Hong Kong Case Law: Decisions & Judgments

Topic

Secondary infringement

Legal area

Court

2 May 2023

H&M HENNES & MAURITZ GBC AB v. ZOETOP BUSINESS CO LTD AND OTHERS

Citation

[2023] HKCFI 1175
Court

Court of First Instance
Case number

HCIP31/2021

Summary judgment refused and unconditional leave to defend granted because triable issues exist: (a) whether the first putting into circulation occurred outside Hong Kong (s24(3)) so primary infringement is contested; (b) whether Defendants had knowledge or reason to believe goods were infringing is disputed and fact‑sensitive, creating a triable issue for secondary infringement; and (c) whether the 2nd Defendant participated in a common design to make it a joint tortfeasor is a live issue. Costs ordered in the cause.
29 Mar 2018

MAKHSSIAN TRAJAN VAHE v. CHEERLORD INVESTMENT LTD T/A W HONG KONG

Citation

[2018] HKDC 351
Court

District Court
Case number

DCCJ88/2017

The Statement of Claim failed to plead the necessary elements of a copyright claim: it did not identify any original work in which copyright subsists, relied on a title/name for copyright which is not protectable, and did not identify any primary or secondary infringing acts; consequently it disclosed no reasonable cause of action and was struck out.
17 Apr 2015

CHOON’S DESIGN INC v. HONGKONG HAOGUAN PLASTIC HARDWARE CO LTD AND OTHERS

Citation

CHOON’S DESIGN INC v. HONGKONG HAOGUAN PLASTIC HARDWARE CO LTD AND OTHERS
Court

Court of First Instance
Case number

HCA2214/2014

Default judgment was entered because the 1st and 3rd defendants failed to file defences and the 2nd defendant's draft defence was unbelievable and did not disclose an arguable defence on the merits, so the 2nd defendant's application for an extension of time was dismissed.
7 Aug 2012

FREY WILLE GmbH & Co, KG AND ANOTHER v. COMPLEX INDUSTRIAL CO LTD AND ANOTHER

Citation

FREY WILLE GmbH & Co, KG AND ANOTHER v. COMPLEX INDUSTRIAL CO LTD AND ANOTHER
Court

Court of Appeal
Case number

CACV2/2012

The appeal was dismissed because although summary judgment could not rest on pleaded secondary infringing acts prior to the cease and desist letter, the plaintiffs had established copyright and the defendants' conduct after being fixed with knowledge (including admissions in post‑writ letters and the defence asserting a right to continue) justified a permanent injunction; costs were awarded to the 1st plaintiff with a 50% reduction for the Order 14 summons costs.
5 Dec 2011

FREY WILLE GmbH & Co, KG AND ANOTHER v. COMPLEX INDUSTRIAL CO LTD AND ANOTHER

Citation

FREY WILLE GmbH & Co, KG AND ANOTHER v. COMPLEX INDUSTRIAL CO LTD AND ANOTHER
Court

Court of First Instance
Case number

HCA378/2011

The court accepted the Plaintiffs' s121-compliant affidavits as proof of subsistence and ownership of copyright, found the Defendants had the requisite knowledge after receipt of the 5 May 2010 cease and desist letter, concluded the Defendants' bracelets were reproductions of the Plaintiffs' designs, and exercised its discretion to enter judgment for the Plaintiffs and grant the relief sought (paras 1–4 of the amended summons) together with costs to the Plaintiffs on a party-and-party basis.
6 Jan 2010

AVENT LTD AND ANOTHER v. PROMINENT WING LTD AND OTHERS

Citation

AVENT LTD AND ANOTHER v. PROMINENT WING LTD AND OTHERS
Court

Court of First Instance
Case number

HCA480/2008

On unchallenged evidence the bimi products were substantially similar to the plaintiffs' copyright works, defendants failed to file any evidence or establish independent creation or a triable issue, and thus summary judgment was appropriate: plaintiffs demonstrated primary (and, as applicable, secondary) infringement and concerted action, entitling them to permanent injunctions, delivery up and disclosure orders, an inquiry as to damages or an account of profits, interest and costs.
11 Jul 2008

LIAO FU PIN AND ANOTHER v. AD-MAGNETICS CO LTD AND ANOTHER

Citation

LIAO FU PIN AND ANOTHER v. AD-MAGNETICS CO LTD AND ANOTHER
Court

Court of First Instance
Case number

HCA1778/2006

The Court held the proposed amendments were arguable and should be allowed subject to a clarification that paragraph 6(a) alleges reproduction only by the 1st Defendant; the changes did not constitute an improper withdrawal of admission; pleas about issuing to the public and authorization and of the 2nd Defendant's knowledge were sufficiently pleaded on the available circumstantial evidence and inferences and could be explored by discovery; appeal otherwise dismissed and costs awarded to Plaintiffs.
8 Nov 2007

GOLDEN BRIGHT MANUFACTURER LTD v. SUNLIGHT ELECTRONIC TOYS MANUFACTURING CO LTD AND ANOTHER

Citation

GOLDEN BRIGHT MANUFACTURER LTD v. SUNLIGHT ELECTRONIC TOYS MANUFACTURING CO LTD AND ANOTHER
Court

Court of First Instance
Case number

HCA927/2001

Plaintiff established ownership of copyright in the handsample and entitlement to delivery up of moulds, but did not establish primary infringement under the Copyright Ordinance and did not prove constructive knowledge at the relevant time; given partial success and time spent on failed claims the original costs order nisi was varied so that the plaintiff receives 60% of its costs (a 40% discount) and the defendants are awarded the costs of the costs application (order nisi).
8 Jun 2007

TOY MAJOR TRADING CO. LTD v. HANG SHUN PLASTIC TOYS LTD

Citation

TOY MAJOR TRADING CO. LTD v. HANG SHUN PLASTIC TOYS LTD
Court

Court of Appeal
Case number

CACV11/2007

The court held that the overwhelming factual similarity between the products together with evidence that the defendant manufactured the items gave rise to an irresistible inference that the defendant knew or had reason to believe the items infringed the plaintiff's copyright; the defendant failed to provide particulars or credible evidence to show a triable issue, so summary judgment was properly granted and the appeal must be dismissed.
26 Apr 2007

LIAO FU PIN AND ANOTHER v. AD-MAGNETICS CO LTD AND ANOTHER

Citation

LIAO FU PIN AND ANOTHER v. AD-MAGNETICS CO LTD AND ANOTHER
Court

Court of First Instance
Case number

HCA1778/2006

The court found the plaintiffs did not demonstrate a high degree of probability of success on the issue of the 2nd defendant’s knowledge of infringement, while there was a strong prima facie case against the 1st defendant for breach of licence; because any costs recovered from the 1st defendant would buffer the 2nd defendant’s exposure, and the merits did not justify ordering security against the plaintiffs, the appeal was dismissed and the application for security for costs was refused.