Read the full judgment text of HCA 2329/2014 on BabelCite. This Court of First Instance judgment was delivered on 23 March 2015 before Deputy High Court Judge Paul Lam SC.
Intellectual property – trademark infringement – passing off – default judgment – 'shadow companies' – Civil procedure – application for default judgment under Order 13, rule 6 RHC where claim includes declarations and injunctions – whether court can treat application as one under Order 19, rule 7 RHC – court's task confined to pleadings – affidavit evidence not to be considered on Order 19, rule 7 application – costs of supporting affirmation disallowed – whether declarations of bad faith/fraud granted in default of defence – infringement of registered trade mark under Trade Marks Ordinance (Cap 559) s.18(1), (2), (3) – standing of registered proprietor to sue under s.22 – elements of passing off as summarised in ABG Juicy Couture LLC v Bella International Ltd and Oriental Food Industries Sdn Bhd v Sze Hing Loong Development Ltd – injunction to restrain use of registered company name – injunction to restrain use of Website at www.biostime-paper.com – jurisdiction to make mandatory order against Registrar of Companies under Companies Ordinance (Cap 622) s.108(2) – no such jurisdiction in the action; statutory procedure must be followed – Premier Fashion Wears Ltd v Chow Cheuk Man applied on treatment of irregular reliance on wrong rule – Power Dekor (Hong Kong) Ltd v Power Dekor Group Co Ltd cited on concerns regarding 'shadow companies' – judgment entered in terms of paras (C) and (D) of the prayer for relief – plaintiff to pay costs of action with costs of Lin Ling affidavit disallowed – reminder to practitioners on importance of correct procedure in default judgment applications.
Legal issues: Whether Order 13, rule 6 RHC is the correct basis for default judgment where claim includes declarations and injunctions · Court's powers on an application under Order 19, rule 7 RHC · Whether plaintiff established entitlement to injunction for trademark infringement under the TMO · Whether plaintiff established entitlement to injunction for passing off · Whether court has jurisdiction to make a mandatory order against the Registrar of Companies under s.108(2) of the Companies Ordinance
Outcome: Plaintiff's application for default judgment granted in part; injunctions ordered in terms of paras (C) and (D) of the prayer for relief, restraining the defendant from using its registered company name and its Website under the Domain name. Plaintiff's claims for declarations abandoned.
Cites 3 cases