COMMERCIAL TRADEMARK SERVICES SA AND ANOTHER v. LISCAROLL CO LTD t/a COMMERCIAL INVESTIGATION AND OTEHRS

COMMERCIAL TRADEMARK SERVICES SA AND ANOTHER v. LISCAROLL CO LTD t/a COMMERCIAL INVESTIGATION AND OTEHRS

There was prima facie evidence that the 2nd plaintiff had, by long and exclusive use since 1972, acquired a secondary meaning in the three‑word title 'Commercial Trademark Services' in Hong Kong; the defendants adopted a three‑word title sharing the identical first and last words ('Commercial' and 'Services') and operated in an overlapping field, producing a real prospect of confusion and risk of irreparable damage; delay was satisfactorily explained and the balance of convenience favoured granting an interlocutory injunction (with modified terms).

Citation
COMMERCIAL TRADEMARK SERVICES SA AND ANOTHER v. LISCAROLL CO LTD t/a COMMERCIAL INVESTIGATION AND OTEHRS
Parties
1st Plaintiff: Commercial Trademark Services S. A.; 2nd Plaintiff: Commercial Trademark Services (Hong Kong) Ltd.; 1st Defendant: Liscaroll Company Limited trading as Commercial Investigation Services; Defendant: Man Wah Ming; 4th Defendant: Mr. Edwards
Court
Court of First Instance
Jurisdiction
Hong Kong
Judgment Date
26 February 1983
Case Number
HCA10950/1982
Procedural Posture
Passing Off / Trade Name Dispute / Interlocutory Injunction / Interlocutory Application (injunction Hearing)
Outcome
Interlocutory injunction granted with modifications to prayers sought
Legal Topics
Secondary Meaning, Likelihood of Confusion, Interlocutory Injunction, Delay, Balance of Convenience, Misrepresentation
Source Language
EN
Intellectual Property Passing Off Trade Names Unfair Competition Civil Procedure (interim Relief) Secondary Meaning Likelihood of Confusion Interlocutory Injunction +3 more

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Parties

Commercial Trademark Services S. A.

1st Plaintiff

Commercial Trademark Services (Hong Kong) Ltd.

2nd Plaintiff

Liscaroll Company Limited trading as Commercial Investigation Services

1st Defendant

Man Wah Ming

Defendant

Mr. Edwards

4th Defendant

Procedural Posture

Passing Off / Trade Name Dispute / Interlocutory Injunction / Interlocutory Application (injunction Hearing)

Legal Issues

  1. 1 Whether the plaintiff's trade name 'Commercial Trademark Services' has acquired a secondary meaning
  2. 2 Whether the defendant's use of 'Commercial Investigation Services' is sufficiently similar to cause confusion or to amount to passing off
  3. 3 Whether there was inexcusable delay preventing interlocutory relief

Ratio Decidendi

There was prima facie evidence that the 2nd plaintiff had, by long and exclusive use since 1972, acquired a secondary meaning in the three‑word title 'Commercial Trademark Services' in Hong Kong; the defendants adopted a three‑word title sharing the identical first and last words ('Commercial' and 'Services') and operated in an overlapping field, producing a real prospect of confusion and risk of irreparable damage; delay was satisfactorily explained and the balance of convenience favoured granting an interlocutory injunction (with modified terms).

Court Disposition

Interlocutory injunction granted with modifications to prayers sought

Orders

  • Injunction restraining the defendants from carrying on business under the name 'Commercial Investigation Services' (with deletion of the overly broad clause seeking to restrain use of any name comprising that combination of words)
  • Injunction ordering the defendants to vacate the registration of 'Commercial Investigation Services' at the Business Registration Office