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

HCA 553/2015

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

HIGH COURT ACTION NO 553 OF 2015

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DECISION
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INTRODUCTION

1.  I have before me two summonses:-

(1) a summons dated 5 June 2015 (“the judgment summons”) issued by the plaintiff seeking judgment against the defendant in default of defence, pursuant to Order 13, rule 6 and Order 19, rule 7 of the Rules of the High Court; and

(2) a summons dated 17 July 2015 (“the extension of time summons”) issued by the defendant seeking an extension of time of 21 days from the date of the order to be made under the summons to file a defence.

2.  This action was commenced by the plaintiff by writ of summons on 17 March 2015.  In it, the plaintiff claims against the defendant for trademark infringement and passing off.  The writ was apparently served on the defendant by leaving it at the defendant’s old registered office at Unit A, 9/F, JCG Building, 10-16 Mongkok Road, Kowloon, Hong Kong (“the Old Address”) on 18 March 2015.  The Old Address was the defendant’s registered office until 22 April 2015, when it changed its registered office to 1/F, 8-10 Morrison Hill Road, Wanchai, Hong Kong (“the New Address”).

3.  The defendant failed to file any acknowledgement of service within 14 days after service of the writ in accordance with Order 12, rule 5 of the Rules of the High Court, and further failed to serve any defence within 28 days after the time limited for acknowledgement of service of the writ in accordance with Order 18, rule 2(1) of Rules of the High Court.  Accordingly, the plaintiff took out the judgment summons seeking to enter judgment against the defendant in default of defence.

4.  The plaintiff’s summons, together with similar summonses in 4 other actions, first came before Anthony Chan J on 24 June 2015.  The learned judge was not satisfied on the materials before him that the plaintiff was entitled to judgment and directed that all 5 summonses be adjourned to another date for further consideration.

5.  The defendant received notice of the adjourned hearing from the court which was sent to the New Address on or about 13 July 2015.   As earlier mentioned, the defendant then took out the extension of time summons seeking to serve a defence out of time.

Two preliminary points

6.  Before I deal with the substance of the two summonses, I shall first dispose of two preliminary points raised by Mr Tony Ko for the defendant.

7.  First, Mr Ko argues that the writ of summons was not properly served on the defendant.  It is not in dispute that at the time of service of the writ on 18 March 2015, the defendant’s registered office was still at the Old Address.  There is also an affirmation of service filed by the plaintiff confirming that service of the writ was effected by leaving it at the Old Address.

8.  Mr Ko argues, however, that by the combined operation of Order 10, rule 1 and Order 65, rule 3 of the Rules of the High Court, a writ can only be served on a limited company in one of three ways, namely:-

(1) serving personally on officers of the company as specified in Order 65, rule 3(1);

(2) sending a registered post to the registered or principal office of the company; or

(3) insertion into letter box at the registered or principal office of the company.

9.  Mr Ko further argues that merely “leaving” the writ at the registered office of the company is insufficient under the combined effect of Order 10, rule 1 and Order 65, rule 3 of the Rules of the High Court, and he relies upon a judgment of Keith J (as he then was) in Guangdong International Trust & Investment Corporation Hong Kong (Holdings) Ltd v Yuet Wah (Hong Kong) Wah Fat Ltd [1997] HKLRD 489 in support of this argument.

10.  However, s827 of the Companies Ordinance, Cap 622 (being the current version of s356 of the old Companies Ordinance, Cap 32), expressly provides that “[a] document may be served on a company by leaving it at … the company’s registered office”.

11.  In this regard, it is relevant to note that:-

(1) the word “document” is defined in s2(1)(a) of the Companies Ordinance, Cap 622 to include “a summons, notice, order and any other legal process”; and

(2) s827 of the Companies Ordinance, Cap 622 appears in Division 2 of Part 18 of that Ordinance.

12.  On the other hand, the limited definition of the word “document” in s821 of the Companies Ordinance, Cap 622 is expressly excepted from Division 2 of Part 18 of that Ordinance.

13.  It seems to me clear therefore that a writ of summons may be served on a company by “leaving” it at the registered office of the company.

14.  That service of a writ of summons on a company can be effected in accordance with the provisions of s356 of the old Companies Ordinance, Cap 32 was confirmed by the judgment of Nazareth VP in the Court of Appeal in United Smart Development Ltd v Treasure Land Property Consultants (a firm) [1995] 2 HKLR 176.

15.  In Guangdong International Trust & Investment Corporation Hong Kong (Holdings) Ltd, at 491, Keith J apparently disagreed with the view expressed by Nazareth VP in United Smart Development Ltd that Order 10, rule 1 of the Rules of the High Court was not intended to apply to service on a limited company, and observed that “it does not look as if O.65 r.3(2) was drawn to the court’s attention”.  Whatever may be said about the application of Order 10, rule 1 of the Rules of the High Court to service on a limited company, I do not read Keith J’s judgment in Guangdong International Trust & Investment Corporation Hong Kong (Holdings) Ltd as meaning that s356 of the old Companies Ordinance, Cap 32 had no application to service of a writ on a limited company.

16.  Accordingly, I consider that the writ in the present case was properly served on the defendant on 18 March 2015.

17.  I can deal with Mr Ko’s second preliminary point more briefly.  The defendant apparently passed a special resolution to change its name on 23 April 2015, which was subsequent to the date of the writ herein.  Mr Ko argues that there is a potential issue as to the pleading of a cause of action which accrued only after the date of the writ, in that (i) the plaintiff is seeking an injunction to restrain the defendant from using its new name, and (ii) on the other hand, any injunction granted against the defendant from using its old name would be academic.

18.  In my view, whether the plaintiff is entitled to restrain the defendant from using its new name is an issue of substance and will have to be determined in the ordinary way having regard to the relevant legal principles of trademark infringement and passing off as applied to the facts as found by the court, but this has nothing to do with the question of whether the plaintiff has a complete cause of action against the defendant as at the date of the writ.  On the other hand, I accept that if the defendant no longer uses its old name, that would be a relevant consideration in the exercise of the court’s discretion whether to grant an injunction to restrain the defendant from using the old name.  In either situation, I am unable to see that the prohibition against pleading a cause of action which accrued only after the date of the writ is engaged.

Application to serve defence out of time

19.  In relation to the question of whether time should be extended for the defendant to serve its defence, the applicable principles are set out in the judgment of Deputy High Court Judge A Cheung (as he then was) in California Insurance Company Limited v Choung Suk Wah, HCA 172/2002 (19 September 2002), as follows:

“ 19. As mentioned above, the Plaintiffs’ motion for judgment in default of defence falls within O.19 r.7. The Court has a discretion whether to give judgment or to extend a party’s time to plead when it is just to do so: See Hong Kong Civil Procedure 2002 (Vol. 1) para. 19/7/13.

20. Furthermore, if the defendant has put forward a defence albeit out of time and without leave, the Court should look at the merits of the defence as disclosed in deciding whether to accede to the plaintiff’s motion for judgment, and if so, to what extent; the Court cannot simply disregard the defence: See Gill v Woodfin (1884) 25 Ch D 707; Gibbings v Strong (1884) 26 Ch D 66; Hong Kong Civil Procedure 2002 (Vol. 1) para. 19/7/4.  Whilst in the present case, no defence has yet been filed by the Defendants and all that I have got is a time summons to file a defence as well as a draft defence presented to me by counsel on the day of hearing, in my judgment, the same principles apply in the present case.  I should look at the merits of the matter.”

20.  The plaintiff’s case against the defendant, as I understand it, is that its former name includes the Chinese characters “永利” which are said to be the distinguishing feature of the plaintiff’s registered trademarks.  The plaintiff says that it and its affiliates have used and continued to use the plaintiff’s trademarks widely in the course of business in and outside Hong Kong, and the plaintiff has established a vast and substantial reputation in its trademarks both in and outside Hong Kong.  The plaintiff alleges that the defendant has, by using a name incorporating the characters “永利” has passed off the plaintiff’s trademarks, business and goodwill.  It is said that the defendant’s name is confusing or deceptively similar to the plaintiff’s trademarks and is calculated to deceive or cause confusion or to cause, enable or assist others to deceive and cause confusion and to lead members of the trade and public into believing that the defendant’s business and/or services are those of the plaintiff or are in some other way connected, licensed or operated with the authority and approval of the plaintiff.  The same complaints, I understand, would apply to the defendant’s new name.

21.  The defendant has produced a draft defence attached to the extension of time summons which I have carefully considered. On the basis of the draft defence, Mr Ko argues that Mr Huang, the defendant’s sole shareholder and director, has been carrying on business both in the PRC and Hong Kong using names which include the Chinese characters “永利” since about 2004, that the defendant and the plaintiff are involved in providing completely different goods or services, and that there is no likelihood of confusion or deception as alleged by the plaintiff.  Mr Ko also submits that the defendant’s name as a whole is neither identical nor similar to that of the plaintiff.  Finally, Mr Ko has raised various criticisms of the plaintiff’s claims as pleaded in the statement of claim.

22.  I have come to the conclusion that the defendant’s defence is reasonably arguable and I should not at this stage deprive the defendant of the chance of defending this action.  Since the defendant’s defence will have to be further considered by the court in future, it is not appropriate for me to analyse the various grounds of defence raised by the defendant in any great detail here.

23.  In all, I grant the defendant an extension of time to file its defence.  It follows that I am not minded to enter judgment for the plaintiff at this stage.

Disposition

24.  I make an order in terms of paragraphs 1, 2 and 3 of the extension of time summons, and make no order on the judgment summons save that I shall hear the parties on the question of costs in relation to that summons.

[The court heard further submissions from Mr Ko on the question of costs in relation to the judgment summons, with Miss Mok being absent at the time of oral delivery of the decision.]

25.  I make an order that the plaintiff shall be entitled to the costs of and occasioned by the judgment summons, including the costs of preparation of the skeleton argument, save that the plaintiff shall have only 50% of the costs of today.