Aqua-leisure Industries, Inc and Another v. Intex (Hong Kong) Ltd

HCA000189/2003

HCA 189/2003

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO. 189 OF 2003

Coram: Hon Sakhrani J in Chambers

Date of Hearing: 3 February 2004

Date of Judgment: 3 February 2004

__________________

J U D G M E N T

__________________

1.There are three matters before me :

(1) The question of costs of the defendant's application by summons dated 23 June 2003 for inspection of the original design drawing pleaded in the statement of claim;

(2) the defendant's summons dated 23 June 2003 to strike out the statement of claim under O.18, r.19 of the RHC and under the inherent jurisdiction of the court; and

(3) the plaintiff's summons dated 24 June 2003 for leave to file and serve an amended statement of claim.

I shall first deal with the summonses set out in (2) and (3) above.

2.A court can, of course, give leave to amend a pleading on an application taken out by the opposing party to strike out the pleading. This is not disputed. It seems to me that as a result of the application taken out by the defendant to strike out the statement of claim, the plaintiff took out its summons dated 24 June 2003 to amend the statement of claim.

3.There is no doubt that the plaintiffs are no longer seeking to rely on the allegations in the statement of claim but seek leave to make amendments to the statement of claim. There were different versions of the proposed amendments to the statement of claim supplied to the defendant over the last few months and the final version of the proposed pleading is the one handed up to the court this morning by Ms Tam with the additions of sub-paras. (d) and (e) to para. 7 which were added by Ms Tam during the mid-morning adjournment. That is the pleading I should consider.

4.It seems to me that the defendant was justified in seeking to strike out the statement of claim as is evident by the amendments made by the plaintiffs to the statement of claim. Apart from abandoning the claim by the 1st plaintiff, there are significant amendments made in respect of the claim to copyright and what are said to be the copyright works.

5.Mr. Pao opposes the application to amend on two grounds :

(1) that the plaintiffs have sued the wrong party; and

(2) that the proposed pleading lacks particularity in respect of two matters.

6.I shall deal with (1) first. Mr. Pao submitted that the plaintiffs have sued the wrong party and for this reason leave to amend should be refused. I am unable to accept this submission. Para. 3 of the defence pleaded that the defendant is a service company providing administrative support services and does not conduct any trading business or manufacture or supply any product. That is a matter in issue between the parties. The plaintiffs have pleaded the trading activities of the defendant under the particulars of copyright infringement in para. 7 of the proposed pleading. The evidence before me is not such as to make it plain and obvious that the plaintiffs' assertions are bound to fail. That is a matter to be determined at trial and I am unable to accept Mr. Pao's submission that leave to amend should be refused on the ground that the plaintiffs have sued the wrong party.

7.The second ground relied on by Mr. Pao is that the proposed pleading lacks particularity in respect of two matters. The first is in relation to an earlier request made, namely, Request 13 where the plaintiffs were asked to :

“ (a) Identify with proper particularity all antecedent drawings, documents and/or self-rising simple set pools which were referred to or otherwise used by the maker of the drawing in making the drawing.

(b) Identify the part(s) of the drawing which were not present in the antecedent drawings, documents or self-rising simple set pools."

8.The answer given was that the design drawing was an original artistic work created by Mr. Ng based on the requirements and specifications developed by the plaintiffs. Despite an order to provide further particulars made by Master Woolley on 10 March 2003 and an unless order made by Master J. Wong on 11 April 2003, the plaintiffs failed to supply the further particulars.

9.It was Mr. Pao's contention that the proposed amendment lacks particulars in that it fails to identify the antecedent drawings or documents and/or self-rising simple set pools referred to or used by the maker of the drawings in making the drawings. He relied on Elram International Actuators Ltd. v. Fluid Power Engineering Ltd. [1984] FSR 151 and submitted that what is set out in the proposed pleading is insufficient.

10.It is pleaded in the proposed amendments to the statement of claim at para. 3 that the copyright works were

“ based on the original concept and design specifications developed by Aqua Leisure but were not derived from any antecedent drawings or pool samples or prototypes."

That, it seems to me, to be pleading quite clearly that the copyright works were not derived from any antecedent drawings or pool samples or prototypes. Mr. Pao says that that is unbelievable. However, it seems to me that the plaintiffs have clearly pleaded that no antecedent drawings or pool samples or prototypes were relied on in creating the copyright works. Whether or not that will be accepted at trial is a different matter. It seems to me, however, that sufficient particulars have been given of the plaintiffs' case.

11.The second matter in respect of which it is said that the proposed amendment lacks particulars is in respect of similarities between the defendant's products and the copyright works. In view of the fact that on the evidence self-rising pools have been on the market for some considerable time before the creation of the copyright works in May and June 2002, it is in incumbent, in my view, for the plaintiffs to fully particularize this before the court should grant leave to the plaintiffs to amend.

12.Ms Tam gave an undertaking to the court that within 14 days from today the plaintiffs will supply the particulars requested, namely, under para. 5 of the proposed pleading, of the allegation that the defendant's pools reproduce or substantially reproduce the copyright works, give full particulars of all facts and matters relied on by the plaintiffs in support of the allegation that the pools identified as Product No. 56914, 56915 and 56916 are reproductions or substantial reproductions of the works, in particular, identifying all features of similarity between the defendant's products and the copyright works including by way of indicating the same on the copyright works pleaded in para. 3 of the proposed pleading. It seems to me that if such particulars are provided then the court should give leave to the plaintiffs to amend. However, in view of the fact that there has been some delay in formulating the proposed amendments with different versions emerging up to date, it seems to me to be proper to adjourn the plaintiffs' application to amend the statement of claim and the defendant's application to strike out to a date to be fixed after the 14 days' period to supply the particulars has expired so that the court is in a position to see the proposed amended statement of claim with the proper particulars to be supplied before giving leave to amend. At the adjourned hearing the court can make the appropriate orders on the defendant's summons to strike out and the plaintiffs' summons to amend and give consequential directions.

Representation:

Ms Winnie Tam instructed by M/s Lovells for the plaintiffs

Mr. Felix Pao instructed by M/s Baker & Mckenzie for the defendant