Pannam Ltd v. Gheorghe Nicolaescu and Another

HCMP 339/2015 & 374/2016

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO 339 OF 2015

____________

_____________

AND

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO 374 OF 2016

____________

_____________

D E C I S I O N

_____________

1.What I have to deal with is a summons in each of the two actions for them to be consolidated or tried at the same time or one immediately after the other.

2.The background to HCMP 399/2015 (“the first action”) has been set out in my decision on security for costs dated 9 June 2015 which I need not repeat here.  The background is, of course, familiar to the parties.  The underlying dispute concerns a company, ie the 2^nd respondent in the first action (“the Company”), and an invention.  The intellectual property rights relating to that invention were transferred Mr Nicolaescu (the 1^st respondent in the first action) to the Company by an “Intellectual Property Rights Transfer Agreement” dated 18 February 2014 between Mr Nicolaescu and the Company.  Mr Nicolaescu, however, as sole director of the Company caused it to execute an agreement on about 11 September 2014 with himself to terminate the Intellectual Property Rights Transfer Agreement.

3.The parties to the first action are Pannam Limited (“Pannam”) as applicant and Mr Nicolaescu as the 1^st respondent and the Company as the 2^nd respondent.

4.The first action was begun by originating summons but there being factual disputes, points of pleading were directed to be filed.  Mr Nicolaescu filed a Points of Defence and Counterclaim in June 2015 in which he claimed the following relief by way of counterclaim:

“(i) a declaration that the Termination Agreement is valid, legal and binding upon all parties to the action and their respective directors, servants, agents, associated companies, or otherwise howsoever;

(ii) an injunction restraining the Applicant and its directors, servants, agents, associated companies, otherwise howsoever, from dealing with or engaging in any acts in dealing with the Invention, save and except for the benefit and/or protection of the Invention and in the best commercial interests of the 1^st Respondent, or, unless the act done or the transaction entered into is done / entered into with the written consent of the 1^st Respondent;

(iii) a declaration that the Purported Appointment is invalid, illegal and void;

(iv) a declaration that all the Actions taken by Parshin (subsequent to the Purported Appointment) are unlawful, invalid and unenforceable and an Order that the Applicant nullify the Purported Appointment and rectify the Company records;

(v) a declaration that the Purported Members’ Written Resolution is unlawful, invalid and unenforceable;

(vi) an Order that any license granted to Zeep be immediately revoked; …”

5.In my decision on security for costs in June 2015, I observed at §18 that it is doubtful if Mr Nicolaescu can maintain the counterclaims in (iii) – (v) above which are based on the articles of association of the Company, since he is not a member of the Company.

6.The matter was left there and directions were given for the conduct of the case.  Leave was given on 22 February 2016 for the trial to be set down.  The trial dates which fall on 1 November 2016 for 5 days were fixed on 5 April 2016.

7.On 19 February 2016, Mr Nicolaescu took out a summons to amend his Points of Defence and Counterclaim to add 2 further reliefs, namely:

“(i) a declaration that the IP Rights Transfer Agreement be set aside as being void and unenforceable on grounds of misrepresentation;

(ii) a declaration that the 3^rd MOS [i.e. Memorandum of Shareholders] and the 3 Service Provision Agreements be set aside as being void and unenforceable on grounds of economic duress;”

8.On the same day, Mr Nicolaescu and Framelight Limited (“Framelight”), being his corporate vehicle for holding shares in the Company, issued the originating summons in HCMP 374/2016 (“the second action”) against Pannam, Mr Parshin and the Company, claiming the following relief:

“1. a declaration that the IP Rights Transfer Agreement dated 18 February 2014 be set aside as being void and unenforceable on grounds of misrepresentation;

2. a declaration that the Memorandum of Shareholders dated 27 June 2014 and the 3 Service Provision Agreements dated 1 April 2014 be set aside as being void and unenforceable on grounds of economic duress;

3. a declaration that the Termination Agreement dated 11 September 2014 is valid, legal and binding upon all parties to the action and their respective directors, servants, agents, associated companies, or otherwise howsoever;

4. an injunction restraining the 1^st Defendant (and its directors, servants, agents, associated companies, otherwise howsoever) and the 2^nd Defendant from dealing with or engaging in any acts in dealing with the Invention (as defined in the Order of The Honourable Mr. Justice G. Lam dated 9 March 2015 in the action HCMP 339/2015) (including any transfer of rights in respect of the Invention), save and except for preservation of the status quo in respect of the registered ownership of intellectual property rights of the Invention, or, unless the act done or the transaction entered into is done / entered into with the joint written consent of the 2^nd Plaintiff and the 1^st Defendant;

5. a declaration that the purported appointment of the 2^nd Defendant as a director of the 3^rd Defendant on 27 June 2014 (“Purported Appointment”) is invalid, illegal and void;

6. a declaration that all the actions taken by the 2^nd Defendant (subsequent to the Purported Appointment) on behalf of the 3^rd Defendant are unlawful, invalid and unenforceable;

7. an Order that the 1^st and 2^nd Defendants nullify the Purported Appointment and rectify that the records of the 3^rd Respondent;

8. a declaration that the “Protocol and Resolution in Writing of Extraordinary Meeting of Company Members” in respect of the 3^rd Defendant dated 11 December 2014 is unlawful, invalid and unenforceable;

9. an Order that any license granted to Zeep HK Limited be immediately revoked; …”

9.Also on the same day, Mr Nicolaescu took out a summons for consolidation in the first action, but no similar summons was taken out in the second action.

10.When the two summonses came before me, it transpired that the amendments to the Points of Defence and Counterclaim sought were defective, in part because they sought an order that 3 service provision agreements (entered into between the Company on the one hand and 3 entities on the other respectively) be set aside but those 3 entities were neither joined nor given notice.  In fact the originating summons in the second action suffered from the same defect.  Leave was given for Mr Nicolaescu to withdraw the amendment summons.  The consolidation summons was adjourned sine die. 

11.It was only on June 2016 that Mr Nicolaescu and Framelight took out a summons for leave to amend the originating summons in the second action, proposing to delete the prayer for setting aside the 3 service provision agreements and to add a claim for:

“9A. an account of profits that each of the Defendants have received as a result of the monetisation of the Invention since 11 September 2014, including but not limited to revenue received as a result of the monetisation of the Invention under any licence granted to Zeep HK Limited”

12.On the same day Mr Nicolaescu took out a summons for leave to amend the consolidation summons in the first action, and Mr Nicolaescu and Framelight took out a summons in the second action for consolidation with the first action.  On 28 June 2016, without opposition, I gave leave for the amendments to be made.

13.The two consolidation summonses came to be heard before me yesterday.

14.In my view the summonses must fail because, basically, it is now far too late and far too close to the trial of the first action. While some of the reliefs claimed in the second action may overlap with those in the first action, I agree with Mr Chain, who appeared for Mr Parshin and Pannam, that §2 and §9A of the amended originating summons in the second action raise matters that have not been the subject of any pleaded claim for relief at all in the first action.  While it is true that there are matters related to these two claims mentioned, to varying degrees, in the materials in the first action, to allow those claims for relief to be made is a very different matter.  Unless there is a relevant and potentially viable claim for relief, a defendant may have chosen to ignore certain allegations in the plaintiff’s pleading or evidence as irrelevant, or not to deal with them as fully as he would otherwise have, without taking the trouble to have them struck out.  As Ribeiro PJ said in Sinoearn International Ltd v Hyundai-CCECC Joint Venture (2013) 16 HKCFAR 632 at §30:

“A party must raise all the issues he wishes to raise to be dealt with at the trial. Parties are not entitled to have issues recently thought up dealt with separately and piecemeal. The other party is entitled to know from a clear pleading what is the entire case he has to meet so that he can decide whether particulars should be sought; how he should plead in response; what discovery he is entitled to; what evidence he should adduce to meet it; and what points of law should be taken.”

15.A party’s case supporting the relief he claims is the crucial matter in a pleading.  It is a non sequitur to say that because Mr Nicolaescu has mentioned something in his counterclaim in the first action, then all the relevant evidence must have already been filed by all parties.

16.In this connection the claim for an account of profits in §9A of the amended originating summons in the second action is particularly stark – it is a wholly new claim made by Mr Nicolaescu as holder of the intellectual property rights over the invention.  Many new issues may arise in relation to such a claim – at the very least the defendants to that claim are entitled to a proper opportunity of considering their position and raising such issues as may be appropriate.  In his oral submissions, Mr Kat SC, who appeared for Mr Nicolaescu and Framelight, offered to undertake to apply by summons to remove §9A from the prayer if that is the only obstacle in the way of consolidation.  I do not think that is the only problem with consolidation but in any event, that proposal would simply mean there may yet be a separate claim in a third action – a prospect that runs contrary to applicants’ argument that consolidation would avoid multiplicity of proceedings.

17.This is exacerbated by the fact that the second action has been brought by an originating summons.  There has been no pleading filed.  The consolidation summonses ask for the points of pleadings in the first action to stand as pleadings in the second action.  This seems to me, quite unfairly, to put the burden on the defendants to the second action to sort out what in those pleadings is relevant and not relevant to the reliefs claimed in the second action.

18.Take for example the claim for setting aside the Memorandum of Shareholders dated 27 June 2014 in the second action based on economic duress.  It is true that there is a mention of “illegitimate pressure” in §72 of the points of counterclaim in the first action, but nowhere are the particulars of economic duress given.  Both economic duress and account of profit for infringement of intellectual property rights are causes of action that require careful, fully particularised pleading.  What is being proposed is to tell the defendants in the second action to go through the pleadings in the first action with a view to identifying what the plaintiffs intend to rely on against them, and then be content with their Points of Reply and Defence to Counterclaim and affirmations filed in the first action to stand as their defence and evidence in the second action (subject to any amendments and addition they would have to make in the very limited time before trial).  That, with respect, is quite an untenable proposal.

19.Mr Chain was also correct in pointing out that the alleged threat giving rise to economic duress was said to be made not only by Mr Parshin but also by three service providers.  None of them is being proposed to be called to give evidence at present, against the background that economic duress relating to the Memorandum of Shareholders is not part of the relief sought in Mr Nicolaescu’s counterclaim in the first action.  If a claim for such relief is to be made, as it is now made in the second action, Mr Parshin and Pannam must in fairness be given a proper opportunity of considering what evidence they wish to adduce to defend that claim.

20.The second action is at an early stage.  No directions for its conduct have yet been given.  Mr Parshin’s evidence refers to the possibility of a counterclaim against Framelight, a matter which has not featured in the first action given that Framelight is not a party there.  The prospect of a counterclaim by Mr Parshin and/or Pannam against Mr Nicolaescu has also been raised, given that only Pannam has been named as the plaintiff in the first action and only claims which (on Pannam’s case) fall within s 729 of the Companies Ordinance have been included in the first action.  There is no basis to conclude that the first action exhaustively contains all the claims that Pannam and Mr Parshin may with arguable basis wish to bring against Mr Nicolaescu and Framelight.  Further, the defendants in the second action have also taken out an application for security for their costs, on the ground that Mr Nicolaescu and Pannam are resident overseas.

21.If the actions were to be heard together, there had to be a proper opportunity given for pleadings to be filed in the second action, and for the defendants to consider whether counterclaims should be brought against Mr Nicolaescu and in particular Framelight, whether additional evidence may be needed, and whether particulars and discovery of documents should be sought.  It may be that these steps could possibly have been accommodated during the time taken for the first action to progress to trial, if Mr Nicolaescu and Framelight had started the second action and applied immediately for consolidation after the hearing in June 2015.  But they did not apply until February 2016, and even then the applications were defective, and the defects were not put right until late June 2016, after the first action was set down for trial.  Mr Kat SC criticised Mr Parshin for refusing to accept service of the second originating summons.  But the time taken to serve out of the jurisdiction was much shorter than the delay on the part of the applicants in taking out the applications for consolidation.  Anyhow, irrespective of what the cause of delay was, the fact is that we are now barely a month before the trial of the first action.  Fairness would require more time than that to be given to the defendants in the second action for preparation before a trial of the second action takes place.  The defendants in the second action, who are in the plaintiff’s camp in the first action, should not have had to be distracted from preparation for the trial of the first action in the way proposed. 

22.Consolidation would therefore mean derailing the trial of the first action.  But the trial date is a milestone date and not to be altered without exceptional reason.  I am not satisfied there are exceptional circumstances here.  Nor does either party suggest moving the trial date.  While I recognise the general desirability of avoiding multiplicity of proceedings, I do not think that the circumstances of this case justify acceding to the consolidation application at this late stage and, as an inevitable consequence, vacating the trial date of the first action.

23.The two summonses will therefore be dismissed, with an order nisi that the applicants in the summonses pay the costs of the respondents in the summonses forthwith.

Mr. Christopher Chain, instructed by Oldham, Li & Nie, for the applicant in HCMP 339/2015 and the 1^st and 2^nd defendants in HCMP 374/2016

Mr. Nigel Kat, SC, instructed by Howse Williams Bowers, for the 1^st respondent in HCMP 339/2015 and the 1^st and 2^nd plaintiffs in HCMP 374/2016

The 2^nd respondent in HCMP339/2015 and the 3^rd defendant in HCMP 374/2016 was not represented and did not appear