C ART LTD v. ABILITY MANUFACTORY LTD

HCA001006/1989

1989, No. A1006

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

____________

BETWEEN

	C. ART LIMITED	Plaintiff
	AND
	ABILITY MANUFACTURING LIMITED	Defendant

___________

Coram: Master Woolley in Chambers

Date of Hearing: 21 March 1990

Date of Delivery: 27 March 1990

_____________________________________________

MASTER'S ANSWERS ON REVIEW OF TAXATION

_____________________________________________

 

1. Pursuant to an order for costs made by Mr. Justice Nazareth on 20th June 1989, the Plaintiff's bill of costs was taxed by me on a party and party basis on 12th and 17th January 1990.

2. Objections to certain items allowed on taxation were filed by the Defendant on 3rd February 1990 and answers thereto were filed by the Plaintiff on 16th February 1990.

3. Having heard both parties by their representatives, Mr. Robin Bridge for the Defendant and Miss Edith Tang for the Plaintiff, on 21st March 1990, I now give written answers to the objections which shall also stand as my certificate under Order 62 rule 34(4).

Objections Nos.1 and 2

Items No.2 and 3

4. These relate to a conference with Counsel on 18th February 1989 to settle the statement of claim, prior to the commencement of proceedings.

5. This falls to be considered in two parts. First, whether it was necessary for Counsel to settle the statement of claim at all, the Plaintiff having the services of a competent solicitor experienced in these matters; and second, whether it required a conference.

6. Mr. Bridge maintains that neither comes within the definition of a step that is "necessary and proper for the attainment of justice" in the definition of party and party costs in O.62 r.28(2).

7. I find, however, that this definition includes action taken by a prudent solicitor, protecting the rights of his client, and instructing a specialist counsel to settle the statement of claim in proceedings where it is intended that he will be briefed to appear at trial, and stand by those pleadings, except in the most simple and straightforward proceedings, must fall within that definition.

8. Whether a conference was necessary is another matter.

9. In the normal course of events instructions should be sent to counsel with all the papers in the case to settle the pleadings, and if he requires a conference he will ask for one.

10. On reviewing the solicitor's file, I can see no good reason for a conference other than a general discussion of the matter which is clearly not allowable on a party and party taxation.

11. I accordingly allow the objection in so far as it relates to the solicitor's attendance and disallow item no.2 in toto.

12. Counsel however is entitled to a fee for settling the statement of claim and I therefore allow his fee at item no.3 as it stands.

Objection Nos.3 and 4

Item Nos.32 and 33

13. These relate to a conference with Counsel on 9th May 1989 on which Mr. Bridge's views are set out in his written reasons for objections.

14. It is clear from the solicitor's attendance note that a number of matters were before counsel for his consideration and advice, namely letters from the Defendant's solicitor requesting particulars and discovery, procedure to be followed, the defence having now been filed, and in particular whether to proceed with an application under O.14, and the preparation and settling of affidavits in support of such an application.

15. I consider all these matters unobjectionable on a party and party taxation, and having already reduced the time allowed at the hearing of the taxation to 1½hours, the objections are rejected.

Objection Nos.5 and 6

Items Nos.55 and 59

16. These items were disallowed on taxation as being unnecessary where the Defendant is legally represented, so this is in effect an objection to item no.90, the main item, in that time allowed therein for drafting these affidavits should be disallowed and the overall time reduced accordingly.

17. However, I can find no part of item 90 referable to drafting these affidavits, and I am informed by Miss Tang that the time for drafting was omitted in error.

18. There is therefore no basis for this objection which is accordingly rejected.

Objection No.7

Item No.69

19. This conference with counsel was considered necessary by the Plaintiff's solicitor as a result of the service by the Defendant of a proposed amended defence and an affirmation, two days before the 0.14 hearing.

20. While I agree with the necessity of providing copies to counsel for his perusal, the brief having already been delivered, on reflection I cannot agree with the necessity of a conference and this item is therefore disallowed and the objection upheld.

Objection No.8

Item No.90

21. The objection to this item is somewhat unusual in that it is contended by Mr. Bridge that, although it was an action which warranted the attention of a solicitor of Mr. Yu's experience and seniority, he should not have done all the work, or the Defendant should not be expected to pay for his time for work which could have been done by a more junior member of his staff.

22. My attention was not drawn, however, to particular sections of this item suitable for other staff, and I was asked to make a notional subdivision of the total hours allowed into senior and junior solicitors' time in a ratio of two thirds to one third.

23. Having reviewed this whole item, I am satisfied that the time allowed was properly allowed, and except where parts of the work done can be shown clearly to be inappropriate for a senior solicitor who has the conduct of the proceedings, all work necessarily done by the solicitor concerned must fall within the scope of party and party costs. This objection is accordingly rejected.

Objection No. 9a

Item No.91(a)

24. The reasons for this objection are as set out in the written objections.

25. At the hearing of this review Mr. Bridge sought to add a third reason, namely that the investigation could have been conducted by a clerk or other junior staff of the Plaintiff's solicitors and did not require a professional investigator.

26. Although I would not be in any event accept the submission of additional grounds of objection which have not been served on the other party in accordance with the rules, I find no merit in that ground, having studied the evidence and report supplied by the investigator, and considering the skill and experience necessary to acquire such evidence, and its necessity for the proper prosecution of this action.

27. I similarly reject the ground that it was done prior to the issue of the writ. By the very nature of the action it could not have been done at any other time, and is clearly necessary for the conduct of the proceedings.

28. I draw further support for this view from the judgment of Lord Hanworth M.R. in Pêcheries Ostendaises (SA) v. Merchants Marine Insurance Co. [1928] 1KB 750 where he says, at p.757, that it appeared to him:-

"... that there is power in the Master to allow costs incurred before action brought, and that if the costs are in respect of materials ultimately proving of use and service in the action, the Master has a discretion to allow these costs, which he probably will exercise in favour of the party incurring them, because they have been made use of during the course of the action."

29. The third reason raises a different point in relation to this item, and that is that the item is properly special damages, not costs and should be claimed as such.

30. The judgment of Mr. Justice Nazareth included an order that there be the usual enquiry as to damages sustained by the Plaintiff, who has not sought to enforce the provision and, I understand, does not intend to, being satisfied with the injunctive and other relief granted.

31. Mr. Bridge referred me to British Motor TradeAssociation v. Salvadori [1949] CL.556 in support of his contention that the proper course would be for the Plaintiff to proceed to an enquiry as to damages and claim this item then.

32. However, the facts of that case are very different from those here, and while Roxburgh J. held that those costs of investigation which could not be recovered as costs in the aution could be recovered as special damages, it was nowhere decided that expenses such as these could not be recovered as costs.

33. As a matter of common sense it is absurd to suggest that both parties should proceed to an enquiry as to damages and incur further couts far in excess of the sum sought to be recovered, where it is possible to deal with the matter on taxation. To so deal with it, I only have to be satisfied that they fall within the definition of "costs of and incidental to" the proceedings as envisaged by S.52A of the Supreme Court Ordinance Cap.4, and, as is apparent from what I have said above, I am so satisfied.

34. Indeed, were I to concur with Mr. Bridge's contention, there is a real danger that the Plaintiff would not recover these costs at all. As Sir Robert Megary V.C. said in Ross v. Caunters [1979] 3 All E.R. 580 at p.601:-

"It also seems to me that there is apple authority for saying that a successful plaintiff cannot obtain, in the guise of damages, any costs which, on a party and party taxation of costs, are disallowed by the taxing Master."

35. This would, in my view, be a grave injustice to the Plaintiff, and I therefore reject this objection.

Objection No.96

Item No.91(b)

36. The reasons for this objection are, firstly, that there was no order under Order 38 part IV, and, secondly, that, as with the previous objection, it is properly special damages, not costs.

37. With regard to the second reason, I repeat my answer to the last objection.

38. As to the lack of an order under Order 38 Part IV, the answer, in my view, is simple. That part of the rules relates to expert witnesses, and personnel of the investigators are not expert witnesses, they are professional witnesses. They are not called to give opinions, as are experts, but to give evidence of facts they have discovered.

39. Order 38 Part IV is not applicable and the objection is rejected.

Objection No.10

Item No.99

40. This objection is made on the basis that, having allowed half an hour at item 93 for the solicitor approving the bill, further time for reviewing the file, preparing for taxation and compiling the documents to be lodged in Court should not be allowed at a partner's rate.

41. In view of the fact that it was the costs draftsman who appeared on the taxation, and who therefore is more likely to have prepared for the hearing, I have some sympathy with this, and I accordingly allow one hour of her time at $600.00, thereby taxing off a further $150.00.

42. In view of the comparatively minor part of this review in which the Defendant has been successful, I consider it appropriate that I make no order as to costs, but I make this an order nisi with liberty to either party to seek an appointment within 14 days if they wish to make further representations.

	(E.T.S. Woolley)
	Master
	27.3.90

Representation:

Mr. R. Bridge - Robin Bridge & John Liu for Defendant.

Miss E. Tang - Deacons for Plaintiff.

HCA001006A/1989

1989 No. A1006

HEADNOTE

 

    Infringment of U.K. registered design.

Held that: (i) The registered proprietor of a registered design seeking 0.14 summary judgment for infringment of his exclusive right, can, where there is no credible suggestion or evidence of grounds for cancellation, rely upon the bare fact of registration to establish his exclusive right and need not e.g. attempt to demonstrate the absence of such grounds.

(ii) "Shape" and "configuration" are not necessarily synonymous.

(iii) Shape and configuration include the arrangement of protruding radio control knobs and a speaker of a combined bag and radio, which do not comprise merely "pattern and ornamentation".

1989 No. A1006

 

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

___________

BETWEEN

	C. ART LIMITED	Plaintiff
	and
	ABILITY MANUFACTORY LIMITED	Defendant
	_______________

Coram: The Hon. Mr. Justice Nazareth in Chambers

Date of Hearing: 31st day 1989

Date of Delivery of Judgment: 20th June 1989

______________

J U D G M E N T

______________

 

1. The plaintiff is the registered proprietor of a registered design in respect of a combined bag and radio. It is a not uncommon type of plastic carrier bag, rectangular in shape, but with a built-in radio, the speaker and control switch and knobs of which are affixed to the outside of a flap that forms the top of the bag and that functions as a lid that can be sealed with a zip fastener. In its statement of claim in this action, the plaintiff alleges that since the issue of the United Kingdom certificate of registration of the design, the defendant has infringed its exclusive privileges and rights by, inter alia, selling and offering for sale combined bags and radios to which the registered design, or a design not substantially different, has been applied. It is common ground that the defendant has sold and offered for sale items which the plaintiff alleges infringe its exclusive rights and privileges.

2. The matter now comes before me upon an Order 14 application for summary judgment by the plaintiff, on the ground that exclusive rights of sale flow from the mere fact of registration of the design. It is resisted by the defendant in a defence and counterclaim that rests upon 3 grounds:

1. The registered design was neither new nor original at the date of registration and was before that date published in Hong Kong in respect of an article which was the same or differed only in immaterial details, or features which are variants used in the trade by reason of common general knowledge.

2. If, which it denies, the design has features of novelty, then these are purely of pattern and ornament, and not shape and configuration as stated in the registration.

3. That the registered design is ambiguous in that the representations of the articles concerned do not sufficiently and clearly define the shape and configuration, nor the scope of the monopoly claimed.

3. The question that has to be addressed in relation to each ground is whether there is an issue or question that ought to be tried. Beginning with the first i.e. novelty and originality, this arises under sections 2 and 4 of the United Kingdom Registration of Designs Ordiance (Cap. 44) which respectively provide first, that the registered proprietor of a design registered in the United Kingdom under the Registered Design Act shall enjoy the like privileges and rights as though the certificate of registration in the United Kingdom had been issued with an extension to Hong Kong, and second, a power enabling this court to declare that exclusive privileges and rights in the design have not been acquired in Hong Kong on any ground upon which the United Kingdom registration might be cancelled under the law in the United Kingdom.

4. The question presents itself in this way.

"The defendant's affidavit must 'condescend upon particulars,' and should, as far as possible, deal specifically with the plaintiff's claim and affidavit, and state clearly and concisely what the defence is, and what facts are relied on to support it. ... Similarly, if a legal objection is raised, the facts and the point of law arising thereon must be clearly stated (see 0.18 r.11).

Indeed, in all cases, sufficient facts and particulars must be given to show that there is a triable issue (see r.3(1))". Supreme Court Practice 1988 p.140 para 14/3-4/4).

5. The defendant has not referred to the grounds upon which it contends that the design was neither novel nor original, nor does it refer to a single iota of evidence, it simply states its reliance upon "common general knowledge". Mr. Anthony K.K. Chan for the defendant says that particulars can only be furnished after discovery, that in any cape the obligation to condescend to particulars goes hand in hand with the plaintiff's duty to verify its summons under 0.14 r.2(1), and that the plaintiff has not, for instance, exhibited any original design drawings or pointed to any evidence or facts that establish originality. Dealing first with the latter point, in the absence of any reasonably credible suggestion or evidence that there are grounds for cancellation, it seems to me entirely adequate for the plaintiff to rely upon the fact of its design registration without proceeding to justify its entitlement to registration or the absence of grounds for cancellation. Section 2 of the United Kingdom Design (Protection) Ordinance provides quite clearly that the registered proprietor of any design registered in the United Kingdom under the Registration Designs Acts, 1949-1961, shall enjoy in Hong Kong the like privileges and rights as though the certificate of registration in the United Kingdom had been issued with an extension to Hong Kong. And Section 7(1) of the Registered Designs Act 1947 provides equally clearly that "the registration of a design under" that "Act shall give to the registered proprietor the copyright in the registered design, that is to say, the exclusive right ... to sell ... or offer for sale ... any article in respect of which the design is registered, being an article to which the registered design or a design not substantially different from the registered design has been applied...."

6. Reverting to the defendant's failure to condescend to particulars, Mr. Chan submitted that it is notorious that registered designs are not uncommonly invalid. For that proposition Mr. Chan sought to rely upon the judgment of Liu J. in Lung Sun Plastic & Metal Factory Ltd. v. Tung Ngai Plastic Manufacturing Company Ltd. 1980 No.6080, unreported. But it is clear that in that case Liu J. was shown diverse designs which bore a very close resemblance to both the plaintiff's and defendant's articles both in appearance and utility, and that his observation was "suffice it to say that such registration gained at times on fine distinction are not to be accepted without caution ..." That does not avail Mr. Chan any more than does Coleman (C) Ld.'s Application for the Registration of a Design 1958 RPC 434; 438 upon which he also sought to rely for support of his submission that the plaintiff should have given particulars of the facts or evidence upon which it relied to establish novelty and originality. In my judgment a bare reference to "common general knowledge" is inadequate. I myself am not aware of any common general knowledge relating to bag and radio combinations, which articles I may say I have never encountered or heard of before, nor, what is more to the point, has any evidence or information of common knowledge of these articles or variants thereof been provided. The defendant's first ground must therefore be rejected.

7. I turn then to the defendant's second and third grounds. The former relates to the first two of the four features of the definition of design in section 1(3) of the Registered Designs Ace 1949 i.e. shape, configuration, pattern or ornament. The defendant's contention is that the plaintiff` s registration of its design was made by reference to a statement of novelty which was limited to shape and configuration, and that it is therefore precluded from reliance upon pattern or ornamentation. The defendant contends that if anything the qualifying features of the produce consist of pattern or ornamentation. The defendant's reasoning goes thus: Shape and configuration are regarded as synonymous (Russell-Clarke on Copyright in industrial Designs 5th Ed. p.10). There is nothing new in the commonplace rectangular shape of the carrier bag. The radio controls and speakers are simply pattern or ornamentation. Ergo the registered design is invalid, no design in terms of shape or configuration that is original or novel having been shown.

8. While I accept that shape and configuration have been regarded as anonymous, I do not accept that as anything more than a statement of the general position to which there may be exceptions. I was not addressed upon the matter in any detail, nor were the several cases referred to in the relevant footnote canvassed. The footnote itself suggests there is a contrary view and that "configuration" may have a meaning slightly different from shape: per Lord Reid. A similar view was taken by Lindley L.J. in the Cow (P.B.) and Coy Ltd. case to which I shall return. Accordingly in my view having regard to the particular features and nature of the article in this case, shape and configuration would include not only the external profile of the article but also the relative position of the speaker and control knobs. The latter seem to me to be unusually well embraced by the ordinary meaning of "configuration", which is defined in the Concise Oxford Dictionary as "mode of arrangement, conformation, outline; (Astron) relative position of planets etc." No suggestion has been made or has emerged to inhibit the ordinary meaning of the expression. Upon that view design would clearly include not only the shape of the bag but also the relative arrangement and position of the speaker and control knobs.

9. Alternatively the matter may be approached upon the basis contended for by Mr. Chan, i.e. that control knobs and a speaker embedded in the flap and not possessing any elevation could not affect the shape of the bag. That construction is linked to the defendant's submission that the representation in the photographs incorporated in the design registration do not show, or clearly show the control knobs or speaker as projecting or possessing any elevation above the surface of the flap. This point is relevant to both the defendant's second and third grounds since it is implicit in Mr. Chan's submissions that if, contrary to his submissions, the photographic representations of the speaker and control knobs do show some elevation, they do that in so ambiguous a manner as completely to fail the requirements for representations to be clear and unambiguous. The latter requirement was described in the Assistant-Comptroller's decision which was adopted by Luxmore J. in the English Electric Co. Ltd. case Vol 50 (1933) RPC 359, 363, in the following way:

"As the registration of a design confers on the proprietor of the design a monopoly therein, it is essential that the design in respect of which the monopoly is obtained should be clearly defined in the representations in order that the public against whom the monopoly operates shall be in no doubt as to the nature and extent of the proprietor's rights in order that they may not infringe them. It is, therefore, the duty of the Applicant for registration to supply representations which show completely the article in respect of which he claims registration and leave no doubt or uncertainty on this point."

10. It is clear from the foregoing that the requirement is of some importance. However I am satisfied that the elevation or projection of the control knobs and speaker beyond the surface of the flap is clear from the photographs attached to the certificate of registration and are not ambiguous in the sense contended for by Mr. Chan. I think some support for the view that projections above the surface of an article form part of its shape or configuration is to be found in the judgment of Lord Evershed M R in Cow (P.B.) and Coy Ltd. v. Cannon Rubber Manufacturers Ltd. 1959 RPC 347, 350 where he accepted that the ribbed surface of a hot water bottle was part of its shape and configuration. He went on to say:

"It is quite true that in some earlier cases (and I mention, without taking time to recite, Lindley, L.J.'s language in re Clarke's Design, (1896) 13 R.P.C. at pp. 358-361, "shape" and "configuration" has been regarded as something like synonymous terms, used in contradistinction to "pattern" on the one hand or "ornament" on the ocher. But I do not think it right to say that the division between "shape and configuration" on the one side and "pattern or ornament" on the other is at all rigid; and applying what I hope is a common sense test to this hot water bottle, I would have thought it right to say that the ribbing is so marked a feature of the bottle as a whole as to be entitled to be described as a feature of its configuration. It may not be "shape", but I think it is "configuration"."

I accordingly reject the third ground, and also for the foregoing reason and the reasons I have already given, the defendant's second ground.

11. Although not specifically raised on the defendant's behalf in that way, I have considered whether there are any grounds for refusing summary judgment for "other reasons" in terms of 0.14 r.1. It is also in this context I think that I should have regard to the defendant's complaint that the plaintiff has produced nothing to show, for example, that it had itself designed the product or that it has some better claim to the product than the defendant, otherwise then on the bare fact of registration. I bear in mind that it is certainly possible for one party to steal a march upon another and register the latter's design. But there are perfectly good avenues to challenge that. As I have observed there is no onus on the plaintiff or other reason that I can see why the plaintiff should produce such evidence. The rival products are not merely striking similar, they are virtually identical in shape, configuration and every other feature. If there were anything sinister or suspicious in that or if the defendant had some prior claim in respect of the product, or indeed produced it from a common source which was published before being registered by the plaintiff, it is incredible that the defendant should not have been able to do better than rely upon the bare averment of "common general knowledge". Clearly there is no fairly arguable point.

12. For the all foregoing reasons there will be judgment for the plaintiff as prayed. I will now hear any submissions as to the costs and any ancilliary matter.

	(G.P. Nazareth)
	Judge of the High Court

Representation:

Mr. Peter Garland instructed by Messrs. Deacons for plaintiff.

Mr. Anthony K.K. Chan instructed by Messrs. Robin, Bridge & John Liu for defendant.