INTERFOOD LTD v. SANDY TRADING (HONGKONG) CO LTD

bjbjU HCA002159/1976 IN THE SUPREME COURT OF HONG KONG HIGH COURT ACTION NO. 2159 OF 1976 ----------------- BETWEEN INTERFOOD LIMITED Plaintiffs SANDY TRADING (HONGKONG) COMPANY LIMITED Defendants ----------------- Coram: Li, J. Date of Judgment: ----------------- JUDGMENT ----------------- 1. This is an application by the Interfood Ltd. (hereinafter referred to as the plaintiffs) for an interlocutory injunction as set out in the Summons against the Sandy Trading (Hongkong) Co. Ltd. (hereinafter referred to as the defendants). The gist of the injunction is to restrain the defendants from using the name "Mini Swiss" the sales of any confectionery not of the plaintiffs' manufacture. 2. From the affidavits filed I am satisfied that the plaintiffs had for many years, been selling a type of fruit caramels known as 'sugus' in Hong Kong through their agents. In the course of years this product gained publicity in the local community and was accorded a Chinese name when literally translated, of "Swiss Candies". Its popularity is reflected in the sales record which in the year 1975 touch nearly $12.5 million. It is known to the Chinese members of the community as "Swiss Candies". In December 1975 the defendants started to put on to the Hong Kong market certain types of candies which was manufactured by Scheller Ltd., Surich. In all fairness to Scheller Ltd. they had no part in giving any name to their product which could be said to be in anyway similar to "Swiss Candies" whether in Chinese or in English. They gave it the name "Mini Fruit". For reasons best known to themselves the defendants who imported this product to Hong Kong gave it the name "Mini Swiss" which when literally translated into Chinese would be equivalent to "Mini Swiss Candies". Further, I have exhibited before me the packages and get-up of the defendants' imported goods and the plaintiffs' goods. They are substantially similar. 3. Having read the affidavits filed and having viewed the exhibits I am of the opinion that the plaintiffs have established that their case is not vexatious or frivolous. They have at least an arguable case that there is probable course of genuine confusion if the defendants are allowed to use the name "Mini Swiss". In American Cyanamid Company v. Ethicon Ltd. (1975) R.P.C. 513 Lord Diplock said at 541: "Your Lordships should in my view take this opportunity of declaring that there is no such rule. The use of such expression as 'a probability', 'a prima facie case', or 'a strong prima facie case' in the context of the exercise of a discretionary power to grant an interlocutory injunction leads to confusion as to the object sought to be achieved by this form of temporary relief. The court no doubt must be satisfied that the claim is not frivolous or vexations; in other words, that there is a serious question to be tried. It is no part of the court's function at this stage of the litigation to try to resolve conflicts of evidence on affidavit as to facts on which the claims of either party may ultimately depend nor to decide difficult questions of law which call for detailed argument and mature considerations. There are matters to be dealt with at the trial. One of the reasons for the introduction of the practice of requiring an undertaking as to damages upon the grant of an interlocutory injunction was that 'it aided the court in doing that which was its great object, viz. abstaining from expressing any opinion, upon the merits of the case until the hearing' (Wakefield v. Duke of Buccleugh (1865) 12 L.T.N.S. 628, at p. 629). So unless the material available to the court at the hearing of the application for an interlocutory injunction fails to disclose that the plaintiff has any real prospect of succeeding in his claim for a permanent injunction at the trial, the court should go on to consider whether the balance of convenience lies in favour of granting or refusing the interlocutory relief that is sought." 4. This leads me to consider the balance of convenience and whether irrepairable damage be caused to the plaintiff if the interlocutory injunction is refused. It is observed that the defendants started their sales in December 1975 and so far the monthly sales record varies between %3,000 and $18,000. This figure when compares with the plaintiffs' average sales figure of $1 million per month is minimal. The plaintiffs have incurred yearly expenditure in advertisement. Whatever loss the defendants may suffer is not comparable with the damages to the plaintiffs' trade when X'mas and Chinese New Year are near. The background of the case of Bryanston Finance v. De Vries (No.2) is quite different from the circumstances in the present case. On the balance of convenience the damages that may be suffered by the defendants can be safeguarded by the plaintiffs giving the usual undertaking. 5. For these reasons I grant the Order in terms of the Summons subject to the usual undertaking and that the plaintiffs' costs be costs in the cause. There will be a stay of 7 days. If notice of appeal is filed within 7 days there will be a further stay of 4 weeks after which there will be liberty to apply. Representation: S"T$ " % & ' 2 t% HCA002159/1976 Judiciary Normal.dot Judiciary Microsoft Word 9.0 Unisys HCA002159/1976 Title Microsoft Word Document MSWordDoc Word.Document.8