|Dispute regarding the use of the term “Computer Festival (電腦節) ”|
“Computer Festival” is organized for consumers to shop for computer products of different brand names at good discounts all at one same venue. In the recent High Court case Chamber of Hong Kong Computer Industry Co Ltd v Hong Kong Computer Association Ltd (HCA 621/2010), the plaintiff claimed passing off of the name “Hong Kong Computer Festival (香港電腦節)” (“HKCF”) against the defendant.
The plaintiff organized the HKCF with the Shamshuipo District Council since 2002, except 2009. The defendant organized a computer festival at 4 computer shopping malls in Shamshuipo namely, Golden Computer Arcade, Golden Computer Centre, Golden Computer Plaza and New Capital Computer Plaza. The plaintiff claimed that “Hong Kong Computer Festival (香港電腦節)” was a trade name with goodwill and reputation. The plaintiff sued the defendant for organizing a similar computer festival called “Shamshuipo Computer Malls Computer Festival” (“SCMCF”) in January 2010 and also sought for an injunction to prevent the defendant from holding another similar festival in August 2010.
The plaintiff held that it would be a passing off action if anyone used the name “Hong Kong Computer Festival (香港電腦節)” or “Shamshuipo Computer Festival (深水埗電腦節)”.
To succeed in the passing off action, the claimant must prove the followings:
The Judge made the following comments in the judgment:
The Judge commented that there was no goodwill in the name “Hong Kong Computer Festival (香港電腦節)”, because people who attended the plaintiff’s festival were more interested in the discount products of different brands, rather than who organized the exhibition. As to the individual booth owners, no confusion would be caused as they were experienced merchants in the computer business, and could recognize who the organizer of the festival was.
The Judge further commented that there was no misrepresentation. First, there was no sign to show that the plaintiff’s customers (i.e. merchants of computer items) would have confused the defendant’s service with the plaintiff’s. Second, the defendant’s festival was held at 4 malls which were close together, while the plaintiff’s festival was always held either in a playground or a designated place provided by Shamshuipo District Council.
The Judge pointed out that the plaintiff would not suffer any damage, because the plaintiff did not gain any profit or financial benefit in the past HKCF. The profit of the past HKCF was used in promoting IT application in Shamshuipo District.
Balance of Convenience
The Judge further considered that the plaintiff could be compensated by damages if it could prove in trial that it has suffered damage because of the computer festival organized by the defendant. The injunction restricting the defendant from holding the computer festival at the four shopping malls would have a greater impact on the defendant rather than on the plaintiff. On a balance of convenience, the Judge decided to dismiss the plaintiff’s injunction application.
The law and procedure on this subject are very specialized and complicated. This article is just a very general outline for reference and cannot be relied upon as legal advice in any individual case. If any advice or assistance is needed, please contact our solicitors.
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Published by ONC Lawyers © 2010