Hong Kong Case Law: Decisions & Judgments

Topic

Prior publication

Legal area

Court

6 Jan 2011

BURBERRY ASIA LTD v. POLO SANTA ROBERTA LTD

Citation

BURBERRY ASIA LTD v. POLO SANTA ROBERTA LTD
Court

Court of Appeal
Case number

CACV169/2010

The registrations were properly revoked because the defendant's check designs were confusingly similar to the plaintiff's long‑used check design and had been prior published by the defendant through sales and prior PRC registrations, such that the designs lacked the requisite novelty and registrability; therefore the appeal was dismissed and the revocations upheld.
21 Jul 2010

BURBERRY ASIA LTD v. POLO SANTA ROBERTA LTD

Citation

BURBERRY ASIA LTD v. POLO SANTA ROBERTA LTD
Court

Court of First Instance
Case number

HCMP2696/2009

On visual comparison the court found each Subject Design to be substantially the same as the Burberry Check such that the asserted differences (colour gradations, slight elongation, sense of direction and the superimposed device on Design C) were not materially distinguishing; colour and the minor features relied on were insufficient to confer novelty, and therefore the registrations lacked novelty and were revoked.
9 Mar 2010

RE HONG KONG SHORT-TERM PATENT NO. HK1120707

Citation

RE HONG KONG SHORT-TERM PATENT NO. HK1120707
Court

Court of First Instance
Case number

HCMP1195/2009

No triable issues existed because the PRC patent publication predates the filing of the Hong Kong short-term patent and the Hong Kong specification is not new and lacks inventive step over the PRC disclosure; accordingly summary judgment was granted to revoke the Hong Kong patent.
3 Dec 1993

Four Seas Industrial Co. Ltd. v. Sheen Long Industries Ltd.

Citation

Four Seas Industrial Co. Ltd. v. Sheen Long Industries Ltd.
Court

Court of First Instance
Case number

HCA9407/1993

The Anton Piller injunction was discharged because the plaintiff failed to demonstrate the required elements: no sufficiently strong prima facie case, no evidence of incriminating documents or a real risk of their destruction, and there was material non-disclosure (prior publication and copying from a German supplier undermining proprietorship and validity of registrations); damages were an adequate remedy and sealed evidence could not be relied upon without disclosure to the defendant.
4 Jan 1991

WILSON DEVELOPMENT CO (a firm) v. PRO TAIFONG CO LTD AND ANOTHER

Citation

WILSON DEVELOPMENT CO (a firm) v. PRO TAIFONG CO LTD AND ANOTHER
Court

Court of Appeal
Case number

CACV137/1990

The Court allowed the appeal: the respondents' UK registration was open to challenge by evidence of prior publication in Hong Kong under Cap.44 and the respondents failed to demonstrate requisite reputation for passing off; on balance of convenience (taking into account delay, status quo and comparative uncompensatable disadvantage) continuation of the ex-parte injunction was unjustified and the injunction was discharged.
23 Aug 1990

PRO TAIFONG CO LTD AND ANOTHER v. WINSON DEVELOPMENT CO (a firm)

Citation

PRO TAIFONG CO LTD AND ANOTHER v. WINSON DEVELOPMENT CO (a firm)
Court

Court of First Instance
Case number

HCMP1758/1990

On the affidavit material the court was not satisfied that prior publication in Hong Kong had been proved to the extent of showing the plaintiffs had no serious issue to be tried; factual disputes could not be resolved on affidavit, and on balance of convenience damages would not be adequate given risk of irreparable harm, therefore the injunction must be continued and the application to discharge dismissed.
23 Aug 1990

PRO TAIFONG CO LTD AND ANOTHER v. WINSON DEVELOPMENT CO (a firm)

Citation

PRO TAIFONG CO LTD AND ANOTHER v. WINSON DEVELOPMENT CO (a firm)
Court

Court of First Instance
Case number

HCA3909/1990

On the affidavits before the court the defendants failed to show that the plaintiffs had no serious issue to be tried: the alleged prior publications and prior use were not established as the same design available in Hong Kong on the evidence before the court, factual disputes could not be resolved on affidavit and damages would not be an adequate remedy given evidence of customer confusion; accordingly the court exercised its discretion to continue the interlocutory injunction and dismissed the application to discharge it.
10 Mar 1980

TANG FUN KEE MANUFACTURING CO LTD v. FORTUNA PLASTIC MANUFACTORY (A FIRM)

Citation

TANG FUN KEE MANUFACTURING CO LTD v. FORTUNA PLASTIC MANUFACTORY (A FIRM)
Court

Court of First Instance
Case number

HCA1346/1979

The registered design was validly registered and not anticipated by prior publication or common general knowledge; the defendant's product D1, judged by the inexpert-eye test and allowing for imperfect recollection, reproduced the substance of the registered design and infringed it; the plaintiffs held copyright in specified drawings and D1 infringed that copyright because s9(8) did not shield the defendant; defendants failed to prove the statutory innocent-infringer defence under s9(1)/s17(1).
ARCO INDUSTRIES LTD v. DURHAM INDUSTRIES INC AND ANOTHER

Citation

ARCO INDUSTRIES LTD v. DURHAM INDUSTRIES INC AND ANOTHER
Court

Court of First Instance
Case number

HCA3430/1977

The court found the pistol registration was likely invalid by prior publication and thus no serious question to be tried on the pistol; although the rifle registration raised a serious question of infringement, the balance of convenience favoured refusing an interlocutory injunction because the plaintiff could be adequately compensated by damages while an injunction risked causing defendant irreparable or inadequately compensable loss (including risk of missing the market and potential loss of licences). Therefore the injunction was refused.