In Man Power Motors Co Ltd v Tai Ping Motor Trading Co Ltd and Another [2025] HKCFI 1593, the Hong Kong Court of First Instance held that the Plaintiff’s copyright over component parts of truck body was infringed when a substantial similar design truck body was sold in the market.

Background

This is a claim for copyright infringement with respect to the design of the component parts of aluminium trunk body, which involved concept drawings, mould drawings and production drawings. 

The Plaintiff is a company which carries on business in developing, designing, manufacturing and supplying high-quality aluminium truck bodies. The Plaintiff is and was at all material times, the owner of copyright subsisting in the original artistic works relating to the design of component parts of the aluminium truck body (the “Copyright Works”).

The Copyright Works comprised of:

·           Design Drawings created on commission basis under the instructions of Mr Tse (“Tse”), owner of the Plaintiff;

·           Mould Drawings drawn by 劉 (“Lau”) in the course of employment with the Plaintiff’s related company, Smart Vehicle; and

·           Production Drawings drawn by other individuals in the course of their employment with the Plaintiff’s vendor, which was commissioned by Smart Vehicle to produce such aluminium parts. 

The Plaintiff’s case was that all copyright in and to the Copyright Works were duly vested in and belonged to the Plaintiff. The Copyright Works were published and introduced into the market from 2018 to 2023 and achieved great commercial success, through the sales of aluminium truck bodies manufactured in accordance with the Copyright Works.   

The Plaintiff claimed that the Defendants had sold truck bodies in Hong Kong which incorporated component parts that are reproductions of the substantial parts of the Copyright Works. Accordingly, the Plaintiff commenced proceedings against Defendants for copyright infringement.

The issues

The Plaintiff’s rights and ownership over the Design Drawings and Production Drawings were not disputed by any party in the proceedings. The only dispute concerned the Mould Drawings, and two of the main issues in dispute in this case are:

1.      Did Lau create the Mould Drawings in the course of employment, or whether he created the same independently and therefore owned all related intellectual property rights over such Mould Design Drawings, including patent; and

2.      Whether Lau’s alleged assignment of the Mould Drawings to 廣東耀協汽車車身製造有限公司 (“Yao Xie”) was valid, whether the Mould Drawings registered as a short-term patent by Yao Xie was valid, and whether the infringing truck bodies manufactured in accordance with the short-term patent infringed the Plaintiff’s Copyright Works?

Issue 1

In support of the Plaintiff, the court held that the Plaintiff had adduced unchallenged evidence that Lau had created the said works in the course of his employment with Smart Vehicle. As Mr. Tse and Smart Vehicle had respectively executed copyright assignments assigning all rights over the Design Drawings, Mould Drawings and Production Drawings to the Plaintiff, the Plaintiff is and was the owner of such copyright.

Issue 2

The court supported that since Lau fundamentally had no right to the alleged invention, the assignment of intellectual property rights related to the Mould Design Drawings between Lau and Yao Xie was ineffective. In any event, at the time of trial, the short-term patent had already been revoked.

After detailed comparison of the Plaintiff’s component parts and the Defendant’s component parts, the court was satisfied that there are substantial similarities between the two, and that there is a clear case of copying on the part of the Defendants when they produced the component parts.

Therefore, the court held that the Plaintiff has an overwhelming case on ownership of the relevant copyright drawings, and has proved its case against the Defendants for the claim of copyright infringement.

Key takeaways

This case serves as a reminder that even if a patent is successfully registered, it may still be revoked by the court if it is later determined that the registrant had no legitimate rights to the underlying invention and/or the said patent lacks of novelty per se.

Therefore, when acquiring intellectual property rights from third parties, it is necessary to first conduct thorough due diligence to confirm whether the assignor holds lawful ownership or authorization to transfer such rights. Failure to do so could result in the revocation of the patent and exposure to legal liability.

Companies should also exercise caution when purchasing goods with highly distinctive designs, drawings and inventions. Proper and thorough due diligence should be conducted to confirm the ownership and legal status of such design elements, to reduce the risk of becoming tortfeasors and facing potential legal action from rights holders or competitors.