Keywords: intellectual property, trademark infringement, passing off, Corinthia,

In International Hotel Investments plc & Ors v Jet Union Development Limited & Ors HCA 1941/2015, 3 November 2015 (unreported), the Court considered the Plaintiffs' application for an interlocutory injunction restraining the Defendants from engaging in the mass promotion of a residential development using the English name "Corinthia" on the basis of passing off and trade mark infringement. In the decision, the Court looked at the various elements under the passing off and trade mark infringement claims including misrepresentation and confusion.

Background

The Plaintiffs own the "Corinthia" brand and operate the Corinthia Hotel chain which includes Corinthia Hotel London. They brought an action against the developer and manager-to-be of the residential property development "Corinthia By The Sea" ("the Development") for trade mark infringement and passing off. The Defendants are beneficially owned by Sino Land Company Limited ("Sino Land") and K. Wah International Holdings Limited ("K. Wah"), which are joint developers of the Development. Both Sino Land and K. Wah are household names in Hong Kong.

The Defendants registered the "Corinthia" mark in June 2014, and a widely publicised press conference was held in January 2015 to introduce the Development to the public under the Chinese name "帝景湾", the English name "Corinthia By The Sea" ("the Mark") and the logo* ("the Logo"). A promotion campaign followed, with the Mark and the Logo used alongside the names of Sino Land and K. Wah in all the advertising materials and at the construction site of the Development. Seven months after the press conference, the Plaintiffs brought the action to restrain the Defendants from using the English name "Corinthia" and took out an application for an interlocutory injunction to restrain the defendants from engaging in mass promotion of the Development using the name "Corinthia".

The injunction application

Applying the American Cyanamid principles, the Court must be satisfied that (1) that there are serious issues to be tried; (2) that damages are not an adequate remedy; and (3) that on the balance of convenience, it is just and convenient to grant the injunction.

The passing off claim

To prove a passing off claim, the classic trinity set out in the Jif Lemon case, namely, goodwill, misrepresentation and damage, must be present:-

  1. Goodwill: When considering whether international goodwill of an overseas hotel is recognised in Hong Kong, the hearing Judge, Au-Yeung J, cited the UK Supreme Court decision Starbucks (HK) Limited v British Sky Broadcasting Group PLC [2015] ETMR 31 which stated that it would be enough if the Plaintiffs could show that there were people in this jurisdiction who had obtained the right to receive the Plaintiffs' services abroad by booking with an entity in this country. Although the Plaintiffs had engaged an agent to market their hotels in Hong Kong, there was no documentary evidence showing the taking of bookings in Hong Kong. The Judge also noted that any goodwill of the Plaintiffs was limited to the hotel business.
  2. Misrepresentation: The Judge concluded that there could be no doubt that the Development was that of Sino Land and K. Wah by taking into account features of use of the Mark which distinguish it from the Plaintiffs', including the fact that the marks and logos of Sino Land and K. Wah appear on the construction site and advertising materials in relation to the Development. Further, as the cheapest unit in the Development costs close to HK$ 5 million, an average customer in Hong Kong could reasonably be expected to pay more attention to the details of the developer.

    The Court concluded that there was doubt as to whether there had been misrepresentation.
  3. Damage: The Plaintiffs complained that the mass advertising by the Defendants was not the typical way any luxury hotel would advertise itself, and would cause damage to the Plaintiffs by tarnishing the distinctive character of their "Corinthia" name. The Judge pointed out that since even the Mandarin Oriental (a luxury hotel group) had engaged in mass advertising by placing advertisements on the outer walls of a public car park in Hong Kong, mass advertising would not necessarily tarnish the status of "Corinthia" as a luxury brand.

The trade mark infringement claim

The Plaintiffs claimed that "Corinthia" was entitled to protection as a well-known trade mark under the Paris Convention. To succeed in an infringement claim, the Plaintiffs need to show that an identical or similar mark has been used in relation to identical or similar goods or services, which is likely to cause confusion on the part of the public.

When considering whether the Defendants' use of the name "Corinthia" was likely to cause confusion on the part of the public, the Judge confirmed the English Court of Appeal decision in Specsavers International Healthcare Ltd v Asda Stores Limited [2012] FSR 19 that the use of the offending sign was to be considered in its context. Applying this contextual approach, the Court ruled that the use of the names, marks and logos of Sino Land and K. Wah in conjunction with "Corinthia By The Sea", "Corinthia" and "帝景湾", would lead an average consumer who is reasonably well-informed, reasonably observant and circumspect to work out that the Development was jointly developed by 2 locally well-known developers, and thus, that such average consumer would not be deceived into thinking that the Development is that of a hotel group.

The Judge concluded that the issues to be tried in both the passing off claim and the trade mark infringement claim fell short of being serious.

The interlocutory injunction decision

Taking into consideration that (i) the Plaintiffs had no goodwill in residential developments in Hong Kong as compared to the established goodwill of the Defendants, (ii) the Plaintiffs failed to show serious issues to be tried, and that (iii) they had delayed in coming to court for an interlocutory injunction: 14 months after the date of Defendants' application for trade mark registration and 7 months after the Defendants' press conference, the Judge refused the application for injunctive relief and awarded costs to the Defendants.

Footnote

Originally published 18 December 2015

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