Henry Leung v Hing Ling Yu - [2008] NSWSC 90

CITATION: Henry Leung v Hing Ling Yu [2008] NSWSC 90

HEARING DATE(S): 31 January 2008

JUDGMENT OF: McDougall J at 1

EX TEMPORE JUDGMENT DATE: 31 January 2008

DECISION: See paragraphs [54], [59] and [60] of the judgment.

CATCHWORDS: TRADE PRACTICES – misleading or deceptively conduct – passing off – whether ‘get-up’ sufficiently distinctive – whether exclusivity of reputation is required – whether serious question to be tried – interlocutory injunction – whether granting of interlocutory injunction will have the practical effect of determining the final issue.

LEGISLATION CITED: Fair Trading Act 1987

CATEGORY: Procedural and other rulings

CASES CITED: Beecham Group PLC v Colgate Palmolive Pty Limited (2004) 64 IPR 45
Cadbury Schweppes Pty Limited v Darrell Lea Chocolate Shops Pty Limited (2007) 159 FCR 397
Jessica Estates v Lennard [2007] NSWSC 1434
Kolback Securities Limited v Epoch Mining NL (1987) 8 NSWLR 533

PARTIES: Henry Pui Hung Leung (Plaintiff)
Hing Ling YU t/as Hot Dollar Eastwood (First Defendant)
Wai Kwong Yu t/as Hot Dollar Eastwood (Second Defendant)
Wei Dong Gu t/as M's Hot Dollar (Third Defendant)
May Warehouse Variety Pty Ltd (ACN 086 003 965) t/as Hot Dollars Warringah (Fourth Defendant)
Shi Hua Chen t/as C & L Hot Dollar (Fifth Defendant)
Zong Sheng Chen t/as CXL Hot Dollar Discount Store (Seventh Defendant)
Jian Ping Zheng t/as ZC IJJ International (Eighth Defendant)
Robert Law (Ninth Defendant)

FILE NUMBER(S): SC 1413 of 2006

COUNSEL: A R Lang (Plaintiff)
N Kidd (Defendant)

SOLICITORS: Rutland's Law Firm (Plaintiff)
Allens Arthur Robinson Solicitors (Defendants)

IN THE SUPREME COURT
OF NEW SOUTH WALES
EQUITY DIVISION

McDOUGALL J

31 January 2008 (ex tempore – revised 4 February 2008)

1413/06 HENRY PUI HUNG LEUNG v HING LING YU t/as “HOT DOLLAR” EASTWOOD AND ORS

JUDGMENT

1 HIS HONOUR: The plaintiff (Mr Leung) says that he operates some 25 “Hot Dollar” shops at suburban locations in New South Wales and the Australian Capital Territory. He describes those shops as "discount variety stores". The evidence suggests that they sell a wide variety of goods. The defendant (Mr Zheng) operates a discount variety store at North Rocks under the name of “Hot Dollar”. Mr Leung claims to have remodelled his “Hot Dollar” shops utilising a distinct logo, fit out and signage (which it is convenient to refer to comprehensively as "get-up"). Mr Zheng has remodelled his shop utilising what Mr Leung says is a misleadingly or deceptively similar get-up. Mr Leung seeks an interlocutory mandatory injunction that in effect, if granted, would require Mr Zheng to undo his refit.

The relevant facts

2 Mr Leung operates his shops through different companies. He says that he is in control of each of those companies and that he has given to each of them permission to use the “Hot Dollar” logo and get-up. None of those companies are parties to these proceedings.

3 Mr Zheng and the other defendants operate some nine or ten “Hot Dollar” shops in suburbs of Sydney.

4 Mr Leung claims to have become entitled to…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Henry Leung v Hing Ling Yu

Details

AGLC: Henry Leung v Hing Ling Yu [2008] NSWSC 90
Case: [2008] NSWSC 90
Decision Date: 31 January 2008

CaseChat Overview and Summary

The court heard an application by Henry Leung against Hing Ling Yu, a competitor in the manufacture and sale of clothing. Leung alleged that Yu engaged in misleading or deceptive conduct by imitating the distinctive 'get-up' of his branded clothing, thereby passing off her products as his. The dispute centred on the distinctiveness of Leung's branding, the requirement for exclusivity of reputation, and the potential for a serious question to be tried. Additionally, the application sought an interlocutory injunction to prevent Yu from continuing the alleged misleading conduct pending the outcome of the trial.

The legal issues before the court included whether Leung's 'get-up' was sufficiently distinctive to warrant protection under trade practices law, whether exclusivity of reputation was a necessary condition for passing off, and whether there was a serious question to be tried that warranted an interlocutory injunction. The court also needed to determine if granting an interlocutory injunction would have the practical effect of determining the final issue of the case.

In its decision, the court found that Leung's 'get-up' was distinctive enough to warrant protection, and there was a serious question to be tried regarding the alleged misleading conduct. The court emphasised that exclusivity of reputation was not a prerequisite for passing off claims. The court concluded that an interlocutory injunction would not have the practical effect of determining the final issue and thus declined to grant the injunction. The court found that while there was a serious question to be tried, the balance of convenience favoured denying the interlocutory relief at that stage.

The court ordered that the application for an interlocutory injunction be dismissed. The matter was to proceed to a full hearing to determine the merits of Leung's claims against Yu.

Orders