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Mattel, Inc. v Tonka Corporation

Judgment Cited authorities 6 Cited in Precedent Map Related
Vincent
Judgment Date11 July 1991
Subject MatterCivil Action
Judgement NumberHCA1918/1991
CourtHigh Court (Hong Kong)
HCA001918/1991 MATTEL, INC. v. TONKA CORPORATION

HCA001918/1991

HEADNOTE

Service out of the jurisdiction - Order 11 - whether service was bad - whether good arguable case - meaning of "import" in section 5(2) of Copyright Act 1956 - section 27 of Trade Marks Ordinance Cap.43 - whether ex parte order should be discharged for misleading evidence.

1991, No.A1918

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

____________

BETWEEN

MATTEL, INC.

Plaintiff

AND

TONKA CORPORATION

Defendant

____________

Coram: Deputy Judge Andrew Li, Q.C. in Chambers

Date of Hearing: 24 to 27 June 1991 inclusive

Date of Delivery of Judgment: 11 July 1991

______________

J U D G M E N T

______________

1. The Plaintiff and the Defendant are both United States corporations and deal in dolls. One of the Plaintiff's lines is the famous "BARBIE" doll. The Defendant has recently introduced in the United States the "Miss America" dolls.

The ex parte Order

2. On 14th March 1991 the Plaintiff obtained ex parte from Mr. Justice Jones an order in the following terms:

"IT IS ORDERED that the Intended Plaintiff have leave to issue a Writ of Summons against the Intended Defendant and to serve the same Writ on the Intended Defendant at Interchange North Building, 300 South Highway 169, Suite 500, St. Louis Park, Minnesota, 55426, United States at the Intended Defendant's principal place of business."

3. The Order prescribed 22 days after service for acknowledgement of service.

The Plaintiff's claims

4. Pursuant to that Order, the writ endorsed with the Statement of Claim was issued on 15th March 1991. The Plaintiff claims the Defendant has infringed its copyright and registered trade marks.

The copyright claim

5. The copyright claim is based on section 5(2) of the Copyright Act 1956 which applies to Hong Kong by virtue of an Order in Council. Section 5(2) so far as material reads:

"The copyright in a ... artistic work is infringed by any person who, without the licence of the owner of the copyright, imports an article (otherwise than for his private and domestic use) into [Hong Kong] if to his knowledge the making of that article constituted an infringement of that copyright, or would have constituted such an infringement if the article had been made in the place into which it is so imported."

6. The copyright claim was pleaded in paragraph 10 of the Statement of Claim in these terms:

"10. Prior to the issue of the Writ herein the Defendant has, without the licence of the Plaintiff, imported into Hong Kong dolls known as "Miss America" bearing a head the making of which would, if done in Hong Kong, have to the Defendant's knowledge constituted an infringement of the Plaintiff's copyright in the current "BARBIE" doll's head sculpture.

PARTICULARS

The Plaintiff will rely, pending discovery and/or interrogatories, upon the following:-

(1) The importation, and/or the procurement of the importation by Jetta Company Limited and/or an other or others unknown, into Hong Kong by road of quantities unknown of Miss America dolls on divers dates prior to about the 1st day of March 1991.

(2) The importation, and/or the procurement of the importation by Jetta Company Limited and/or an other or others unknown, into Hong Kong by sea of quantities unknown of Miss America dolls on divers dates after about the 1st day of March 1991. In particular, the Plaintiff will rely upon the importation into Hong Kong of Miss America dolls in container No. APLU 702244 020 8578 on board the "Eagle Comet No.49" which arrived in Hong Kong on about the 9th day of March 1991. The said container was then transferred to the "President Adams" destined for New York via Kao Shiung, Taiwan."

7. The Plaintiff then pleads various particulars of knowledge.

The trade marks claim

8. The Plaintiff is the registered proprietor of the following two Hong Kong registered trade marks.

No. Mark Class Goods
(1) 938 of 1965 BARBIE 28 Dolls and dolls' clothes
(2) 1512 of 1972 BARBIE 16 Paper and paper
articles etc.

9. The trade marks claim is based on section 27 of the Trade Marks Ordinance. Section 27(1) provides that subject to inter alia section 27(3) the registration of a person as proprietor of a trade mark in respect of any goods

"shall if valid give or be deemed to have given to that person the exclusive right to the use of the trade mark in relation to those goods and, without prejudice to the generality of the foregoing words, that right shall be deemed to be infringed by any person who, ... uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either -

(a) as being use as a trade mark; or

(b) in a case in which the use is use upon the goods or in physical relation thereto or in an advertising circular or other advertisement issued to the public, as importing a reference to some person having the right either as proprietor or as registered user to use the trade mark or to goods with which such a person as aforesaid is connected in the course of trade."

Section 27(3) reads:

"The right to the use of a trade mark given by registration as aforesaid shall not be deemed to be infringed by the use of any such mark as aforesaid by any person -

(a) in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark if, as to those goods or a bulk of which they form part, the proprietor or the registered user conforming to the permitted use has applied the trade mark and has not subsequently removed or obliterated it, or has at any time expressly or impliedly consented to the use of the trade mark; or

(b) in relation to goods adapted to form part of, or to be accessory to, other goods in relation to which the trade mark has been used without infringement of the right given as aforesaid or might for the time being be so used, if the use of the mark is reasonably necessary in order to indicate that the goods are so adapted and neither the purpose nor the effect of the use of the mark is to indicate otherwise than in accordance with the fact a connexion in the course of trade between any person and the goods."

10. The trade marks claim is pleaded in paragraph 12 of the Statement of Claim in these terms.

"12. Further and in the alternative, the Defendant has infringed Hong Kong Registered Trade Mark Nos. 938 of 1965 and 1512 of 1972 and each of them by procuring the printing in Hong Kong of the packaging for the Miss America doll which packaging bears inter alia the words "clothes also fit BARBIE"."

11. Certain particulars are pleaded. In summary the Plaintiff says that until discovery and/or interrogatories, they rely on the procurement of Hwa Yang Printing Company Limited and/or an other or others unknown to print the packaging which was provided to the Plaintiff's investigator on 4th February 1991 and exhibited as "SMV2" to the affidavit of Steven McVeigh and the packaging for the Miss America dolls referred to in paragraph 10 which I have set out above.

12. The packaging relied on is a box for the Miss America dolls. The printing thereon made plain that it is a product of Kenner, a division of the Tonka Corporation, the Defendant. It contains the statement on the side of the box: "Clothes also fit BARBIE and other 11½" fashion dolls". The back of the box referred to the following:

  • 1991 The Miss America Organization with the C sign (indicating that that organization had the copyright in Miss America).
  • BARBIE is a registered trade mark of Mattel Inc. (the Plaintiff).
  • Kenner, a division of Tonka Corporation (the Defendant).
  • Made in China.

On opening the box, one of the inside flaps set out the telephone number and the address of Kenner Products Consumer Affairs Department to whom consumer complaints could be addressed. The doll itself bears the marking (C) Kenner 1991.

Service of writ

13. Pursuant to the ex parte order, the Plaintiff served the writ in the United States on the Defendant. As deposed to in the affidavit of Nancy Dassoff sworn on 21st March 1991, service was effected on 21st March 1991 by serving Robin Moore at CT Corporation System in Los Angeles, said to be the designated agent for service of process in California on the Defendant.

14. CT Corporation System in California then transmitted on 21st March 1991 the documents via Federal Express, a courier service, to Joseph Joyce, General Counsel of the Defendant at 300 South Highway 169 STE 500 St. Louis Park, Minnesota 55426. The documents were duly received there. This was the address specified in the ex parte order. This is evident from the Service of Process Transmittal Form exhibited to the affidavit of Michael Davis sworn on 26th April 1991.

15. On 30th May 1991, there was a further attempt at service on the Defendant at the address specified in the ex parte order.

The Defendant's Challenge

16. By its summons filed on 29th April 1991, the Defendant sought to challenge the jurisdiction. The orders sought are:

1. An Order that the Writ or its service be set aside.

2. Further or in the alternative, a declaration that the Writ has not been duly served upon the Defendant.

3. Further or in the alternative that the ex parte order be discharged.

4. Further or in the alternative, a declaration that in the circumstances the Court had no jurisdiction over the Defendant in respect of the subject matter of the claim or the relief or remedy sought.

The grounds relied on are:

(A) No or no good arguable cause of...

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