BORRI S. p. A. v. TRALACO TECHNOLOGY LTD AND OTHERS

BORRI S. p. A. v. TRALACO TECHNOLOGY LTD AND OTHERS

On the evidence the plaintiff retained substantial reputation and goodwill in the BORRI mark; Tralaco acknowledged plaintiff's ownership by entering the 1995 Agreement; defendants knowingly engaged in acts (registrations, use of marks, website, incorporations) calculated to pass off their goods as the plaintiff's...

Source-derived case information.

Citation
BORRI S. p. A. v. TRALACO TECHNOLOGY LTD AND OTHERS
Parties
Plaintiff: Borri S.p.A.; 1st Defendant: Tralaco Technology Limited; 2nd Defendant: Borri Electronics (China) Limited; 3rd Defendant: Borri Electronic International Inc.; 4th Defendant: Borri Electronics (HK) Limited
Court
Court of First Instance
Jurisdiction
Hong Kong
Judgment Date
19 August 2009
Case Number
HCA1170/2007
Procedural Posture
Civil Passing Off and Trade Mark Infringement; Conspiracy / Summary Judgment (judgment Delivered)
Outcome
Summary judgment entered for plaintiff.
Legal Topics
Passing Off, Trade Mark Registration, Summary Judgment, Injunction, Assignment of Trade Marks, Domain Name Dispute, Conspiracy/joint Tortfeasors, Security for Costs
Source Language
en
Intellectual Property Trade Mark Law Passing Off Company Law Civil Procedure Domain Name Law Trade Mark Registration Summary Judgment +5 more

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Parties

Borri S.p.A.

Plaintiff

Tralaco Technology Limited

1st Defendant

Borri Electronics (China) Limited

2nd Defendant

Borri Electronic International Inc.

3rd Defendant

Borri Electronics (HK) Limited

4th Defendant

Procedural Posture

Civil Passing Off and Trade Mark Infringement; Conspiracy / Summary Judgment (judgment Delivered)

Legal Issues

  1. 1 Whether plaintiff entitled to summary judgment on claim of passing off
  2. 2 Whether defendants are joint tortfeasors and liable for conspiracy
  3. 3 Whether defendants must assign Hong Kong and Mainland trade mark registrations and domain name to plaintiff

Ratio Decidendi

On the evidence the plaintiff retained substantial reputation and goodwill in the BORRI mark; Tralaco acknowledged plaintiff's ownership by entering the 1995 Agreement; defendants knowingly engaged in acts (registrations, use of marks, website, incorporations) calculated to pass off their goods as the plaintiff's and acted pursuant to a common design/conspiracy; there was no real defence or triable issue; therefore summary judgment was appropriate and relief including injunction (Hong Kong only), assignment of registrations and domain and costs were ordered.

Court Disposition

Summary judgment entered for plaintiff.

Orders

  • Grant injunction restraining defendants from perpetrating acts of passing-off in Hong Kong (injunction not extended to Mainland)
  • Defendants to assign and to procure assignment by 3rd defendant of Hong Kong trade mark registrations (Nos. 300321092 and 300321083) to plaintiff