.  The catalogues also prominently depicted the defendants’ goods bearing the mark “JUICYGIRL” and “Juicy Girl”, the word “JUICY” in stylized script, the Defendants’ Crown Device and the initials “JG” in Old English or Cloister style font.

(f)   Some of the marks used by the defendants are shown in Appendices B1 to B10 hereto.

47. In relation to the aforesaid acts of the defendants, the plaintiff further pleaded that:

(a) The defendants’ “JUICY GIRL” or “Juicygirl” marks are and were used on or in relation to goods or services identical to those for which the Plaintiff’s said marks are registered and are confusingly similar to the plaintiff’s marks “JUICY”, “JUICY JEANS” and “JUICY COUTURE”.

(b) The defendants’ use of the marks “JUICY GIRL” or “Juicygirl” in fashion products and related retail services was calculated to deceive and likely to lead to confusion and deception amongst a substantial number of persons in the public in Hong Kong.

(c) The defendants’ use on its products and receipts of a crown device substantially similar to the “JUICY Crown” Design was also calculated to deceive, and heightened the risk of confusion and deception.

(d) The defendants’ use of the shade of pink of pantone No. 182 with a dark brown of pantone No. 7533 or some visually similar shades as background colour in conjunction with “Juicy Girl” advertisements or product image materials was also calculated to deceive, and heightened the risk of confusion and deception amongst a substantial number of persons in the public in Hong Kong.

(e) The defendants’ use of design elements similar to those used by the Plaintiff in its advertisements and on its products, including (i) geographical locations for their product photographs, namely, various iconic locations in California particularly in Los Angeles; (ii) similar pink colour combination; (iii) similar designs or patterns involving tartan, kisses, two girls, stripes, disco ball, oversized sunglasses, graffiti, etc. with their Juicy Girl mark; (iv) sales and promotion of velour tracksuits using the Juicy Girl mark; and (v) use of JC look alike slogans (i.e. JG), was also calculated to deceive, and further heightened the risk of confusion and deception.

(f) Further, the defendants’ adoption of the said stylized script in the mark “JUICY GIRL”, the initials “JG”, and other words used in conjunction therewith was confusingly similar to those of the Juicy Trade Marks in the Old English or Cloister style font, which distinguish the Plaintiff (or JCI prior to 6^th November 2013) and none other.  Such use by the defendants was also calculated to deceive and further heightened the risk of confusion and deception.

(g) Further or alternatively, the get-up of the defendants’ products referred to above in relation to the sales effected on 6 March 2008 and the defendants’ catalogues incorporated one or more of the plaintiff’s trade marks and elements of design.  The combination of such elements when used in fashion products or related retail services was calculated to deceive and is likely to lead to confusion and deception amongst a substantial number of persons in the public in Hong Kong.

48. The plaintiff also pleaded that:-

(a)   Since about 2009, the Defendants have been hosting a website using the domain name juicygirl.com.hk.  The website incorporates a pink colour scheme in conjunction with photographs of iconic sites and scenes in California, thus reinforcing the message that the brand is of U.S. origin, contrary to fact.

(b)   In or around 2010, the 1st Defendant was found to be using, selling or displaying products, labels, hang-tags and plastic shopping bags on which the words “Juicy Girl” appeared prominently. The 1st Defendant also presented “Juicy Girl” and/or “JG” in Old English or Cloister fonts and cursive fonts (as shown in Appendices B1 to B10).  Many of the hang-tags and/or labels on the products were in light pink (and some with lettering in brown) similar to the Plaintiff’s colour scheme.

(c)   On or around 9 April 2010, JCI’s representatives also obtained from the 1st Defendant’s shop at G/F, No. 5 Lan Fong Road, Causeway Bay, Hong Kong a sales memo with the words “Juicy Girl” printed in cursive font.

(d)   A few months after the launch of JCI’s first “JUICY COUTURE” bus “wrap” advertising campaign in Hong Kong for fall/winter 2008 fashion, the Defendants also launchedan advertising campaign in or about July 2009 promoting their “JUICY GIRL” goods and business on the side panels of a KMB double decker bus (registration no. KU 1391) without making it clear that the Defendants’ goods and business were not in any way associated with JCI and/or L.C. Licensing, Inc.

(e)   In or around May 2010, which was several months after JCI had conducted in Fall/ Winter 2009 a taxi “wrap” advertising campaign, the Defendants launched a similar advertising campaign for “JUICY GIRL”.

(f)   The 1st Defendant had also sold and supplied to an employee of JCI’s parent company, Liz Claiborne Inc., on 10^th June 2010 at its shop at Shop No. J3, Queensway Plaza, Hong Kong, a jacket bearing a sewn-on label with “JG” and “Juicy Girl” in Old English or Cloister style font or a script closely similar thereto in brown colour against a background of soft pink.  The said jacket was sold with “Juicy Girl” printed thereon in cursive font in silver against a pink background.  The paper shopping bag provided by the 1st defendant also had the words “JUICY GIRL” and “WWW.JUICYGIRL.COM.HK” printed thereon.

(g)   An employee of JCI’s solicitors went to the 4th Defendant’s “JUICY GIRL” shop at Shop no. B214, 215 of “K11”, 18 Hanoi Road, and observed that the 4th Defendant adopted a pink colour scheme for its shop decoration with its sign JUICY GIRL prominently displayed.  It also used a crown device with the letters JG on several of its advertisement boards showing its then latest collections.  The goods sold there had hangtags and designs featuring the marks and logo and design elements distinctive of the Plaintiff (formerly JCI).

LIABILITY OF THE 2ND AND 3RD DEFENDANTS AS JOINT TORTFEASORS

49. The plaintiff pleaded that the acts of the 1st and 4th defendants were committed by them pursuant to a common design of the 2nd and 3rd defendants with the intention of deliberately riding on the plaintiff’s or JCI’s goodwill.

50. Ms Tam also submitted that the 2nd and 3rd defendants were at all material times the sole shareholders and directors of the 1st and 4th defendants and were in sole control of the operations of the companies. 

51. The 2nd and 3rd defendants have also admitted in their defence that they had at all material times run and operated the business of BELLA through the corporate vehicles of the 1st and 4th defendants.

THE DEFENCE OF ANTECEDENT USE OF THE SIGN “JUICY GIRL”

52. The defendants admitted that JCI had carried on business under and by reference to the name and trade mark “JUICY COUTURE”. 

53. They said that the nick name of the daughter of the 2nd and 3rd defendants is “Juicy”.  This is proved by some video clips of the family of the 2nd and 3rd defendants taken in 1995 to early 1996.

54. They claimed that the 2nd defendant was inspired by his daughter’s nick name “Juicy” to coin the brand name “JUICY GIRL”.  They also claimed that the 2nd and 3rd defendants had started using their “JUICY GIRL” trade mark for ladies’ fashion wear in Hong Kong in or about early to mid 1998 through sales in BELLA.  They had used the mark either alone or in conjunction with other trade marks. 

55. Thereafter, the “JUICY GIRL” name and mark had been continuously used by BELLA and the defendants in Hong Kong on and in relation to ladies’ fashion wear and accessories.  Such use by them was prior to the date of first use in Hong Kong by JCI of any of the plaintiff’s trade/service marks and prior to the date of registration in Hong Kong of any of the plaintiff’s trade/service marks. 

THE PLAINTIFF’S EVIDENCE

Mr Samuelson, former Managing Director (International)

56. The plaintiff called JCI’s former Managing Director (International) Mr Samuelson to give evidence on the plaintiff’s registered trade marks in Hong Kong and elsewhere including the USA.  Mr Samuelson also produced photographs and printouts from websites showing the plaintiff’s fashion products.  He also produced invoices showing the sale of such products to department stores in Hong Kong including Lane Crawford from 2001 onwards.  He also produced photographs of some free-standing stores of the plaintiff in various parts of the world and referred to the international sales figures and advertising expenditure for the years from 2003 to 2011.  His evidence was unchallenged.

Ms Gerson, Manager of Design and Concept Operations

57. The plaintiff’s 2nd witness Ms Gerson is the Manager of Design and Concept Operations of Juicy Couture.  She was a concept designer of Juicy Couture since 21 July 2008.

58. She gave evidence on how JCI was set up in Los Angeles by its founders and how the business was developed.  She referred to the incorporation of the word mark “JUICY” into slogans some of which have been referred to above.  She referred to JCI’s use of the “JUICY Crown Design” and its variations.  She also referred to JCI’s use of the various design elements referred to above. 

59. She then referred to some US and UK magazines and newspapers in which JCI had advertised the Juicy Couture fashion products. I have already mentioned that a number of issues of the Seventeen magazine published in 1996-1998 containing the advertisements had gone into the archive of the Hong Kong City Hall Library.  JCI also advertised Juicy Couture in magazines in languages other than English in other countries in 2005 and 2006.

60. She then referred to the different elements of design in the get-up of Juicy Couture as pleaded in the Statement of Claim which have been referred to above.  She also said that JCI initially did not spend much money on advertising and it became famous because many celebrities appeared in TV shows and movies wearing Juicy Couture fashion products.

61. She then referred to the defendants’ fashion products, signs and advertisements and said that the defendants had copied Juicy Couture’s look and feel in:

(i) geographical locations for product photographs;

(ii) similar pink colour combination;

(iii) similar design on patterns involving tartan, kisses, two girls, stripes, disco ball, oversized sunglasses, tartan and graffiti, floral etc with the defendants’ Juicy Girl mark;

(iv) sales and promotion of velour tracksuits using the Juicy Girl mark; and

(v) the use of a JG logo which looks like the plaintiff’s JC logo and slogans and words incorporating the word “Juicy”.

62. In cross-examination, she agreed that some design elements used by the plaintiff and JCI like the Gothic font style and tartan were also used by some other famous brand names as part of their get-ups. She also agreed that the pink colour used by the plaintiff was not always found in the defendants’ shops and the defendants sometimes used a different pink colour.

Ms Yim, General Manager for Juicy Couture in Imagine X Group

63. The plaintiff then called one Ms Yim, the General Manager for Juicy Couture in a company called Imagine X Group of Hong Kong (a subsidiary of Lane Crawford) which is the current exclusive distributor of Juicy Couture in Hong Kong, Macau and the mainland.  Ms Yim produced some press clippings of Juicy Couture from 2006 to 2010 and of the defendants’ Juicy Girl from 2007 to 2010. 

64. She referred to the JUICY Crown Design and said that the elements that constitute the logo were sometimes used individually and sometimes collectively by JCI.  The brand name JUICY COUTURE always appeared.  The Crown also appeared in every season.  The two terriers and the Gothic or Cloister font were frequently used.

65. She also gave evidence that her employer had incurred advertising expenditure on Juicy Couture fashion products and sponsored clothing for use by magazines in shooting photos.  She also said that many consumers were misled into regarding Juicy Girl as a second line of Juicy Couture.

Ms Pandora Law, Senior wholesale Manager of Imagine X

66. The plaintiff’s next witness Ms Pandora Law was the Senior Wholesale Manager of Imagine X.  She referred to the purchase orders placed by her employer with JCI and invoices issued by JCI to her employer. They were in connection with the sale of Juicy Couture fashion products to Hong Kong from 2001 and 2008.  She testified to the opening of the various free standing Juicy Couture shops in Hong Kong.  She also mentioned about the revenue generated to Lane Crawford by the sale of Juicy Couture fashion products and the Lane Crawford’s advertising expenditure for Juicy Couture all as pleaded in the pleadings.  She in particular referred to advertising in many newspapers and magazines in Hong Kong from late 2006 to May 2010.

67. She also referred to the various design elements and their variations used by Juicy Couture.  They are the JUICY Crown Design, the trade marks presented in Gothic fonts and the pink colour scheme.  She also referred to the various slogans of Juicy Couture some of which are referred to above.  She also produced photographs of the signages, billboards, posters, escalator panel wraps and planners used by Lane Crawford in the shops of Juicy Couture or other places to promote Juicy Couture in Hong Kong. 

68. She also mentioned about various promotional events like private preview or cocktail party in which the fashion products of Juicy Couture were promoted.  She also referred to some US TV dramas aired in Hong Kong TV channels which depicted TV celebrities wearing fashion products of Juicy Couture.

69. She then referred to the defendants’ use of the word “Girl” in conjunction with the mark “Juicy”, a crown device, the Gothic or Cloister font and cursive font for “Juicy Girl” or “JG”, the incorporation of “Juicy Girl” into slogans or epithets appearing on products, the use of the pink in pantone 182 with dark brown in pantone 7533 as background and the use of “J” and “JG” as logos in forms that are visually very similar to the mark “J” and “JC” of the plaintiff.  She said the defendants’ use of these design elements gave the consumer the false impression that the Juicy Girl products were associated with Juicy Couture.  She said the defendants were making a deliberate attempt to ride on the plaintiff’s goodwill.  She also referred to the defendants’ Juicy Girl shops opened since 2007 which were likely to be taken as a secondary line of the plaintiff.  The pink colour theme, the crown device and the “JC” sign were used in some of the shops.

70. She also referred to the defendants’ the goods sold to an employee of the plaintiff’s former solicitors on 6 March 2008 with sewn-on label, hang-tag, receipt and shopping bags which all had design elements that made them appear to be of or associated with the plaintiff.

71. There was another purchase by the plaintiff’s representative of the defendants’ good on 9 April 2010.  The sales memo again showed “Juicy Girl” in cursive font.  “Juicy Girl” and “JG” in Cloister fonts and cursive fonts also appeared in the photographs of the defendants’ then products like hang-tags, labels and shopping bags.  Many of them were also in light pink colour similar to the plaintiff’s colour scheme.

72. There was another purchase of a lady’s dress on 10 June 2012 from the defendants’ shop in Queensway Plaza by a representative of the plaintiff.  The sewn-on label again showed “JG” and “Juicy Girl” in brown colour Cloister fonts.  They are very similar to the plaintiff’s “JC” and “Juicy Couture” design elements.  The hang-tag also had the same marks in cursive fonts.  Ms Law also referred to the defendants’ websites with addresses registered in 2006 as www.juicygirl.us and registered in 2007 as www.juicylicious.us.  They showed an association with the USA which was a misrepresentation.

73. Ms Law also referred to the defendants’ Fall/Winter 07/08 catalogue with photographs.  She said that the catalogue used “Juicy” and “Juicy Girl”, “JG” in Cloister font, the crown device with “JG” or “Juicy Girl”, the domain name “www.juicygirl.us”, the slogans and the prominent “JG” logos.  They are very similar to the plaintiff’s design elements.

74. Ms Law also referred to the defendants’ launching of bus wrap and taxi wrap advertising campaigns shortly after Lane Crawford had done the same in Hong Kong for Juicy Couture. 

Ms Nichola Kung, consumer witness

75. The plaintiff then called three consumer witnesses.  The plaintiff located these witnesses because they were acquainted with one Ms Lee of the plaintiff’s solicitors.  The first witness Ms Nichola Kung was a solicitor trainee.  She first came across the Juicy Couture brand probably at sometime between 2003 and 2005.  She had been to various Juicy Couture stores in Hong Kong.  She first came across the defendants’ Juicy Girl brand at sometime between 2007 and 2009.  At that time, she was under the impression that the Juicy Girl brand was related to the Juicy Couture brand.  She explained in oral evidence that she had this impression because both brands both used the word “Juicy”.

Ms Yu, consumer witness

76. The next consumer witness Ms Yu was an Assistant Manager of PricewaterhouseCoopers.  She said she was familiar with the Juicy Couture brand as she had seen her friends wearing clothing of this brand.  She first came across this brand in 2002 or 2003 when she was studying at a high school in the UK.  She visited the Juicy Couture shops in Hong Kong in 2006 or 2007.  She was aware that the Juicy Couture brand used Gothic font for its brand name.  She had heard of her friends referring to products of this brand as “Juicy products” and she would take “Juicy products” to mean products of the Juicy Couture brand.

77. When she first came across the Juicy Girl brand, she thought it was a junior brand of Juicy Couture.  She explained in oral evidence that she had this idea because of the word “Juicy” and it was common for famous brands to have sub-brands.

Ms Clara Li, consumer witness

78. The last consumer witness Ms Clara Li is a paralegal. She came across the Juicy Couture brand possibly in mid-2000.  She had walked past Juicy Couture stores in Hong Kong.  She was familiar with the Juicy Couture brand because she had seen women wearing the velour tracksuits of this brand.  She noticed the distinctive word “Juicy” printed on the back of the Juicy Couture tracksuit pants of her friend.  She was also aware of the Gothic lettering of the brand name and the slogans of this brand.  She had been to a Juicy Couture shop in Hong Kong but had not purchased anything.  She had also seen celebrities wearing Juicy Couture clothing and appearing in magazines and television.

79. She had also come across the Juicy Girl shops.  When she first saw such a shop, she thought that it was selling a younger line of Juicy Couture.  She had this impression because both names had the word “Juicy” and were thus similar.  She knew that consumers generally referred to “Juicy Couture” as “Juicy”.  She thus assumed that Juicy girl was a younger range of Juicy Couture.

Internet dialogues

80. The plaintiff also asked the court to consider some dialogues in some internet dialogues purportedly showing the confusion of some consumers on whether Juicy Girl was of or associated with Juicy Couture.  There is no indication as to who were the authors of these dialogues or whether these were genuine dialogues.  I do not think it safe to place weight on them.  I ignore them.

THE DEFENDANTS’ EVIDENCE

   Suen Lui

81. The key witness for the defendants is the 3rd defendant, Mr Suen Lui also known as John Suen.  He made two witness statements on 3 September 2012 and 30 October 2013.  He said in the first witness statement that after finishing his education in 1993, he joined his father’s business in the wholesale business of Japanese and European fashion items.  The 2nd defendant who is now his wife also worked there.

82. In about August 1995, he started his first fashion retail outlet called “MY DAY”.  It was in Pak Sha Road, Causeway Bay. It marketed fashion items imported from Japan and Europe.

83. His first daughter, Alice Suen, was born in late 1995.  Her nickname is Juicy.  He produced a CD containing some video clips of his family life.  Some clips show his parents calling his daughter as Juicy.

84. The financial crisis struck Asia in 1997.  The Korean won dropped from 1,700KRW per US$1.00 to 800KRW per US$1.00.  Mr Suen thought that that was an opportunity to source ladies fashion items from South Korea.  He and the 2nd defendant started to import them from South Korea in early 1998.  They also ordered their own marks and labels from their mark supplier Hang Fat Industrial Company in Hong Kong to affix on these fashion items.  They sent the marks and labels to their agent in South Korea, one Cheung Kong Trading Company (“Cheung Kong”) to replace the original Korean marks, if any, on the fashion items.  The items with their marks and labels would then be imported to Hong Kong for sale.

85. One of the labels they used was “Juicy Girl”. This was created by adding the word “Girl” to “Juicy”, their daughter’s nickname.  At that time, they had not heard of “Juicy Couture” yet.

86. In order to launch products of their own brands, they also opened their first Bella shop in March 1998 in Russell Street, Causeway Bay.  Their Juicy Girl brand of products were sold in this shop together with other brands.  They also set up the 4th defendant at that time to operate the business of Bella.

87. They opened the 2nd Bella shop in November 1998 on Carnarvon Road, Tsimshatsui.  The shop was changed to Juicy Girl in 2010 and was their 11th Juicy Girl shop.  It operated until early 2012.

88. In October 1999, they changed the name of their first retail shop from “MY DAY” to “Bella”.  This was the 3rd Bella shop.  It operated to February 2005.

89. In November 1999, they opened the 4th Bella shop in D’aguilar Street, Central.  It operated until February 2002. 

90. In April 2001, they opened another shop called “PEPPO” in Matheson Street, Causeway Bay.  A small quantity of Juicy Girl fashion wear was available in this shop.

91. The 5th Bella outlet was opened in December 2001 on Lan Fong Road, Causeway Bay.  It operated until October 2008.  The 6th Bella outlet was opened in June 2003 in Maritime Square, Tsing Yi Island.  It was closed down in December 2004.  The 7th Bella shop was opened in October 2003 in an upstairs unit in Hanford Fashion, Nathan Road.  The 8th Bella shop was opened in December 2003 also in an upstairs unit in Hang Lung Centre, Causeway Bay.  These 7th and 8th Bella shops were changed to the 6th and 7th Juicy Girl shops in March 2009. 

92. In March 2004, they opened another shop in Lan Fong Road.  It was called “CHANGE”.  It was mainly to market Juicy Girl brand of ladies fashion wear.  It was closed in February 2007.

93. In October 2004, they opened the 9th Bella shop in Harbour City, Tsimshatsui.  It was also closed down in February 2007.

94. In December 2004, they opened the 2nd CHANGE shop at Queensway Plaza, Admiralty.  Its was changed to the 5th Juicy Girl in March 2009.  It was closed down in October 2011.

95. The 10th Bella shop was opened in April 2005 in Pottinger Street, Central.  It was closed down in August 2007.  The 11th Bella shop was opened in August 2005 in Kimberley Road.  It was closed down in September 2008.  The 12th Bella shop was opened in September 2005 at SOGO Department Store, Tsimshatsui. 

96. The 13th Bella shop was opened in December 2005 in SOGO Department Store, Causeway Bay.  It was changed to the 2nd Juicy Girl shop in about November 2007. 

97. The first Juicy Girl shop was opened in Yiu Wah Street, Wanchai in October 2007.  That was some ten months after the opening of the first Juicy Couture shop in the IFC Mall in Hong Kong on 14 December 2006. The first Juicy Girl shop operated until October 2009. 

98. The 2nd Juicy Girl shop was converted from the 13th Bella shop in SOGO Department Store, Causeway Bay in about November 2007.

99. The 3rd Juicy Girl shop was opened in August 2008 on Kimberly Road.  It was closed down in early 2012.

100. The 14th Bella shop was opened in February 2009 in Hysan Avenue.  It had only a short term lease and was closed down shortly afterwards.

101. The 4th Juicy Girl shop was opened in Telford Garden, Kowloon Bay in February 2009.  I have already referred to the 5th, 6th and 7th Juicy Girl shops all converted from other shops in March 2009.  The 8th Juicy Girl shop was opened in August 2009 on Lan Fong Road.  The 9th Juicy Girl shop was opened in November 2009 on Hanoi Road.  The 10th Juicy Girl shop was opened in Luk Yeung Galleria in Tsuen Wan in June 2010.  I have already referred to 11th Juicy Girl shop above which was converted in October 2010 from the 2nd Bella shop on Carnarvon Road.  The 12th and last Juicy Girl shop was opened in June 2012 in APM Plaza, Kwan Tong.

102. Save and except the 14th Bella shop in Hysan Avenue which was on a short term lease, all shops opened or given a new name since October 2007 were Juicy Girl shops.  Of the twelve Juicy Girl shops, two came into being in 2007, one in 2008, six in 2009, two in 2010 and one in 2012.

103. Mr Suen said that between 1998 to 2006, 25% to 35% of the total turnover was attributed to Juicy Girl brand products.  By 2007, more than ½ of the revenue came from these products.  The percentage continued to increase. 

104. The defendants also registered their Juicylicious.us website in 2007 and marketed the “Juicylicious” brand as well.  Mr Suen said that from 2009 onwards, virtually all the defendants’ sales turnover was from the Juicy Girl or Juicylicious brand of products.  They had also marketed Juicy Girl footwear since early 2000.

105. The defendants also promoted the Juicy Girl brand by distributing catalogues for Fall/Winter 07/08, Fall/Winter 08/09 and Spring/Summer 09.  They also promoted the Bella and Juicy Girl brands by supplying free ladies fashion wear of these brands to some actresses in sponsorship and promotional activities.  They also advertised these brands.

106. Regarding the logo of “JG” in Gothic font with a crown sitting on top, Mr Suen said that he had commissioned a design company, Comma Limited (“Comma”) to design a device for him.  Comma produced three designs in mid-December 2006.  They are shown in Appendices C1 to C3 hereto.  Mr Suen considered them too complicated.  His in house designer then worked on the design in Appendix C1 and produced the device shown in Appendices B1 to B4. These designs and their variations were used by the defendants.

107. In his 2nd witness statement he produced a lot more documents including airway bills to evidence his importation of fashion products from South Korea since 1998 through his South Korean agent Cheung Kong, evidence of payment to Cheung Kong through Cheung Kong’s agents in South Korea and documents proving that the travels taken by him and the 2nd defendant to South Korea in 1998 and 1999.

108. He also produced some documents showing the defendants’ purchase of labels and marks of the Juicy Girl brand from 1998 to 2005 (C1060-1080 and D Tab 8).  There are also documents proving the defendants’ purchases of clothing accessories and shoes under the Juicy Girl mark in 2003 to 2005 (C1191 to 1198).

109. Regarding the figures of turnover, Mr Suen said that prior to 2005, he did not have a system to set apart the turnover of the Juicy Girl brand from other brands despite the substantial sales of this brand.  Hence, he could not produce the sales figures of this brand prior to 2005.  He however produced a table (C1250) purportedly showing some of the amounts he paid for sourcing Juicy Girl products from South Korea.  He also produced some tables showing the defendants’ purchases in 2003 and 2004 (C736 – 952).

110. Mr Suen further said that from 2005 onwards, he had a new computer software which segregated the turnover for different brands.  The turnover for 2005 to 2007 for Juicy Girl brand are as follows:

2005	2006	2007
HK$9,537,440	HK$14,087,542	HK$36,026,686

111. Regarding the plaintiff’s complaint that the defendants had used a shade of pink of Pantonte 182 with a brown Pantonte 7533 which was the colour theme used by the plaintiff, Mr Suen explained that he had originally used purple suede as the decoration material in his Juicy Girl shop in Guangzhou and his first few Juicy Girl shops in Hong Kong.  The idea of using this material came from his designer Mr Zhou Jianfeng of Yijun Decoration and Design Company in Guangzhou.  The suede material however became dusty and dirty easily.  He then explored for a new material for his new shops.  He considered using polyurethane as it was easy to clean and maintain.  He had a friend, one Mr Danny Lai who was a supplier of polyurethane material.  Mr Lai told him that there was no polyurethane in purple colour and suggested to him a metallic fuchsia colour.  It was similar to the purple colour that he had used.  He then used polyurethane of metallic fuchsia colour to decorate his new shops.  His use of this material had nothing to do with the plaintiff’s use of the pink colour.

112. He also repeated his denial of copying the plaintiff’s crown device.  He produced more drawings of his marks and tags bearing his crown and Juicy Girl designs.  He said that the crown design was a common design feature in the fashion industry.  He had not asked the design company, Comma or his in house designer to refer to the plaintiff’s crown design in designing his device.  He also produced some copy designs of some other fashion brands that also used a crown design (C1848, 1849, 1881-1887 and 1889-1909).

113. Regarding the shooting of product photographs in famous locations in California for use in catalogues, Mr Suen said that this was a common thing to do by fashion brands and his wife indeed wanted their photographer to portray the “California sunshine” in the photographs.

114. The defendants had the idea of shooting photographs in California back in mid-2010.  Mr Suen produced an email with a quotation from his photograph production company dated 26 August 2010 (C217) and a bundle of email communication with the production company since mid-2011. The defendants’ catalogue for Spring/Summer 2012 was published in early 2012. But the preparation had started many months before that.  Hence, the defendants could not have copied from the plaintiff’s Spring/Summer catalogue 2012.  Mr Suen also denied that the use of pink colour in the defendants’ catalogue was to imitate the plaintiff’s pink colour theme but was inspired by the fuchsia colour of the plaintiff’s decoration material used since about late 2008.

115. Regarding the alleged similar designs or patterns with the use of tartan, kisses, two girls, stripes, disco ball, oversized sunglasses, graffiti and “JC looked alike slogans”, Mr Suen denied that the defendants had made use of these elements to pass-off an association with the plaintiff.

116. He said that the defendants’ tartan photo was taken on 23 June 2010 which was well before the plaintiff’s publication of its Fall 2010 Hong Kong Catalogue which featured the tartan.

117. The defendants had also used the “kisses design” in a photo taken on 13 August 2008 and the plaintiff only used the kisses design in its New York store in January 2009.  The “two girls” and “stripes” designs were also commonly used.

118. The defendants had also used a disco ball in a photograph in their Fall/Winter 2007/2008 catalogue well before the plaintiff’s Fall/2009 advertising campaign.

119. The defendants also used the floral design in September/October 2010 when they prepared their Spring/Summer 2011 catalogue.  The plaintiff only used the floral design in its Spring/Summer 2011 advertising campaign.

120. Regarding the use of velour in making tracksuits, Mr Suen referred to a few other brands that also used this material for tracksuits.

121. For the “JC look alike slogans”, Mr Suen explained that it was natural and normal for a company to adopt some slogans in its advertising campaigns.  The defendants used “JG”, the acronym of their Juicy Girl brand as another mark or logo and incorporated it in their advertising slogans.  He denied that the defendants had copied the plaintiff’s slogans.

122. Regarding the bus “wrap” advertising campaign, Mr Suen denied that the defendants did it by following the plaintiff.  He said he was approached by Buspak Advertising (Hong Kong) Limited in March 2009 and, after discussing the matter with his wife, he took up the bus “wrap”offer to advertise.

123. Regarding the taxi “wrap” advertising campaign, he also denied of following the plaintiff.  He said he used this advertising method because it was the cheapest comparing with advertising in the MTR, on buses or trams.  He also referred to other means of advertising that he had used like sponsoring a “Juicy Girl” song in a cantopop concert and the sponsoring of the fashion wear of a TV news anchor.

124. The defendants had also organised fashion shows and other events and engaged celebrities to promote the Juicy Girl brand.

125. Mr Suen also referred to the use of fonts.  He said the Gothic, old English or Cloister fonts were widely used in the fashion industry.  He also produced some printings of other fashion brands that used such fonts in their marks and brand names.

126. In cross-examination, he admitted that prior to March 2003, a customer had asked him at his Russell Street shop on whether he knew that Juicy Couture brand garments (mistakenly referred to as “Juicy Culture” brand) were on sale in the Lane Crawford Shop in Times Square.  Russell Street bounds the side of Times Square.  But he denied of having walked across the road to Time Square for a look at the Juicy Couture garments.

127. He also admitted that he had instructed solicitors in March 2003 to register “Juicy Girl” as a trade mark, but the application was not allowed by the Registry on the ground that “Juicy Girl” was in conflict with the marks “Juicy couture” and “Juicy Jeans”.  But he said he did not know that the Registry was referring to the conflict caused by the word “Juicy”.

128. He also admitted that he first saw a Juicy Couture shop in Las Vegas in 2006.

Ms Au Yeung Yau Hing, a former sales lady

129. The defendants also called a former sales lady Ms Au Yeung Yau Hing.  Ms Au Yeung said she had started working as a saleslady in about 1990.  She was in fact shown in one of the photographs of a defendants’ shop produced at the trial. 

130. She said in cross-examination that her English witness statement was translated by Mr Suen to her and she signed it afterwards.  The translation was not done to her by a clerk of the defendants’ former solicitors and she did not sign the witness statement at the office of those solicitors.  Since her witness statement was not made as it was purported to have been made, I ignore it in total.  I only refer to her oral evidence.

131. She joined the defendants’ Bella group in early 1999 and worked at the Russell Street shop in Causeway Bay.  She also helped out at the Bella shop in Pak Sha Road, Causeway Bay.  She had marketed many different brands of garments with some being European brands and some local brands but no American brand.  In order to answer customer enquiries, she had asked Mr Suen the country of origin of the brands.  Juicy Girl was the main local brand she had marketed. 

132. She left the defendants in July 2001 and rejoined them between 2006 to 2007.  She then worked at the shops in Pottinger Street, Lan Fong Road and Admiralty.  She noticed that the Juicy Girl range of products had widened since she had left in 2001.  There were accessories like shoes and belts.  She finally left the defendants in May 2011.

133. When she was at the Russell Street shop in 1999, the Juicy Girl garments were selling at several hundred Hong Kong dollars apiece and European garments were selling at over a thousand dollars apiece.  Though there was then no computer system to record the sale of individual brands, she could tell which brand was selling better. 

134. In the light of what she had purportedly said in her witness statement, I do not think the plaintiff has been surprised by her oral evidence.

Mr Zhou Jianfeng of Yijun Decoration and Design Company

135. The next defence witness is Mr Zhou Jianfeng of Guangzhou Yijun Decoration and Design Company Limited (“Yijun”).  Mr Zhou confirmed that the English witness statement had not been interpreted to him.  He only used a translation software on the internet to translate it.  When he was satisfied with the correctness of the statement as translated, he signed it and passed it to a representative of the defendants’ former solicitors at the Guangzhou East Railway Station.  Since the witness statement was not made as it purported to have been, I ignore it in total.  I just refer to Mr Zhou’s oral evidence.

136. Mr Suen engaged Yijun in late 2006 to design a new retail outlet in Guangzhou.  This job was the first job given by Mr Suen to Yijun.   The outlet was for marketing fashion wear for ladies between 25 and 35.  This intended business of the shop was the only design instruction given by Mr Suen to Mr Zhou.  Mr Zhou decided to use a glassy design theme for the outlet.  The outlet was formally opened on 1 May 2007 but ceased business later.

137. Mr Suen later asked Mr Zhou to design the first Juicy Girl shop in Yiu Wah Street, Hong Kong.  This was Mr Zhou’s first design job in Hong Kong.  Mr Suen again did not give him any specific design instruction except that there should not be too many mirrors in the shop.  Mr Suen considered the decoration of the Guangzhou shop too hard and wanted the Yiu Wah Street shop to be warmer.  Mr Zhou then used pink suede pouches to create a soft look.

138. After the first Juicy Girl shop, Mr Suen engaged Mr Zhou to design and decorate other Juicy Girl shops in Hong Kong.  Mr Zhou recalled that the next two Juicy Girl shops were designed in similar style and colour with similar materials as the first one.  The 2nd Juicy Girl shop was in Sogo Department Stall and opened in November 2007.

139. In about 2009, when Mr Zhou was asked to design the fourth Juicy Girl shop, Mr Suen suggested to use polyurethane of fuchsia colour as the decoration material for easy cleaning.  This material was shiny and its colour was close to the colour of the suede previously used.  This material was used for the later Juicy Girl shops too.   

140. Mr Zhou had designed more than 10 Juicy Girl shops for the defendants.  Some of them were converted from Bella shops.  Mr Zhou maintained a uniformed style for all Juicy Girl shops.

141. Mr Zhou also confirmed that the Juicy Girl design used as the name of the Guangzhou shop at the shop front (C456-457), the design of the letters “JG” in Gothic font with a crown sitting on top and the words Juicy Girl in Gothic font underneath (C452, 454, 457, 458 and 462) and the design of the word “juicylicious” (C455, 459 and 461) were all given by Mr Suen to him before he had started with the making of design drawings for the Guangzhou shop.  The design of the words “Juicy Girl” (C457, 461, 463 and 465) was also provided by Mr Suen to him.  (These designs were used in the Guangzhou shop and other shops in Hong Kong, the websites and catalogues of the defendants and are shown in Appendices B.)

142. The defendants had also used the Juicy Girl sign with a crown in a wholesale Juicy Girl shop that was designed by him (C398).

143. In the light of what Mr Zhou had purportedly said in his witness statement, I do not think the plaintiff has been surprised by his oral evidence.

Mr Yi Kai Wen of Global-Tech System

144. The defendants’ next defence witness is Mr Yi Kai Wen of Global-Tech System.  The defendants called him to say that they did not intend to claim falsely in their web sites that their goods had a US origin.

145. Mr Yi used to be one of the operators of Webeye International Ltd. until 2009 when he set up Global Tech.  Mr Suen was a customer of Webeye in about 2003/2004.  Webeye supplied webcam control systems and IT-related services to the defendants’ five retail outlets.  Mr Yi was responsible for providing the services to the defendants.  The defendants were still his customer at Global Tech.

146. In about 2006, Mr Suen asked Mr Yi for assistance to register juicygirl.com as the domain name for the defendants’ Juicy Girl brand.  Webeye was not in the business of registering domain names. Mr Yi then personally assisted Mr Suen on this matter on a complimentary basis.  He did not know how to register a domain name and asked a colleague Ms Alison Law to help.  Ms Law later told him that juicygirl.com had been registered by a third party, but juicygirl.us was available.  After obtaining Mr Suen’s approval, he asked Ms Law to register juicygirl.us for the defendants.  That was done on 2 June 2006.

147. Later on, Mr Suen asked him to register a domain name for the juicylicious brand.  He enquired with Mr Suen on whether juicylicious.us was acceptable as this would look consistent with juicygirl.us.  After obtaining Mr Suen’s approval, he asked Ms Law to proceed with the registration.  This was done on 9 February 2007. 

148. Mr Yi also said that Mr Suen had never instructed him to obtain domain names ending with “.us”.  His evidence was corroborated by Mr Suen.  He also said that Mr Suen had not asked him to locate Ms Law to give evidence and Ms Law had left Global Tech for several years.

149. In cross-examination, Mr Yi confirmed that he had procured the registration of “BellaHongKong.com” for Mr Suen on 6 June 2005. 

150. He also said that in 2006 when Mr Suen wanted to register a domain name for juicygirl, he had checked and found endings of domain names like “.org”, “.net”, “.us” and “.uk”, but he did not know what they meant. He thought the simple “.us” was the webspeak for “us” or “ourselves” and suggested it to Mr Suen.  He could not recall if he had tried to obtain for Mr Suen the domain names of “juicygirlhongkong” or “juicygirlhk”.

151. He did not know that “.com.hk” was available in 2007.  He was only aware of it in 2009.  But I note that the statistics of Hong Kong Domain Name Registration Co Ltd show that there were over 90,000 registered domain names ending with “.com.hk” at the beginning of 2005.

Mr Lee Kin Kong of Hang Fat Industrial Company

152. The evidence of the last witness of the defendants, Mr Lee Kin Kong is not disputed.  Mr Lee said that he was the proprietor and manager of Hang Fat Industrial Company (“Hang Fat”) and he set it up in about 1990.  Its business was to print trade marks and the making of hang-tags and knitted marks.  It began supplying knitted marks and hang-tags to Mr Suen in about 1998.  The goods supplied included the hang-tags, principal marks and washing marks for the Juicy Girl brand. 

153. Some invoices and receipts issued by Hang Fat to the defendants had been produced.  From the documents produced and summarised by the plaintiff in tap 8 of bundle D, the defendants had ordered from Hang Fat the following quantities of Juicy Girl marks, Juicy Girl washing labels and other tags in the years from 1998 to 2005:

	Juicy Girl Mark	Juicy Girl  Washing Label	Juicy Girl Other Tags
1998	15,660	12,120	14,900
1999	6,000	3,600
2000	6,000	7,200	7,200
2001
2002	6,480
2003	21,760	7,200	9,400
2004	6,120	4,200
2005	23,184	9,600	12,000

Rejection of tables

154. In the course of his oral evidence, Mr Suen also sought to produce some tables of figures to show the turnover of Juicy Girl brand for the years of 1998 to 2005.  I did not admit these tables.  The reason being that they had been available for years.  Their relevance was obvious.  But they were not produced even when Mr Suen made his 2nd witness statement.  It was too late to have them admitted in the course of his oral evidence.  Their contents also needed to be explained by the accountant who prepared them, but the accountant was not called.  Furthermore, the source documents from which the figures in them were obtain were not identified or produced.  In order for these tables to be relied on by the defendants, there had to be a large scale discovery of documents which could not be undertaken in the middle of the trial. Such discovery was absolutely necessary as the tables were only presentations of facts contained in the documents.  Furthermore, the source documents regarding the manufacture of Juicy Girl brand garments in the mainland had been made the subject of discovery by my order dated 13 August 2013, but no such document had been produced.  Hence, I rejected these tables when Mr Suen sought to produce them in the course of his oral evidence.

ANALYSES OF THE PLAINTIFF’S EVIDENCE

155. The defendants have not challenged the factual evidence proffered by the plaintiff’s witnesses.  They have also not challenged the three consumer witnesses.  I however take it that they do not accept that they had copied the logo, marks and get up of the Juicy Couture brand.  I also take it that they do not accept that their Juicy Girl logo and marks including the “JG” sign and the get up in their Juicy Girl shops are similar to those of the plaintiff.  This is so despite their challenge against the plaintiff for using the Juicy Couture mark on the ground of infringement of their Juicy Girl mark. I accept the plaintiff’s factual evidence but the issues of infringement of trade mark and passing-off are for my decisions.

ANALYSES OF THE DEFENDANTS’ EVIDENCE 

156. I will deal with the evidence of the short witnesses first before dealing with the evidence of Mr Suen Lui, the defendants’ key witness. 

Ms Au Yeung Yau Hing

157. I have already excluded Ms Au Yeung’s witness statement.  I did so not because of her fault.  I will only consider her oral evidence.

158. Ms Au Yeung was a direct and forthcoming witness.  Her answers were directed to the questions.  She made no attempt to embellish anything she could not recall.

159. She recalled having marketed garments of the Juicy Girl brand and many other local and European brands.  She recalled that after she had left the defendants in 2001, the Juicy Girl range of products had widened to include accessories like shoes and belts.

160. There is some slight contradiction in her evidence about the locations for display of local brands and foreign brands. That minor inaccuracy does not affect the overall truthfulness of her evidence.  I accept her evidence as true and correct.

Mr Zhou Jianfeng

161. I have also excluded Mr Zhou’s witness statement through no fault of his.  Mr Zhou is also a good and responsive witness.  He always tried to answer the questions directly.  There is a ring of truth in what he said.  His evidence is also supported by the defendants’ photographs. I accept his evidence.

Mr Yi Kai Wen

162. I cannot accept that Mr Yi could have been so ignorant as to take “.us” as the webspeak for “us” or “ourselves”.  Even if he were unaware of the meaning of the “.us” domain name ending, Ms Law who procured the registration would have told him that it signified a domain name of US origin or domicile.  I also do not think that Mr Suen and his wife would have been as ignorant as Mr Yi had portrayed himself to be.  I also cannot accept that Mr Yi was only aware of the availability of “com.hk” in 2009 as there were already over 90,000 “com.hk” at the beginning of 2005.  I cannot accept that Mr Yi, who was working in a computer related field, could be so ill informed and ignorant.

163. Furthermore, he had already registered a domain name “BellaHongKong.com” for the defendants on 6 June 2005.  That was nearly a year before the registration of domain name “juicygirl.us”.  If the domain name “juicygirl.com” was unavailable, he could have tried juicygirlhk.com or juicygirlhongkong.com rather than a name ending with “.us”.  I reject Mr Yi’s evidence as it is unbelievable.  I find that Mr Yi had on the instructions of Mr Suen deliberately procured the domain names juicygirl.us and juicylicious.us for the defendants so that they could pass-off these websites as sites domiciled in the US.

Mr Suen Lui

164. Mr Suen is the key witness of the defendants. His wife, the 3rd defendant has not testified.  Mr Suen’s evidence covered all aspects of the case. 

165. He said the nickname of his eldest daughter is Juicy.  This is supported by some family video clips.  The plaintiff does not dispute this evidence.  The plaintiff also does not dispute that he and the 3rd defendant had imported garments into Hong Kong for sale.  There is also no dispute on the evidence of Mr Lee Kin Kong of Hang Fat that the defendants had ordered from Hang Fat marks, labels and tags of various brands including the Juicy Girl brand.  The quantities of the marks, labels and tags of the Juicy Girl brand purchased from Hang Fat from 1998 to 2005 have been set out in tap 8 of bundle D and quoted above.

166. I have also accepted the evidence of Ms Au Yeung.  I find that the 2nd and 3rd defendants and the 1st and 4th defendants (since their incorporation) have marketed garments in Hong Kong by retail under the Juicy Girl brand from 1998 and continuously to and after the commencement of this action. 

167. However, the evidence available regarding such sale up to but before the revamping of this brand in December 2006 does not show that there was any particular design for this brand name.  There is no evidence that the word mark “Juicy Girl” was presented in any artistic style or with any embellishment.  There is also no evidence that the word mark bore any similarity or resemblance to the marks and signs in Appendices A hereto.

168. From the evidence of Mr Lee Kin Kong, Ms Au Yeung and Mr Suen himself, it is clear that the defendants were marketing a number of brands including the Juicy Girl brand and some fakes of foreign brands. 

169. I cannot tell if all invoices for the defendants’ purchases of marks and labels from Hang Fat had been produced as the purchases took place years ago.  The invoices were produced in batches and not all at one go. Hence, I do not want to conclude on the quantity of garments that the defendants had sold under the Juicy Girl brand from the quantities of marks and labels of this brand recorded in the invoices issued by Hang Fat and produced in this trial.  The Hang Fat’s invoices do not show that the quantities of marks, labels and tags ordered for the Juicy Girl brand were overwhelming comparing with the other brands.

170. Though I have found that the 2nd and 3rd defendants and the 1st and 4th defendants (since their incorporation) have been marketing by retail the Juicy Girl brand of fashion garments, I find that some of the turnover figures pleaded for this brand are doubtful.  There is no proper documentary support for the turnover figures for 1998 and 1999 at HK$3,549,147.50 and HK$7,068,499.75 respectively.  They are just 25% of the total turnovers for the two years.  I do not accept Mr Suen’s words that it was a co-incidence that they were 25% of the total annual turnovers. 

171. For the turnovers for 2000, 2001 and 2002 at HK$7,987,221, HK$6,725,126 and HK$8,469,698.60 respectively, Mr Suen said that they were based on costs of purchases.  He arrived at these figures by deducting the turnovers of all non-Juicy Girl brands from the total turnovers of these years.  Regarding the turnovers of the non-Juicy Girl brands, he arrived at them by applying a mark up factor to their costs of purchases.  But he did not provide the documentary proof of the costs of purchases.  I do not accept his assertion as reliable.  I do not find what he said for these three years as more reliable than what he said for 1998 and 1999. 

172. For the turnovers for the years of 2003 and 2004 at HK$8,587,004 and HK$11,407,866 respectively, they are again mere assertions and I do not find them reliable.

173. From March 2005, the defendants used a new computer system which recorded the turnover of individual brands.  Mr Suen extrapolated from the turnover for March to December 2005 at HK$7,629,952 to the annual turnover for 2005 at HK$9,346,691.  This is not far from his pleaded turnover for 2005 at HK$9,537,440.  I accept that the turnover of the Juicy Girl brand for 2005 is at about HK$9,346,691.  I also accept that the turnovers for 2006 and 2007 are at HK$14,087,542 and HK$36,026,686 as they are based on figures in the computer system.

174. I now move on to the defendants’ knowledge of the Juicy Couture brand.

175. When the customer told Mr Suen at his Russell Street Bella shop that garments of Juicy Couture brand were available at the Lane Crawford shop across the street, that must have aroused his interest and curiosity as a trader in the fashion market if he was hitherto unaware of this brand.  That conversation must have taken place before March 2003 as the Russell Street shop ceased operation by then.  I find that if Mr Suen was unaware of Juicy Couture hitherto, he would have walked across the street to Lane Crawford to find out what the Juicy Couture garments were like.  I reject his evidence that he was indifferent about Juicy Couture.  That evidence is unrealistic and unbelievable.

176. His awareness of the Juicy Couture brand would have been heightened in April 2003 when his attempt to register Juicy Girl as a trade mark at the Trade Mark Registry had met with difficulty because of conflict with Juicy Couture and Juicy Jeans.  I reject his evidence that he did not read the letters exchanged between his solicitors and the Trade Mark Registry with care, or that he had only paid attention to the word “Girl” and was not aware of the conflict caused by the word “Juicy”.  Such evidence is unreasonable.  He had a university education in Australia and would have encountered no difficulty in understanding the letters. 

177. Mr Suen and his wife had also been to a Juicy Couture shop at Las Vegas though he said he had not gone into it.  But his wife had bought a T-shirt from it.  He had indeed gone into a Juicy Couture shop in Newport.  All these happened in 2006.

178. By then he must have a clear impression of the logo, marks and get up of the Juicy Couture brand.

179. He then engaged Comma to produce different designs for the Juicy Girl logo in December 2006.  The designs created are produced in Appendices C1 to C3 and are dated 14 December 2006.  The logo design in Appendix C1 depicts a core design of the letters “JG” in Gothic font with a small crown sitting on top and the words “Juicy Girl” at the bottom also in Gothic font.  The defendants modified this design to a simpler look by removing the elaborate ornaments from the “JG” core element and added the words “EST 1995” in Gothic font at the bottom as shown in Appendix B1.

180. The Gothic font for “JG” in Appendix B1 is also of the same font type as used by the plaintiff as shown in Appendices A2 to A3 and A5 to A8.  The Gothic font for the words “Juicy Girl” at the bottom in Appendix B1 is however of a different font type and not that used by the plaintiff.  The defendants then modified the design for these words to that as shown in Appendix B4 by using the same Gothic font type as used by the plaintiff.  After this change, the look of the word “Juicy” is almost the same as the word “Juicy” used by the plaintiff in Appendix A2.  There is also similarity between the plaintiff’s design in Appendix A3 and the defendants’ modification of a design by Comma as shown in Appendix B2 bearing in mind that consumers do not place the designs side by side for comparison.

181. The use by Comma of the crown design and the Gothic font for the letters “JG” and the words “Juicy Girl” in the logo appeared to be an attempt to pass-off the Juicy Girl brand as associated with the Juicy Couture brand.

182. The defendants have not made any real attempt to secure a responsible person from Comma to testify on what design instructions it had received from the defendants and why it would have used the crown design and the Gothic font.  Given the fact that the plaintiff’s logo has a prominent crown design and the plaintiff uses the Gothic font quite liberally for its mark “Juicy Couture”, it was more likely than not that Mr Suen should have instructed Comma to incorporate such design elements in designing the “Juicy Girl” logo.  The further modification of a design by Comma to the design in Appendix B2 and the change of the Gothic font type for the words “Juicy Girl” to as shown in Appendix B4 negates all explanations of co-incidence. 

183. I find that the defendants in making a new design for the logo and mark of the Juicy Girl brand was trying to pass-off the Juicy Girl brand as an associated brand of Juicy Couture.  The defendants also started with the decoration of their first Juicy Girl shop in Guangzhou at the end of 2006.  That coincided with their engagement of Comma to design the new Juicy Girl logo.  Mr Zhou, the designer of the Guangzhou shop said that all the designs of logo and marks came from Mr Suen.  The logo designed by Comma and simplified by the defendants to that as appearing in Appendix B1 was used as the shop logo in the Guangzhou shop (C-452, 454 and C-462).  This shop formally opened on 1 May 2007.

184. There was then the 1st Juicy Girl shop in Yiu Wah Street opened in October 2007.  From then on up to June 2012, the defendants opened or converted from other shops another 11 Juicy Girl shops.

185. Though I have found that the defendants in using the new design of logo and marks have tried to pass-off the Juicy Girl brand as an associated brand of the Juicy Couture, I do not think the same can be said about all the other elements of get up of the Juicy Girl brand.  Regarding the use of the pink colour in the Juicy Girl shops, the plaintiff’s witness, Ms Gerson admitted that the defendants sometimes used a different pink colour.  Mr Zhou, the designer of Yijun also explained the change from pink suede to fuchsia colour polyurethane which was occasioned by the change of decoration material.

186. I also find that the shooting of photographs in California for use in catalogues, the use of tartan, kisses, two girls, stripes, disco ball and oversized sunglasses as advertising materials were out of the defendants’ own initiatives.  The defendants might have desired to create an American or Californian mood for the Juicy Girl brand.  That was in line with their use of “.us” as endings to their two domain names.  They were entitled to do so if they did not pass-off as a brand associated with the Juicy Couture brand.  I also do not find the defendants’ taxi-wrap and bus-wrap advertising campaigns objectionable as attempts of passing-off as such are common advertising methods.

FINDINGS ON LIABILITY

Infringement of trade marks

187. I have already held that the plaintiff cannot rely on the circulation of the Seventeen magazine in Hong Kong as the use of its trade marks in Hong Kong.  Hence, it can only rely on its trade marks “Juicy”, “Juicy Jeans” and “Juicy Couture” as registered on 7 April 2000. 

188. I have found that the 2nd and 3rd defendants and the 1st and 4th defendants (since their incorporations) had marketed garments in Hong Kong by retail under the Juicy Girl brand from 1998 and continuously to and after the commencement of this action.  To the extent that the defendants’ use of the Juicy Girl mark might have infringed the plaintiff’s registered trade marks, they can rely on section 19(4) of the ordinance as their defence.

189. Regarding the naming of the shops as Juicy Girl, such shops on the evidence were the source of garments and accessories of the Juicy Girl brand.  Since the defendants were entitled to market their goods under the Juicy Girl brand without infringing the plaintiff’s trade marks, they were also entitled to name their shops selling such goods as Juicy Girl without infringing the plaintiff’s service mark of “Juicy Couture” as registered on 6 September 2006 (see para. 2-118 of Kerly’s Law of Trade Marks and Trade Names, 15th edn).

190. Though the defendants were entitled to use the Juicy Girl mark, they were not entitled to use the mark “Juicy” as that was one of the plaintiff’s registered marks.

191. In the light of the above findings, I further find that the defendants have infringed the plaintiff’s registered trade marks in depicting the word “JUICY” in stylized script in the 1st defendant’s product catalogue as pleaded in para. 18(g) of the Statement of Claim.

Passing-off

192. There is no dispute that garments of the Juicy Couture brand were first sold in Hong Kong at the beginning of 2002.  The defendants do not dispute and there is also ample evidence to show that the Juicy Grown design and variations, the marks “Juicy” and “Juicy Couture” and the letters “J” and “JC” in Gothic, Old English, Cloister or Cusive fonts and the incorporation of “Juicy” or “Juicy Girl” into slogans or epithets are distinguishing features and get up of the garments and accessories of the Juicy Couture brand. 

193. Four Free-standing Juicy Couture shops were also opened in Hong Kong from December 2006 to August 2007.  Substantial advertising expenditure had been incurred to promote this brand.  Substantial revenue was also generated by the sale of garments and accessories of this brand.  There was a leap of turnover from over HK$7,000,000 in 2006 to over HK$85,000,000 in 2007.  I also refer to the evidence of the three consumer witnesses which I have accepted.  In the light of such evidence, I agree with Ms Tam, leading counsel for the plaintiff that goodwill of the Juicy Couture brand should have been established in Hong Kong by mid-2007.

194. Regarding the defendants’ use of the Juicy Girl mark, there is no evidence of its appearance prior to December 2006.  The first time that this mark and its abbreviation “JG” appeared in different forms of design was after the defendants had engaged Comma to revamp the mark in late 2006. 

195. I have already observed that the use by Comma of a crown design and the gothic font for “Juicy Girl” and the letters “JG” in their designs appeared to be an attempt to pass-off the Juicy Girl brand as associated with the Juicy Couture brand.  I also find that the defendants’ modifications of the Comma design to the designs in Appendices B negated any explanation of co-incidence.  I find that the defendants in using the marks and designs in Appendices B were deliberately misleading the public into thinking that the Juicy Girl brand was an associated brand of the Juicy Couture brand.  The plaintiff has therefore proved the passing-off claim.

Joint tortfeasors

196. It is the plaintiff’s case that the acts of the 1st and 4th defendants were committed by them pursuant to a common design of the 2nd and 3rd defendants with the intention of deliberately riding on the plaintiff’s or JCI’s goodwill.  There is no dispute that the 2nd and 3rd defendants were at all material times the sole shareholders and directors of the 1st and 4th defendants and were in sole control of the operations of the companies.  The 2nd and 3rd defendants have also admitted in their defence that they had at all material times run and operated the business of BELLA through the corporate vehicles of the 1st and 4th defendants.  I therefore find that the four defendants were acting as joint torfeasors and are liable to the plaintiff as such.

JUDGMENT

197. I do not propose to enjoin the defendants from infringing the plaintiff’s trade marks registered in Hong Kong as the infringement I have found against them existed only in their catalogues and was very minimal. 

198. For the passing-off claim, I give judgment to the plaintiff in the following terms:

(1)   An injunction to restrain the defendants and each of them, in the case of each of the 1^st and 4^th defendants, whether acting by itself, its directors, servants and agents or any of them, and in the case of each of the 2^nd and 3^rd defendants, whether acting by herself or himself, her/his servants, agents or otherwise howsoever, from passing off the defendants’ retail business as and for that of the plaintiff or in some way associated or connected with or licensed or approved by plaintiff and/or L.C. Licensing, Inc. by the use of the plaintiff’s registered trade marks in Hong Kong and/or the marks and designs contained in the schedule of the Statement of Claim and/or the marks and designs contained in Appendices B hereto;

(2)   An injunction to restrain the defendants and each of them, in the case of each of the 1^st and 4^th defendants, whether acting by itself, its directors, servants and agents or any of them, and in the case of each of the 2^nd and 3^rd defendants, whether acting by herself or himself, her/his servants, agents or otherwise howsoever, from passing off goods not of the design and manufacture of the plaintiff as and for the plaintiff’s fashion products by the use of the plaintiff’s registered trade marks in Hong Kong and/or the marks and designs contained in the schedule of the Statement of Claim and/or the marks and designs contained in Appendices B hereto;

(3)   An Order that the defendants do forthwith take all necessary steps to cancel the domain name registration of “juicylicious.us”;

(4)   An Order the defendants do deliver up to the plaintiff’s solicitors or destroy upon oath of all items, articles and materials in the possession, power, custody or control of the defendants or any of them the continued retention or use of which by them or any of them would offend against the foregoing injunctions or any of them;

(5)   Damages or in the alternative an enquiry as to damages, or at the plaintiff’s option an account of profit in respect of all the wrongful acts committed by the defendants;

(6)   Discovery by the defendants upon oath of all matters relating to para. (5) above pursuant to further directions to be given or agreed;

(7)   An Order for payment by the defendants and each of them of all sums found due to the plaintiff upon taking such inquiry or account together with interest thereon at the judgment rate from the date of writ; and

(8)   Costs order nisi that the defendants do pay the plaintiff 90% of the costs of this action.

I make this costs order nisi because the defendants have succeeded in the issue of section 19(4) of the Ordinance.

 

 

Appendix A1

Appendix A2

Appendix A3

Appendix A4

Appendix A5

Appendix A6

Appendix A7

Appendix A8

Appendix B1

Appendiz B2

Appendix B3

Appendix B4

Appendix B5

Appendix B6

Appendix B7

Appendix B8

Appendix B9

Appendix B10

Appendix C1

Appendix C2

Appendix C3