Osmond Lam and Lareina J. Chan successfully defended an application for summary judgment based on copyright infringement and passing off brought by the parent company of “Dettol” products (the Plaintiffs) in the High Court.  Osmond and Lareina acted on behalf of the parent company of “Walch” products in Hong Kong (the Defendant).  Winnie Tam SC and Jason Yu acted on behalf of the Plaintiffs.

The parties are competitors in the business of manufacturing and merchandising hygiene and personal care products.  The subject matter of the complaint is a partially transparent plastic outer packaging adopted by the Defendant for its bundled hand and body wash products as part of a promotion.

The Judge in charge of the Intellectual Property List, the Honourable Mr Justice Lok, took the view that there was a triable issue as to whether there was sufficient copying of the Plaintiffs’ Copyright Work which constituted copyright infringement, in that the Court could not make a final determination on whether a substantial part had been copied.

His Lordship noted that an unusual feature of the case was that, on the evidence presented by the Defendant at this stage, “Walch” products had a significantly higher market share (in Hong Kong) compared to the similar “Dettol” branded products, such that the Defendant would have less of an incentive to copy the Plaintiffs’ design.

On passing off, his Lordship opined it would be more difficult for the Plaintiffs to obtain summary judgment, as the three basic elements for the tort of passing-off usually involved fact-sensitive matters, and there were various triable issues including whether there was goodwill associated with the Plaintiffs’ Get-Up, and whether there was a likelihood of confusion (as both “Dettol” and “Walch” are well-known household marks).

The full judgment handed down on 12 March 2024 is available here.