BURBERRY ASIA LTD v. POLO SANTA ROBERTA LTD

CACV 169/2010

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF APPEAL

CIVIL APPEAL NO. 169 OF 2010

(ON APPEAL FROM HCMP NO. 2696 OF 2009)

________________________

	IN THE MATTER of the Registered Designs Ordinance, Cap. 522, of the Laws of Hong Kong
	and
	IN THE MATTER of Registered Design Nos. 0800123.8, 0602147.9 and 0601018.5 being check pattern designs registered with the Designs Registry on 18 January 2008, 14 August 2006 and 21 April 2006 respectively in the name of Polo Santa Roberta Limited
	and
	IN THE MATTER of an application by Burberry Asia Limited to revoke the said Registered Designs and to remove them from the Register of Registered Designs

________________________

BETWEEN

	BURBERRY ASIA LIMITED	Plaintiff
	and
	POLO SANTA ROBERTA LIMITED	Defendant

________________________

Before: Hon Rogers VP, Le Pichon JA and Lunn J in Court

Date of Hearing: 21 December 2010

Date of Judgment: 21 December 2010

Date of Handing Down Reasons for Judgment: 6 January 2011

________________________

REASONS FOR JUDGMENT

________________________

 

Hon Rogers VP:

1.  This was an appeal from a judgment of Reyes J given on 21 July 2010. On that occasion the judge had made orders revoking the registration of the defendant’s registered designs numbers 0800123.8, 0602147.9 and 0601018.5.

2.  In brief, the distinctive features of those registered designs were check designs, which are clearly confusingly similar to the check design which has been used by the plaintiff and its parent company for many years prior to the date of registration of the defendant’s designs.  It is also clear that the defendant must have prior published its own designs not only by the sale of products made in accordance with them that but also by the registration of designs in the Peoples Republic of China.

3.  At the commencement of the hearing of this appeal, this court indicated to the defendant’s counsel that in view of these matters, which were clearly undisputed on the evidence, the defendant’s position would appear untenable and that the defendant would be well advised to consider abandoning the appeal to save the consequences that may well follow the prosecution of an appeal which should never have been brought.

4.  Following an adjournment, the defendant’s counsel indicated that the defendant did not wish to advance further argument.  The appeal was accordingly dismissed with costs.

Hon Le Pichon JA:

5.  I agree.

Hon Lunn J:

6.  I agree.

 

 

(Anthony Rogers) Vice-President

(Doreen Le Pichon) Justice of Appeal

(Michael Lunn) Judge of the Court of First Instance

 

Mr Philips B F Wong, instructed by Messrs Simmons & Simmons, for the Plaintiff/Respondent

Mr Charles J Chan & Mr Gary T K Lam, instructed by Messrs Ivan Tang & Co., for the Defendant/Appellant