NERIUM BIOTECHNOLOGY, INC NERIUM SKINCARE, INC NERIUM SKINCARE HK LTD V. NERIUM INTERNATIONAL, LLC NERIUM INTERNATIONAL HONG KONG LIMITED

NERIUM BIOTECHNOLOGY, INC NERIUM SKINCARE, INC NERIUM SKINCARE HK LTD V. NERIUM INTERNATIONAL, LLC NERIUM INTERNATIONAL HONG KONG LIMITED

Interim relief was granted limited to restraining defendants’ use in Hong Kong of plaintiffs’ registered NERIUM trade marks and closely similar trade dress because there are serious issues to be tried on infringement, a real risk of irreparable damage to mark distinctiveness and reputation, and the balance of...

Source-derived case information.

Citation
[2018] HKCFI 674
Parties
1st Plaintiff: NERIUM BIOTECHNOLOGY, INC; 2nd Plaintiff: NERIUM SKINCARE, INC; 3rd Plaintiff: NERIUM SKINCARE HK LTD; 1st Defendant: NERIUM INTERNATIONAL, LLC; 2nd Defendant: NERIUM INTERNATIONAL HONG KONG LIMITED
Court
Court of First Instance
Jurisdiction
Hong Kong
Judgment Date
29 March 2018
Case Number
HCA1188/2016
Procedural Posture
Civil — Interlocutory Injunction Concerning Trade Marks, Passing Off and Alleged Breach of Company Agreement / Inter Partes Summons for Interlocutory Injunction and Summons to Set Aside Service Out; Interim Judgment on Interlocutory Applications
Outcome
Interim injunction granted in part (trade mark infringement head); interlocutory relief refused for passing off and for alleged breaches of the Company Agreement; defendants’ summons to set aside service out dismissed; plaintiffs’ usual undertaking as to damages to be fortified.
Legal Topics
Interlocutory Injunction, Trade Mark Infringement (s18, S14 Cap 559), Own Name Defence (s19(3) Cap 559), Passing Off — Goodwill, Misrepresentation, Damage, Construction of Company Agreement Governed by Texas Law, Fortification of Undertaking as to Damages, Service Out of Jurisdiction/forum Non Conveniens
Source Language
en
Trade Mark Law Passing Off (unfair Competition) Contract/company Agreement Interim Injunctions/equity Private International Law/forum Non Conveniens Intellectual Property Interlocutory Injunction Trade Mark Infringement (s18, S14 Cap 559) +5 more

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Parties

NERIUM BIOTECHNOLOGY, INC

1st Plaintiff

NERIUM SKINCARE, INC

2nd Plaintiff

NERIUM SKINCARE HK LTD

3rd Plaintiff

NERIUM INTERNATIONAL, LLC

1st Defendant

NERIUM INTERNATIONAL HONG KONG LIMITED

2nd Defendant

Procedural Posture

Civil — Interlocutory Injunction Concerning Trade Marks, Passing Off and Alleged Breach of Company Agreement / Inter Partes Summons for Interlocutory Injunction and Summons to Set Aside Service Out; Interim Judgment on Interlocutory Applications

Legal Issues

  1. 1 Whether there is a serious issue to be tried on Hong Kong trade mark infringement based on similarity of trade dress and likelihood of confusion
  2. 2 Whether the defendants have consent or licence under the Company Agreement to use the NERIUM marks
  3. 3 Whether defendants can rely on the own-name defence under section 19(3) Cap 559

Ratio Decidendi

Interim relief was granted limited to restraining defendants’ use in Hong Kong of plaintiffs’ registered NERIUM trade marks and closely similar trade dress because there are serious issues to be tried on infringement, a real risk of irreparable damage to mark distinctiveness and reputation, and the balance of convenience favoured preservation of the status quo in Hong Kong; the passing off claim failed for want of sufficient non-trivial Hong Kong goodwill; disputes under the Company Agreement are more appropriately resolved in the United States (Texas); defendants’ summons to set aside service out was dismissed; the plaintiffs’ undertaking as to damages was to be fortified at HK$10,000,000.

Court Disposition

Interim injunction granted in part (trade mark infringement head); interlocutory relief refused for passing off and for alleged breaches of the Company Agreement; defendants’ summons to set aside service out dismissed; plaintiffs’ usual undertaking as to damages to be fortified.

Orders

  • Interim injunction granted restraining the Defendants from using the Plaintiffs’ Hong Kong registered NERIUM trade marks and closely similar trade dress in Hong Kong pending trial in terms consistent with the interim order made by the Court
  • Defendants’ summons dated 26 July 2016 seeking to set aside service out and related relief dismissed