XCHRX NINTENDO CO. LTD. v. THE WORLD CAMERA AND RADIO CO. LTD. t/s ESCOT CAMERA & RADIO CO.

HCA13066/97

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO.13066 OF 1997

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(HEARD TOGETHER)

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J U D G M E N T

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1. This is an appeal against the Order of Mr Registrar Betts made on 17th July 1998. Mr Registrar Betts had heard together summonses issued in the two actions, Action nos.13066 of 1997 and 13078 of 1997.

2. In the first action, the Defendant took out a summons for an order that all references to Trade Mark No.2 of 1983 ("Nintendo") in the Statement of Claim be struck out on the ground that the Plaintiff had not pleaded the said Trade Mark in the Endorsement of Claim. In Action No.13078, the Defendants took out a summons asking for an order that all references to the purported Trade Mark "Super Mario 4" in the Statement of Claim be struck out on the ground that the Plaintiff had not pleaded the said Trade Mark in the Endorsement of Claim.

3. After hearing the two applications together, Master Betts ordered that the Defendants' summonses be dismissed with costs to the Plaintiff in any event, with a Certificate for Counsel. The allegation, or the submission, by the Defendant is that in Action No.13066 the Writ of Summons had claimed, inter alia, for an injunction to restrain the Defendant whether acting by itself, its directors, employees, servants or agents or any of them or otherwise howsoever from infringing the Plaintiff's Hong Kong registered Trade Mark No.2706 of 1995. However, in their Statement of Claim they included allegations in respect of a second registered trade mark, namely, Trade Mark No.2 of 1983.

4. In the second action, Action No.13078, the Writ of Summons claimed for, inter alia, an injunction to restrain the Defendants whether acting by themselves, their proprietors or partners, directors, employees, servants or agents or any of them or otherwise howsoever from passing off, attempting to pass off, causing, enabling or assisting others to pass off video games not the goods of or associated with the Plaintiff as and for the goods of or associated with the Plaintiff by the use in connection therewith the names which included "Super Mario Land". However, in the Statement of Claim the Plaintiff has alleged that the passing off by the Defendants included passing off of the name "Super Mario 4". "Super Mario Land" is not mentioned further in the Statement of Claim, and there appears to have been a substitution of "Super Mario Land" mentioned in the Writ of Summons by the name "Super Mario 4" in the Statement of Claim.

5. The submission by the Defendants is the same in respect of both summonses, namely that what was pleaded in the Statement of Claim is in breach of O.18, r.15(2) which says :

" A statement of claim must not contain any allegation or claim in respect of a cause of action unless that cause of action is mentioned in the writ or arises from facts which are the same as, or include or form part of, facts giving rise to a cause of action so mentioned; but, subject to that, a plaintiff may in his statement of claim alter, modify or extend any claim made by him in the indorsement of the writ without amending the indorsement."

It is agreed by both Counsel that the two matters which were mentioned in the Statements of Claim were not mentioned in the Writs of Summons, and therefore, I am only concerned with whether the second part of that rule is, or can be, called in aid by the Plaintiff, namely, does the new cause of action mentioned in the Statement of Claim arise from facts which are the same as, or include, or form part of facts, giving rise to a cause of action mentioned in the Writ of Summons.

6. Miss Wong, appearing for the Appellants, has referred me to the case of Brickfield Properties Ltd. v. Newton [1971]1 WLR 862 where it was held that O.18, r.15(2) was in general meant to relate to cases in which some part of the facts necessary to establish the claim made in the writ would suffice to establish some other, perhaps narrower, cause of action rather than one which required the proof of additional facts. That was elaborated on by Sachs, LJ when he said at page 870 that that rule has somewhat the same effect as the rule in criminal cases that one may include in an indictment any count which is supported by evidence disclosed in the depositions but none which requires the proof of additional facts.

7. In Action No.13066, quite clearly an additional cause of action has been included in the Statement of Claim in that the Statement of Claim claims for an injunction to restrain the Defendants from infringing, in addition to the trade mark mentioned in the Writ of Summons, No.2706, also the second trade mark, namely "Trade Mark No.2 of 1983".

8. Miss Wong submits that in order for the Plaintiff to succeed on the new cause of action introduced in the Statement of Claim, the Plaintiff needs to show four additional facts :

1) that the Plaintiff is the owner of Trade Mark No.2 of 1983;

2) that Trade Mark No.2 of 1983 is valid and subsisting;

3) that the Defendants have used and thereby infringed Trade Mark No.2 of 1983; and

4) that by reason of the Defendants' infringement of Trade Mark No.2 of 1983, the Plaintiff has suffered loss and damage.

9. In relation to the second action, Miss Wong submits that for the Plaintiff to succeed on their claim of passing-off by the use of the name "Super Mario 4", the Plaintiff would need to prove six additional facts :

1) that the Plaintiff's products are sold under/by reference to the name "Super Mario Land";

2) that the Plaintiff enjoys substantial goodwill and reputation in relation to the name "Super Mario Land";

3) that upon seeing the name "Super Mario Land" on a product, the trade and the public will associate the product with the Plaintiff and none other;

4) that the Defendants' products are sold under or by reference to the name "Super Mario 4";

5) that upon seeing the Defendants' products with the name "Super Mario 4" on them, the trade and the public will be deceived or confused into the belief that such products of the Defendants are the products of the Plaintiff; and

6) that by reason of the Defendants selling their products with the name "Super Mario 4" on them, the Plaintiff had suffered loss and damage.

10. Mr Chan for the Respondent, submits that "cause of action" as mentioned in O.18, r.15(2) is in a sense slightly less than what that phrase normally means as it is used, and he submits that it would be sufficient if the type of relief or remedy, or the type of cause of action is mentioned in the Writ of Summons so that the Defendant knows what is the cause of action which the Plaintiff is relying upon for the defendant to decide, as was mentioned by Staughton, LJ in Morgan Bentley Ferguson Cale v. Morgan Grenfell Ltd. & Another Court of Appeal (Civil Division) 2 March 1988, whether to accept the jurisdiction of the court, or to decide whether to defend the action, or to decide in respect of which claim he wishes to defend, or that the cause of action in the Writ of Summons has the effect of stopping time from running.

11. I cannot accept that submission by Mr Chan. Mr Chan does not dispute Miss Wong's submission that each allegation of an infringement of a trade mark, or each allegation of passing off involving the use of an extra name, is a different cause of action which has to be proved separately from any other causes of action which the Plaintiff may be relying upon. I do not intend to enumerate the various causes of action which the Plaintiff would appear to be relying upon in pursuing these two claims. Suffice it for me to say that I find that the Statements of Claim have breached O.18, r.15(2), and they are therefore irregular.

12. I therefore allow the appeal by the Defendants and I set aside the Order of Mr Registrar Betts made on 17th July 1998. I also order that as per the two summonses originally taken out in the two actions, that in Action No.13066 all references to "Trade Mark No.2 of 1983" in the Statement of Claim be struck out, and in Action No.13078 all references to the trade mark "Super Mario 4" in the Statement of Claim be struck out. I also order that the costs of the appeal, including the costs of the hearing before Mr Registrar Betts, be to the Defendants in any event with a Certificate for Counsel.