IN THE HIGH COURT OF THE
HONG KONG SPECIAL ADMINISTRATIVE REGION
COURT OF FIRST INSTANCE
ACTION NO. 1810 OF 2001
|MAISON JOSEPH BATTAT LIMITED
|POLYFECT TOYS COMPANY LIMITED
Coram: Deputy High Court Judge Whaley in Chambers
Dates of Hearing: 18 and 21 May 2001
Date of Judgment: 6 June 2001
J U D G M E N T
1. This is the 1st plaintiff's application for an interlocutory injunction restraining the defendant, pending the trial of this matter, from trading in, manufacturing or causing to be manufactured the Plastic Drum Play Set, also known as the Drum and Rhythm Set, or any similar article. (Originally the 2nd plaintiff further sought to restrain the defendant from passing off the said toy, or any toy, as being the goods of the plaintiff, however this is no longer pursued, and the 2nd plaintiff is withdrawing from these proceedings.)
2. The 1st plaintiff, hereinafter referred to as "the plaintiff", is a Canadian company which has for over 100 years carried on the business of designing, manufacturing and selling globally a wide range of children's toys, with an annual turnover exceeding US$100 million.
3. The defendant is a Hong Kong company which has been doing business since 1986, mainly trading in children's toys. According to the affirmation of Mr Lau To Kin, a director of the defendant, the defendant has successfully established a business relationship with numerous retail chains internationally, inter alia in Canada, the United States of America and Australia.
4. These proceedings are concerned with a particular children's toy, namely the "Big Clear Drum", a toy aimed at children in the age group from 3 years and upwards, which has been manufactured and sold globally by the plaintiff since late 1998. The drum stands about 7 inches high, with a diameter of just over 12 inches, and its particular features are that the top, bottom, and sides of the drum are made from clear, transparent plastic; the six struts which join the top and the bottom together, and the rims are made from opaque plastic, which feature the primary colours of red, yellow and blue as well as green; and stored inside the drum, clearly visible through the transparent surfaces of the drum, are the drum sticks and also a collection of further musical instruments, consisting of at least one recorder, one tambourine, one maracas and a bell-bracelet.
5. As deposed to by Ms Suzanne Brownstein, a director of the erstwhile 2nd plaintiff, a Hong Kong company which is the exclusive agent of the plaintiff in Hong Kong ("Branford"), the Big Clear Drum was the conception and creation of Mr Joseph Battat, a founder of the plaintiff. The original design drawings for the Big Clear Drum were made, on Mr Battat's instructions, by Mr Patrick Franc, a product designer employed by the plaintiff, in February 1998. Since Mr Franc made the design drawings in the course of his employment with the plaintiff, the plaintiff is and was at all material times the owner of the copyright in the drawings and/or engravings which constituted the artwork for the Big Clear Drum, by virtue of the operation of section 14 of the Copyright Ordinance, Cap. 528.
6. Between March and September 1998 the plaintiff, working with a manufacturer called Wah Lung Toys Company Limited ("Wah Lung") progressively developed and perfected the design of the Big Clear Drum, a process which included making prototypes and machinery moulds.
7. As affirmed by Ms Brownstein, the unique features of the Big Clear Drum included:
(1) It combines a drum and a container in one functional toy;
(2) toys stored inside the drum can be seen without having to open the drum;
(3) the toys inside the drum are original designs;
(4) the plastic parts of the drum are in a distinctive blue, red and yellow colour scheme;
(5) it has a red shoulder/neck strap so that it can easily be carried around by children.
8. The drum is made from the highest quality materials, and is a very safe children's toy, complying with the relevant North American and European safety standards. Furthermore it has been recognised by the Toy Manufacturers of America Incorporated as a product that is especially suitable for children who are blind or visually impaired, as a "sturdy drum ... which promotes awareness of sound and creativity through music".
9. According to Ms Brownstein, who has annexed shipping reports to substantiate her claims, the Big Clear Drum has been an extremely successful product of the plaintiff's, approximately 379,072 pieces of the toy having been sold since its inception, bringing in revenue of HK$34,232,824.
10. In late November 2000 one of the plaintiff's salesman purchased the allegedly infringing product called the "Drum and Rhythm Set" from a retail chain store in North America called Shopko Stores Incorporated. The plaintiff was initially unable to identify the manufacturer of this product, since the manufacturer's name does not appear anywhere on the packaging. From the plaintiff's own enquiries, however, it suspected that a Hong Kong company called...