Hong Kong Case Law: Decisions & Judgments

Topic

Passing-off

Legal area

Court

7 May 2025

NEW ART HOLDINGS CO., LTD. AND OTHERS v. EST-OUEST AUCTIONS CO., LTD AND OTHERS

Citation

[2025] HKCFI 1774
Court

Court of First Instance
Case number

HCA325/2024

The court found that the interim stay was unnecessary after the HCIP Judgment and in any event would be lifted to allow the plaintiffs' amendment; the defendants' stay application was rendered nugatory by the plaintiffs' late amendment; the plaintiffs' Order 14 application was dismissed for lack of a verifying affidavit and unresolved standing and pleading defects; security for costs was ordered separately against the 1st and 2nd Plaintiffs in specified sums and dismissed against the 3rd and 4th Plaintiffs for failure to discharge s.905 burden; costs orders nisi were made accordingly.
15 Aug 2024

MIELE & CIE. KG AND ANOTHER v. INSTANT SERVICES (HONG KONG) LTD AND ANOTHER

Citation

[2024] HKCFI 2105
Court

Court of First Instance
Case number

HCIP31/2022

Defendants repeatedly made unchallenged or inadequately explained misrepresentations (warranty claims, use of Plaintiffs' contact details, promotion as authorised dealer) and used registered Miele marks and Plaintiffs' copyright works on websites/social media without consent; statutory presumptions and evidence favoured Plaintiffs; Defendants failed to discharge burdens to show triable defences under Order 14 or to rebut s121; s20 exhaustion and late disclaimers do not avail; 2nd Defendant controlled the company and is liable as joint tortfeasor; accordingly summary judgment for Plaintiffs on…
7 Oct 2022

WONG TO YICK WOOD LOCK OINTMENT LTD v. SINGAPORE MEDICINE CO. 星洲藥業 (a firm) AND OTHERS

Citation

[2022] HKCFI 3108
Court

Court of First Instance
Case number

HCA600/2014

Because liability for passing-off and trade mark infringement was established, the court must give effective protective remedies; the plaintiff's proposed terms were properly drafted with built-in caveats and restrictions to capture acts amounting to passing-off, include the specific Chinese designations used deceptively, and require full relevant disclosure (including pre-2012 sales and identities of suppliers and customers) without deferral pending appeal; defendants' proposed limitations were legally unfounded.
9 Dec 2021

BIOZEAL, LLC AND ANOTHER v. NATURE’S STORY CO LTD AND ANOTHER

Citation

[2021] HKCFI 3725
Court

Court of First Instance
Case number

HCIP34/2021

Leave to appeal was granted reluctantly on jurisdictional/justiciability grounds because the issue is important and not fully argued below, but the stay of execution was refused: the court has jurisdiction to grant interlocutory injunctions in passing-off cases and to make preliminary assessments of foreign law; new points not taken at the substantive hearing should generally not be allowed on appeal; the balance of convenience and prejudice favors the plaintiffs and a stay would unjustly delay protection of IP rights.
15 Jul 2021

MARY KAY INC. AND OTHERS v. ZHEJIANG TMALL NETWORK CO, LTD AND OTHERS

Citation

[2021] HKCFI 2153
Court

Court of First Instance
Case number

HCA2406/2017

Leave to appeal was refused because the grounds advanced do not disclose a real prospect of success: passing‑off claims against several defendants are unarguable; the joint liability point against the 1st and 2nd defendants fails on established precedent for neutral online platforms; and the exercise of discretion in granting default judgments was not reasonably open to successful challenge.
20 May 2021

MARY KAY INC. AND OTHERS v. ZHEJIANG TMALL NETWORK CO., LTD AND OTHERS

Citation

[2021] HKCFI 1403
Court

Court of First Instance
Case number

HCA2406/2017

Service out of the writ on the 1st and 2nd defendants is set aside because plaintiffs failed to establish a good arguable case and there was no serious issue to be tried against the platform operators: the complained products were genuine so the exhaustion defence under s20 TMO applied and s20(2) did not cover mere removal of production codes or minor tampering; Hong Kong was not clearly the appropriate forum given the Mainland connection and potential alternative forum; and the plaintiffs made significant and deliberate non-disclosures in the ex parte service out application. Default judgmen…
28 May 2020

KUNG KIN WING AND ANOTHER v. SPLENDID PROFIT INTERNATIONAL HOLDINGS LTD AND OTHERS

Citation

[2020] HKCFI 894
Court

Court of First Instance
Case number

HCIP78/2019

The court found on the objective construction of the Investment Agreement and on subsequent conduct (payment of registration expenses by SS Noodle, franchise arrangements, share distribution and valuation) that the Trade Name, Trade Mark and Goodwill were transferred to the business (SS Noodle/Splendid Profit) and that Kung held the registered Trade Mark as trustee for the business; accordingly, Kung's claims for trade mark infringement and groundless threats were dismissed, passing-off relief was granted against Kung for the ParknShop consignment business, and Chan's Camp was entitled to rec…
29 Apr 2020

MGA ENTERTAINEMNT, INC. v. COMBUY CO LTD AND ANOTHER

Citation

[2020] HKCFI 642
Court

Court of First Instance
Case number

HCA2445/2017

The Court found the Counterfeit Dolls bore identical or confusingly similar marks to the Plaintiff's registered marks and thus infringed under ss 18(1) and 18(3) of the Trade Marks Ordinance; the Website and promotional activities were directed at international customers including Hong Kong making the acts actionable locally; evidence showed both Defendants participated in the Mega Show and acted in concert and the Defendants failed to adduce documentary evidence to raise a real triable issue, so summary judgment was appropriate for trademark infringement and passing-off.
29 May 2019

SGG LISCO LLC v. USA STBADING SPORTS LTD

Citation

[2020] HKCFI 450
Court

Court of First Instance
Case number

HCA3052/2016

Plaintiff established substantial goodwill in SPALDING prior to Defendant's incorporation; Defendant's name STBADING and related uses are identical or virtually identical to Plaintiff's marks and were deliberately copied, causing inevitable confusion and damage; accordingly Defendant liable for passing-off and trade mark infringement under Trade Marks Ordinance s18(1),(3),(4); pleaded defences fail; costs awarded to Plaintiff.
3 Feb 2017

PANDORA A/S AND ANOTHER v. PANDORA CO LTD AND OTHERS

Citation

PANDORA A/S AND ANOTHER v. PANDORA CO LTD AND OTHERS
Court

Court of First Instance
Case number

HCA2412/2015

Where plaintiffs established reputation and risk of passing-off via use of Hong Kong incorporation documents, and where defendants were duly served but failed to file defences, the court will enter judgment in default and may summarily assess costs allowing reductions for duplicated work across near-identical multiple actions.