Juicy Can or Juicy Can’t ?
ABG Juicy Couture, LLC. V Bella International Limited & Anor HCA1764/2008 – Court of First Instance
The plaintiff, ABG JUICY COUTURE, LLC., is the owner of a business which designs and markets contemporary casual apparel and fashion accessories primarily for young ladies, which promoted and used the word marks “JUICY” and “JUICY COUTURE” in U.S.A. since 1996 and were registered by the plaintiff in 2000. The marks were used alone or incorporated with some elements of design on the fashion products and related retail services. The plaintiff further claims that the fashion goods were marketed and promoted under the “JUICY COUTURE” brand as a US brand with emphasis on its origin on Los Angeles and/or California.
The defendants were corporate vehicles which have operated the BELLA Fashion Group (“BELLA”), which has operated a number of outlets in Hong Kong marketing and promoting ladies’ fashion wear bearing various trade marks incorporating “JUICY GIRL”.
The plaintiff claims that the defendants in selling their ladies fashion wear and accessories under or in the brand name of “JUICY GIRL” have infringed the plaintiff’s trade marks and passed off their retail business and goods.
The defendants argued that they had been using their “JUICY GIRL” trade mark either alone or in conjunction with other trade marks for ladies’ fashion wear in Hong Kong in mid 1998 through sales in BELLA (which is earlier than the alleged first use of the plaintiff’s trade marks in July 2010). They relied on section 19(4) of the Trade Marks Ordinance:-
“19. (4) A registered trade mark is not infringed by the use by any person in the course of trade or business in Hong Kong of an unregistered trade mark or other sign in relation to goods or services if the unregistered trade mark or other sign has been so used in Hong Kong by that person or a predecessor in title continuously from a date preceding the earlier of-
(a) the date of first use in Hong Kong of the trade mark which is registered; and
(b) the date of registration in Hong Kong of that trade mark.”
Although the plaintiff alleged that it has used the trade marks by way of advertisements of garments in a magazine published in the USA from 1996 to 1998, which was available in Hong Kong through subscription by public libraries or beauty salons, the court rejected the plaintiff’s argument and held that the use should not be considered as a “genuine use” under section 19(4)(a) of the Trade Mark Ordinance. Therefore, the defendants were entitled to rely on that defence.
However, even though the defendants were entitled to use the JUICY GIRL mark, they were not entitled to use the mark “JUICY” as that was one of the plaintiff’s registered trade marks. The court therefore found that the use of the word “JUICY” in stylized script in the defendant’s product catalogue is an infringement of the plaintiff’s trade mark.
The court then dealt with the passing-off claim.
Upon analysis of the evidences, the court found that Suen Lui, a key witness and the 3rd defendant in this case, must have a clear impression of the logo and mark of the “JUICY COURTURE” brand which was established in 2006 because he engaged a designer to produce different designs for the “JUICY GIRL” logo before December 2006.
The court further found that the defendants have modified the design for the words “JUICY GIRL” so that the words used the same Gothic font type as used by the plaintiff, and it is more likely than not that Mr. Suen should have instructed the designer to incorporate the crown design and Gothic font as found in the Plaintiff’s trade marks in designing the “JUICY GIRL” logo.
Therefore, it was held that the defendants were trying to pass-off the JUICY GIRL brand as an associated brand of “JUICY COUTURE”. The use of domain names ending with “.us” is also considered to pass-off the websites as domiciled in the US.
The court granted an injunction to restrain the defendant from using the “JUICY GIRL” marks and designs and ordered the defendant to take all necessary steps to cancel the domain name registration of “juicylicious.us”.