Hong Kong Case Law: Decisions & Judgments

Topic

Trademark infringement

Legal area

Court

6 Mar 2023

WONG TO YICK WOOD LOCK OINTMENT LTD v. BKIP LTD

Citation

[2023] HKCFI 693
Court

Court of First Instance
Case number

HCMP912/2021

The court applied the general Norwich Pharmacal costs principle but exercised its discretion to make no order as to costs because the respondent, although a non‑party and generally entitled to costs, behaved unsatisfactorily by not replying to the Pre‑Action Letter and delaying its response; those failings produced unnecessary costs for the applicant which offset the respondent's entitlement to costs, justifying a neutral costs outcome.
15 Oct 2021

HUGO BOSS TRADE MARK MANAGEMENT GMBH & CO KG AND OTHERS v. THE BRITAIN BOSS INTERNATIONAL CO LTD AND ANOTHER

Citation

[2021] HKCA 1496
Court

Court of Appeal
Case number

CACV114/2015

Leave to appeal was refused because the questions advanced did not arise from the Court of Appeal's judgment and did not raise issues of great general or public importance nor exceptional 'or otherwise' grounds; the Court of Appeal had allowed the underlying appeal because the defendants, on the evidence as a whole, established triable defences with a real prospect of success (insufficient evidence linking defendants to the alleged sales and the websites were arguably directed at Mainland consumers), and those factual and legal conclusions precluded granting leave to the Court of Final Appeal.
30 Nov 2017

OPERATION SMILE, INC. v. BEAM INTERNATIONAL FOUNDATION LTD

Citation

OPERATION SMILE, INC. v. BEAM INTERNATIONAL FOUNDATION LTD
Court

Court of First Instance
Case number

HCA1026/2015

The court held that the plaintiff was the proprietor of the OPERATION SMILE marks and had established goodwill in Hong Kong and Mainland China, the defendant was an alter ego/licensee whose licence was validly terminated and who continued to use the plaintiff's marks and names thereby committing trademark infringement and passing off; no real defence existed and summary judgment was granted for the plaintiff in the terms prayed with costs.
9 Jun 2017

WONG TO YICK WOOD LOCK OINTMENT LTD v. YUE FUNG DISPENSARY CO LTD t/a YUE FUNG DISPENSARY

Citation

WONG TO YICK WOOD LOCK OINTMENT LTD v. YUE FUNG DISPENSARY CO LTD t/a YUE FUNG DISPENSARY
Court

Court of First Instance
Case number

HCA3382/2016

The court found the total claimed costs disproportionate in light of the limited documents and brief attendance required, disallowed the $40,000 counsel brief for attendance at the default hearing, allowed $12,000 for necessary counsel advice and associated solicitor attendance, and assessed the payable costs at $50,948 to be paid within 21 days; informal requests for instalments were refused and a formal summons supported by affidavit was required for stay/instalments.
10 Mar 2017

WONG TO YICK WOOD LOCK OINTMENT LTD v. MERIKA MEDICINE FACTORY LTD AND ANOTHER

Citation

WONG TO YICK WOOD LOCK OINTMENT LTD v. MERIKA MEDICINE FACTORY LTD AND ANOTHER
Court

Court of First Instance
Case number

HCA562/2014

The court held that WTY demonstrated bona fide claims and proper questions to be tried against the intended defendants and that it was necessary and just and convenient to join them under O 15 r 6; further, because the three actions are factually connected and form a series of transactions with common defendants and witnesses, consolidation under O 4 r 9 was justified to save costs and avoid multiplicity despite some delay.
3 Feb 2017

ALIBABA GROUP HOLDING LTD AND ANOTHER v. ANT FINANCIAL GROUP CO, LTD

Citation

ALIBABA GROUP HOLDING LTD AND ANOTHER v. ANT FINANCIAL GROUP CO, LTD
Court

Court of First Instance
Case number

HCA2797/2016

The court exercised its discretion to grant a limited extension to the defendant to file and serve its defence by 5pm on 13 February 2017, imposed the condition that failure to do so would result in default judgment in favour of the plaintiffs, and ordered the defendant to pay the plaintiffs' costs of both summonses forthwith, to be assessed summarily on an indemnity basis at HK$60,000.
1 Mar 2016

PEDAGOGIC INNOVATIONS LTD v. HYDROGEN EVOLUTION INCORPORATED

Citation

PEDAGOGIC INNOVATIONS LTD v. HYDROGEN EVOLUTION INCORPORATED
Court

Court of First Instance
Case number

HCA945/2013

Registrar exercised discretion under O.4 r.9 RHC to order that HCCW 107/2012 and HCA 945/2013 be heard and tried together before the Companies Judge because the matters involve common issues of fact and consolidation would save time and costs; the Petitioner may proceed notwithstanding imminent winding‑up and must accept statutory consequences and costs; costs awarded to Petitioner against 1st Respondent.
25 Aug 2015

NG LAI OI AND ANOTHER v. HUI TSZ CHUNG t/a AMERASIA TRADE CO

Citation

NG LAI OI AND ANOTHER v. HUI TSZ CHUNG t/a AMERASIA TRADE CO
Court

Court of First Instance
Case number

HCA966/2015

The court held that the plaintiffs established a serious question to be tried on both trademark infringement and passing off, that they would suffer irreparable harm absent interim relief and that the balance of convenience favored the plaintiffs; the defendant's undertakings (as extended at hearing to cover importing and stocking for sale) were accepted, but the defendant had opposed the summons and raised unmeritorious points, so an adverse costs order was appropriate (costs in the cause with specified sums payable by defendant).
21 Jul 2015

WYNN RESORTS HOLDINGS, LLC v. GOLD WINNING PRINTING CO LTD

Citation

WYNN RESORTS HOLDINGS, LLC v. GOLD WINNING PRINTING CO LTD
Court

Court of First Instance
Case number

HCA553/2015

Service of the writ by leaving it at the defendant's registered office on 18 March 2015 was valid under Companies Ordinance s827; the defendant's draft defence disclosed a reasonably arguable case and justice required an extension of time to file a defence, therefore judgment in default will not be entered at this stage; costs as ordered.
17 Jun 2015

LUSH LTD AND ANOTHER v. RED CHANNEL INTERNATIONAL LTD AND OTHERS

Citation

LUSH LTD AND ANOTHER v. RED CHANNEL INTERNATIONAL LTD AND OTHERS
Court

Court of First Instance
Case number

HCA2242/2012

On the evidence the 1st defendant ratified the pre-incorporation licence under s32A and was the contracting licensee; objective evidence established that the 1st and 3rd defendants operated a competing business (Nest Beauty) in breach of clauses 7.2 and 21; no enforceable PostExpiry Agreement or implied six‑month notice was established as a triable issue; goods shipped were provided conditionally pending a Heads of Agreement and title did not pass; accordingly plaintiffs were entitled to summary judgment in part against the 1st and 3rd defendants for breach and for goods, injunctive and IP re…