WONG TO YICK WOOD LOCK OINTMENT LTD v. SHUN SING TRADING LTD

HCIP 41/2021

[2022] HKCFI 3102

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

INTELLECTUAL PROPERTY PROCEEDINGS NO 41 OF 2021

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DECISION

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1.  This was the Plaintiff’s application for summary judgment by summons dated 31 January 2022.

2.  By a Statement of Claim dated 1 September 2021, the Plaintiff claims against the Defendant in respect of trade mark infringement and passing-off.

3.  The background can be briefly stated:

(1)  The Plaintiff is a company that has been carrying on business manufacturing and marketing medicated balm under the name and mark “Wong To Yick Wood Lock Medicated Balm 黃道益活絡油” (“the Plaintiff’s Product”).

(2)  It has pursued inter alia various parties for trade mark infringement and passing-off.  In High Court Actions 599 & 600 of 2014 (“the Prior Case”), it successfully obtained judgment against inter alia Singapore Medicine Co. and a number of other parties for trade mark infringement and passing-off.  The relevant defendants in those proceedings were manufacturers and distributors of infringing products.

(3)  In the present proceedings, it pursues the Defendant, which it says is a pharmacy selling and dealing with infringing products.

(4)  From 2016 to 2021, the Plaintiff conducted a series of test purchases (using investigators)  in order to demonstrate and prove sale and dealing of alleged infringing products.  These test purchases were substantiated by contemporaneous documentary evidence such as photographs and receipts, with the test buyers going on oath to describe the process by which products were acquired.

(5)  The relevant get-up of the Plaintiff which forms the basis of its claim against the Defendant is found in Annex A of the Statement of Claim (also annexed hereto as Annex A).

(6)  The relevant medicated balm in get-ups and under names or marks which are said to infringe the Plaintiff’s registered trademarks and/or in respect of which acts of passing off have occurred are found in Annexes B, C and D of the Statement of Claim (also annexed hereto as Annexes B, C and D respectively).

(7)  In correspondence dated 18 June 2021, the Defendant has admitted selling and dealing with alleged infringing products purchased from one of the defendants in the Prior Case (“the Admission”). It has in any event ceased to do so since receiving a cease and desist letter from the Plaintiff since 17 May 2021.

4.  The Defendant, by its evidence in opposition, only seeks to raise two main grounds of defence:

(1)  First, it takes issue with the quality of the information in relation to the test purchases (“Insufficient Information Defence”);

(2)  Second, it challenges the admissibility of the Admission on the basis of alleged conflict of interest of the prior firm of solicitors (“Admission Admissibility Defence”).

5.  The relevant legal principles for summary judgment are well settled.  In short (Hong Kong Civil Procedure 2022, §§14/4/1, 14/4/4, 14/4/9 – 14/4/9B):

(1)  It is incumbent on the defendant to raise a defence or triable issue, and in so doing to condescend upon particulars. The issue is not whether the defendant is believed, but whether the assertions are believable (Ng Shou Chun v Hung Chun San [1994] 1 HKC 155 at 158; Toy Major Trading Co Ltd v Plastic Toys Ltd [2007] 3 HKLRD 345 at §12).

(2)  Unless it is obvious that the defence is frivolous and practically moonshine, Order 14 ought not be applied.

(3)  Where there are doubts or suspicion as to the validity of the plaintiff’s case or if possibly genuine weaknesses were exposed in the plaintiff’s case, then summary judgment ought not be granted (Billion Silver Development Ltd v All Wide Investments Ltd [2000] 2 HKC 262 at 268C-D).

(4)  The Court will not embark on a mini trial on affidavits.

6.  Reference may also be made to the trite principles set out in the judgment of DHCJ Lisa Wong (as she then was)  in Menfond Electronic Art & Computer Design Co Ltd v Wong Wang Tat Victor [2013] 2 HKC 259 at §61:

“The principles governing the grant or refusal of summary judgment under Order 14 are well established. It is for the defendant to show that there is an arguable defence or triable issue. In doing so, the defendant must condescend to particulars. The mere assertion in an affidavit of a given situation by the defendant does not, ipso facto, ground leave to defend. The defendant must satisfy the court that his evidence is capable of being believed and that on the basis of such evidence, there is a fair or reasonable probability of the defendant having a real or bona fide defence. In deciding whether there is a fair or reasonable probability of the defendant having a real or bona fide defence, the court does not isolate each factual issue and consider whether it is possible that the defendant’s story on that issue is credible. Rather, the court must look at the whole situation. In assessing the credibility of the defendant’s factual case, while the court will not embark on a mini-trial on affidavit evidence, the court is not obliged to suspend its critical faculties and assume that the defendant’s evidence is accurate. If having regard to inherent plausibility, inconsistency with contemporaneous documents and other compelling evidence, the defence is not credible, the court must say so. If the defendant’s defence is incredible in any material respect, it cannot be said that there is a fair or reasonable probability that the defendant has a real or bona fide defence.”

7.  See further in the context of intellectual property cases: Christie Manson & Woods Ltd v Chritrs (Group)  Ltd [2012] 5 HKLRD 829, where the court observed that “[t]here is nothing in principle to prevent the granting of summary judgment in intellectual property cases where there is no triable issue, even where the decision involves the making of finely balanced evaluation of qualitative matters by the judge.”

8.  I have borne the above principles in mind when considering the position of the Defendant.

9.  I consider that there are no arguable defences or triable issues that have been raised.

10.  I note that no issue has been taken in respect of the substantive allegations of trade mark infringement or passing off per se, in that there is no argument from the Defendant as to the requisite elements to be proven for those causes of action (e.g. whether there are similarities between the Plaintiff’s marks on the one hand and those found on the products sold by the Defendant on the other; or whether there has been misrepresentation).

11.  Rather, the alleged defences centre on the overall quality or admissibility of the evidence presented by the Plaintiff.  I consider that neither of the Defendant’s arguments are tenable.

12.  First, insofar as the Insufficient Information Defence is concerned, the Plaintiff’s documentary and affirmation evidence is comprehensive and meticulously set out, showing the test purchases, photographs of the purchased products, photographs taken during the purchase process, and receipts issued by the Defendant.

13.  The representatives and investigators who conducted the test purchases have gone on oath to confirm the subject purchases.

14.  The Defendant has not been able to positively deny that such purchases took place, and it has not put forward any material averment that the photographs and/or receipts were forged or inaccurate. There is thus nothing in the complaint that the information is insufficient or inadequate.

15.  Second, insofar as the Admission Admissibility Defence is concerned:

(1)  The contemporaneous documentary evidence provided by the Plaintiff would be sufficient to demonstrate the case, even in the absence of any admission.

(2)  Notwithstanding this, there is no merit in this argument either.

(3)  The only thing that is said by the Defendant is that “the admission made in the letter … were not entirely reflect the real situation”.  This is hardly a cogent defence, and does not condescend into particulars of how the admission is not accurate or is to be qualified.

(4)  The Defendant has also failed to explain why or how the solicitors were in conflict and why this led to the admission in the first place.

16.  In the circumstances, there are no credible defences raised and summary judgment will be granted to the Plaintiff.

17.  Costs shall be assessed by way of gross sum assessment in writing.  The Plaintiff shall lodge and serve its statement of costs within 7 days of this Decision, and the Defendant shall provide comments thereon within 7 days thereafter.

18.  I thank counsel Ms Stephanie Wong for her assistance.

Annexes