TIGER ELECTRONICS LTD v. DAIDAIXING ELECTRONICS INTERNATIONAL CO LTD

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

CIVIL ACTION NO. HCA 8219 OF 1999

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JUDGMENT

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1. This is an Order 14 application by the Plaintiff for summary judgment against the Defendant in relation to the use of the word "Furdy" by the Defendant as being in contravention of the registration of the mark "Furby" which had been registrated by the Plaintiff. The Plaintiff had registered the trade mark "Furby" and registration was made in relation to several classes of goods, the principal one in consideration being in respect of toys.

2. The toy in question is a small rabbit like animal covered with fur, being an electronic toy which is able to have many functions including being inter reactive with children as children's toys.

3. The dispute before me revolves around the question as to whether the mark "Furby" ought to have been registered under section 9 of the Trade Marks Ordinance. Section 9(1) reads:

"A trade mark (other than a certification trade mark) to be registrable in Part A of the register shall contain or consist of at least one of the following essential Particulars:

4. In order to raise a triable issue, it is conceded by Mr. Ling for the Defendant that he must satisfy the court or that it must be shown to the court that it is arguable:

I will consider each issue in turn.

5. First the question of whether the word "Furby" is an invented word. In the case of Eastman Photo Graphic Materials Company Limited v. The Comptroller-General of Patents, Designs, and Trade-Marks [1898] A.C. 571 (a case which is commonly called the Solio case) there is a passage at page 585 of Lord Shand which is instructive. He said:

"There must be invention and not appearance of invention only. It is not possible to define the extent of invention required; but the words, I think, should be clearly and substantially different from any word in ordinary and common use. The employment of a word in such case used, with a diminutive or a short and meaningless syllable added to it or a mere combination of two known words, would not to be an invented word; and a word would not be "invented" which, with some trifling addition or very trifling variation, still leaves the word one which is well known or in ordinary use, and which would be quite understood as intended to convey the meaning of such a word."

6. Evershed J., as he then was, in La Marquise Footwear Incorporated [1947] 64 R.P.C. 27 at page 31, said this:

"This is a case of taking a word with an accepted meaning, and adding to it "a trifling addition, leaving the word still to convey very much the same meaning as is conveyed before the addition was made to it.""

7. The question for me on this issue of invented word is whether the word "Furby" is a word with an accepted meaning that is "fur" and adding to it a trifling addition, leaving the word "Furby" still to convey very much the same meaning as it conveyed before the addition was made to it.

8. It seems to me that the answer is very possibly yes and I put it on that basis because it is Order 14 and I do not need to make any firm determination on Order 14. The question is whether it is arguable or that the Defendant has a triable issue. The emphasis of the word "Furby", to my mind, must be on the word "fur". It suggests something to do "fur" and that is the primary meaning given to it with the suffix "by".

9. There are many instances cited to me in the course of the argument of situations where the courts have held that words are not invented. Therefore, in the case of "Orlwoola" reported in re Re Brock & Company Limited [1910] 1Ch. 130, the word "Orlwoola" was not considered an invented word, being a disguised form of "all wool" with "la" added to it. Similarly in respect of the word "Pussikin" reported in the case of Re Quennell [1954] 72 RPC 36. Also. it is the baby side of the word "Babex" that was the emphasis and the word "Babex" was therefore not considered an invented word. The same also was held to be the case of "Oomphies" in La Marquise Footwear. Evershed J. considered it was a mere plural "ies" added to the word "Oomph".

10. My conclusion therefore is that in relation to the issue of invented word, the Defendant has made out an arguable case, that the "Furby" should not have been registered as an invented word under section 9(1)(c).

11. I now turn to the other issue under section 9(1)(d) of the Ordinance. The argument on this is whether the word "Furby" is descriptive of the goods or not. The submission of Mr. Ling is that if there is any part of the goods to which the mark has made a direct reference, then it is descriptive and the Plaintiff is not entitled to register under 9(1)(d).

12. Now the goods in question certainly is furry in appearance. The word "Furby" as I said earlier is suggested of fur covered, fur like and I come to the view and I must say it is a matter of impression and for the proposes of interlocutory application that the word "Furby" with emphasis on the first syllable with a second syllable suffix added to it, is descriptive of the goods. Similar examples can also be found of marks which had been denied registration cited earlier of "Orlwoola", "Pussikin" and "Babex" (restricted to baby oriented goods).

13. I come therefore to the conclusion that the summary judgment should not be given and the Defendant is entitled to unconditional leave to defend.