DACHENG INTERNATIONAL LEGAL SERVICES LTD AND ANOTHER v. YEUK LUNG BENEDICT AND ANOTHER

DACHENG INTERNATIONAL LEGAL SERVICES LTD AND ANOTHER v. YEUK LUNG BENEDICT AND ANOTHER

The court found the plaintiffs established goodwill in Hong Kong in the DACHENG name and that the defendants' continued use amounted to passing off; accordingly plaintiffs succeed on their passing off claim. However, there are genuine disputes of fact about the 2014 transfer and the validity/authority behind it such that summary judgment cannot be given on the unlawful transfer and trade mark infringement claims; those issues must proceed to trial if pursued. The court therefore made orders in the terms of the plaintiffs' revised draft order excluding trade mark infringement claims and made a costs order nisi in favour of the plaintiffs for 70% of costs.

Citation
[2018] HKCFI 780
Parties
1st Plaintiff: Dacheng International Legal Services Limited; 2nd Plaintiff: Beijing Dacheng Law Offices LLP; 1st Defendant: Sze Yeuk Lung Benedict trading as Dacheng Law Offices; 2nd Defendant: Dacheng Legal Services Limited (formerly Capital Avenue Limited)
Court
Court of First Instance
Jurisdiction
Hong Kong
Judgment Date
17 April 2018
Case Number
HCA2409/2015
Procedural Posture
High Court Action (intellectual Property and Passing Off) / Summary Judgment Application and Decision
Outcome
Plaintiffs succeed on passing off claim; summary judgment refused on unlawful transfer and trade mark infringement due to contested facts; injunctive and ancillary relief granted per plaintiffs' draft order excluding trade mark infringement; costs ordered nisi in favour of plaintiffs for 70% of costs.
Legal Topics
Passing Off, Trade Mark Ownership and Transfer, Goodwill (territoriality), Summary Judgment Principles, Authority and Agency, Acquiescence and Unconscionability, Costs
Source Language
EN
Intellectual Property Trade Mark Law Passing Off Civil Procedure Contract/agency Trade Mark Ownership and Transfer Goodwill (territoriality) Summary Judgment Principles +3 more

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Parties

Dacheng International Legal Services Limited

1st Plaintiff

Beijing Dacheng Law Offices LLP

2nd Plaintiff

Sze Yeuk Lung Benedict trading as Dacheng Law Offices

1st Defendant

Dacheng Legal Services Limited (formerly Capital Avenue Limited)

2nd Defendant

Procedural Posture

High Court Action (intellectual Property and Passing Off) / Summary Judgment Application and Decision

Legal Issues

  1. 1 Whether plaintiffs have goodwill in Hong Kong in the name/mark DACHENG to support a passing off claim
  2. 2 Whether defendants misrepresented source of legal services and likely caused or will cause damage
  3. 3 Whether the 2014 transfer of Hong Kong trade marks was unlawful or valid (authority/forgery/trust)

Ratio Decidendi

The court found the plaintiffs established goodwill in Hong Kong in the DACHENG name and that the defendants' continued use amounted to passing off; accordingly plaintiffs succeed on their passing off claim. However, there are genuine disputes of fact about the 2014 transfer and the validity/authority behind it such that summary judgment cannot be given on the unlawful transfer and trade mark infringement claims; those issues must proceed to trial if pursued. The court therefore made orders in the terms of the plaintiffs' revised draft order excluding trade mark infringement claims and made a costs order nisi in favour of the plaintiffs for 70% of costs.

Court Disposition

Plaintiffs succeed on passing off claim; summary judgment refused on unlawful transfer and trade mark infringement due to contested facts; injunctive and ancillary relief granted per plaintiffs' draft order excluding trade mark infringement; costs ordered nisi in favour of plaintiffs for 70% of costs.

Orders

  • Order in terms of paragraphs 6 to 15 and 17 of the revised draft order annexed to Au-Yeung, Cheng, Ho & Tin's letter dated 4 January 2018, with all references to the trade mark infringement claim removed
  • Order nisi that the Defendants shall pay 70% of the Plaintiffs' costs of and occasioned by the summons dated 15 March 2017, including all reserved costs, to be taxed if not agreed with certificate for one counsel