Intellectual property — trade marks — infringement — passing off — use of infringing marks by separate former offshoot of charity — similarity likely to confuse public, particularly donors and sponsors — no defence — summary judgment granted
P, an American charity named “Operation Smile, Inc” whose volunteer medical professionals surgically repaired the facial deformities of children worldwide, led a successful medical mission to Mainland China in 1991. In 1992, D, an offshoot of P, was incorporated as “Operation Smile – China Medical Mission Ltd” to provide specialised medical services in Hong Kong, Macao and Mainland China with the express purpose of furthering P’s charitable objectives. In 1998, P registered in Hong Kong the trade mark “OPERATION SMILE” with two variants: one with a motif of a globe between the two words and one with only the motif and no words. When D refused to enter into a formal licensing agreement with P, P terminated D’s right to use its name and trade marks (the Termination) and required D to “cease and desist” in infringing its intellectual property rights. D changed its name to Beam International Foundation Ltd, but continued using “operationsmile and “opsmile” as domain names which resolved to its website. D also applied to register marks for “Operation Smile” in English and Chinese characters (D’s Marks). P brought proceedings against D for infringement of its trade marks and for passing off and sought summary judgment. D admitted using P’s trade marks after the Termination, but argued that it shared goodwill in the trade marks with P and therefore had an arguable defence.
Held, granting the application, that:
- Before removing itself from the aegis of P, D had been no more than P’s alter ego, enjoying its goodwill, name and trade marks with its consent. (See para. 25.)
- On the evidence, D did not share goodwill in Hong Kong and the Mainland with P. D had not shown that P’s trade marks or name had ceased to be distinctive of the former licensor. Nor had D shown that P’s goodwill had been extinguished (Reckitt & Colman Ltd v Borden Inc  1 All ER 873 applied). (See paras. 30, 34.)
- There had been passing off which threatened to continue. D’s acts post-Termination misrepresented the relationship and were designed to deceive — they were no longer associated and D had no right to continue to use P’s name. (Coles v. Need  AC 82, Dawnay Day & Co Ltd v. Cantor Fitzgerald Int’l  RPC 669 applied). (See paras. 32–33, 35–38.)
- D’s Marks were a blatant infringement of P’s intellectual property rights and D had no defence. The similarity to, and in some respects identical reproduction of, P’s marks registered in Hong Kong, were likely, even if not calculated, to confuse the public and attract donations and sponsorship from benefactors who intended them for the original foundation in the US. (See paras. 29, 38, 43.)
- (Per curiam) Practitioners were reminded that a witness statement, affidavit and affirmation should cover only those issues on which the witness could give evidence-in-chief and not contain any commentary on or quotations from documents in the trial bundle or engage in matters of argument (JD Wetherspoon plc v Harris  1 WLR 3296).
This was an application by the plaintiff for summary judgment against the defendant in an action for infringement of trade marks and passing off. The facts are set out in the judgment.