HONG KONG WHO'S WHO AND ANOTHER v. WHO'S WHO IN HONG KONG LTD. AND OTHERS

1988 No. A2838

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

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J U D G M E N T

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1. The 2nd plaintiff who at the time was acting in person filed a writ on the 28th April 1988 on his own behalf and on behalf of the 1st plaintiff of which company he is the sole proprietor in which he claims damages for infringement of copyright arising from the printing and publication of Who's Who in Hong Kong in Hong Kong on the 18th April 1982 without the plaintiff's licence. No further steps in the action were taken until a firm of solicitors Messrs. Tong & Chan filed a notice to act on behalf of the plaintiffs on the 15th April 1989. The writ was served on the 4th defendant on the 17th April 1989 one day before the writ was due to expire. A Statement of Claim was filed on the 10th May 1989 and was amended with regard to some minor errors on the 13th May 1989.

2. On the 9th May 1989, the plaintiffs purported to amend the endorsement on the writ under 0.20, r.1 of the Rules of the Supreme Court by including inter alia under paragraph 2(3) an allegation of passing-off that was time - barred. This amendment was invalid by virtue of 0.20, r.3(b) because it raised a new cause of action. Upon an application by the 4th defendant, the amendment was disallowed by Master Perrior on the 6th June 1989 whose order also applied to striking out the allegation of passing-off that had been pleaded in the Statement of Claim.

3. Mr Lai, Counsel for the plaintiffs, whilst conceding that the issue of passing-off raised a new cause of action which was time-barred, sought to justify the amendment under 0.20, r.5 on the grounds that the allegation arises out of substantially the same facts as the allegation of infringement of copyright. Reliance for the amendment is placed by the plaintiffs upon the provision of 0.20, r.5(2) and (5) which read as follows :-

"(2) where an application to the Court for leave to make the amendment mentioned in paragraph....(5) is made after any relevant period of limitation current at the date of issue of the writ has expired, the Court may nevertheless grant such leave in the circumstances mentioned in that paragraph if it thinks just to do so.

(5) An amendment may be allowed under paragraph (2) notwithstanding that the effect of the amendment will be to add or substitute a new cause of action if the new cause of action arises out of .... substantially the same facts as a cause of action in respect of which relief has already been claimed in the action by the party applying for leave to make the amendment."

4. The allegation of passing-off in the endorsement on the writ amounts to as bare assertion which in no way indicates that it arises from substantially the same facts as the allegation of breach of copyright. This alone is a sufficient reason to dismiss the appeal. However, there has also been an inordinate and inexcusable delay by the plaintiffs of over seven years in making their application to amend. Mr Britton, the 4th defendant's solicitor, states in an affidavit made on the 1st July 1989 that the 4th defendant's Publications Division which was responsible for publishing books and periodicals ceased publication of books in 1984 and that there is now no one who is employed by the 4th defendant who has any knowledge of the facts of this case. It is therefore abundantly clear that in these circumstances the 4th defendant would be unfairly prejudiced if the amendment was to be allowed. The Master, in my judgment, correctly exercised his discretion by refusing the amendment as well as refusing the application on the grounds that it did not arise from substantially the same facts as the allegation of breach of copyright.

5. Accordingly the appeal will be dismissed with an order nisi for costs.