HILL HOLDINGS (HK) LTD v. ASPIRE GROUP INTERNATIONAL LTD T/A PETCHILL HK AND ANOTHER

HCIP 11/2023

[2026] HKCFI 5271

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

INTELLECTUAL PROPERTY CASE NO 11 OF 2023

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DECISION

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BACKGROUND

1.  By two summary judgments dated 20 September 2024 and 9 December 2024 (“Judgments”), Lok J granted injunctions against the defendants (“Ds”) (“Injunction”) and ordered Ds to deliver up infringement articles, papers and materials (“Deliver-up”).  The Judgments also ordered Ds to file and serve disclosure affidavits or affirmations (“Disclosure”) and to pay damages or accounted profits to the plaintiff (“P”) (“Money Compensation”).  

2.  Lok J also made two identical costs orders (“Orders”) against Ds.  The Orders ordered that Ds “shall be liable to paid to the Plaintiff the costs of this Action, including the present application, relating to the claims for trade mark infringement forthwith, to be taxed if not agreed.” (Emphasis added)

3.  There is no dispute that the words “present application” in the Orders referred to the respective summary judgment applications.

4.  On 6 May 2025, P commenced taxation against Ds under the Orders.  Section A of P’s bill (“Bill”) covered 4 stages.  Stage 4 covered the period: “Post Judgment (10.12.2024 – Present)”.

5.  The taxation came before me.  Order 62, rule 3(1) of the Rules of the High Court (“RHC”) provides that: “Subject to the provisions of this Order (ie Order 62), no party shall be entitled to recover any costs of or incidental to any proceedings from any other party to the proceedings except under an order of the Court”.  There is no dispute that P relies on the Orders to claim costs in the Bill (including costs claimed in stage 4 in section A of the Bill).

6.  I have concerns as to whether the Orders covered costs claimed under stage 4 of section A of the Bill (“Issue”).  I taxed all items of the Bill including section C of the Bill (ie costs of taxation) on the basis that costs claimed in stage 4 in section A of the Bill were not covered by the Orders and directed the parties to lodge submissions on the Issue. 

7.  I further directed that I would dispose of the Issue by way of paper disposal.  If I find that the Orders do not cover the costs claimed under stage 4 of section A of the Bill, the taxation will be concluded without further taxation hearing.  If I find that the Orders do cover the costs claimed under stage 4 of section A of the Bill, I shall proceed to tax stage 4 of section A of the Bill and re-open relevant taxed items affected by items claimed in stage 4 of section A of the Bill. 

8.  P lodged its skeleton submissions on 21 May 2026 (“P’s Skeleton”). 

9.  Ds lodged their skeleton submissions on 9 June 2026 (“Ds’ Skeleton”). 

10.  P lodged its reply submissions on 23 June 2026 (“P’s Reply”).  

11.  Ds lodged their supplemental skeleton submissions on 26 June 2026 (“Ds’ Supplemental”).

12.  By a letter dated 10 July 2026, P’s solicitors confirmed that P had no reply to make in response to Ds’ Supplemental. 

13.  In P’s Skeleton, P relied on six reasons (“Reasons”) to support its contention that costs claimed in stage 4 of section A of the Bill were covered by the Orders. 

14.  The Reasons were:

(1)  construction of the Orders (“Reason 1”);

(2)  necessity for compliance with the Court’s disclosure orders (“Reason 2”);

(3)  custom and practice in Hong Kong taxation (“Reason 3”);

(4)  the anticipation of Lok J who granted the Judgments and the Orders (“Reason 4”);

(5)  legal authorities (“Reason 5”); and

(6)  alternative analysis: consequential coverage (“Reason 6”).

Reason 1

15.  P submitted that: “The starting point for any costs dispute is the wording of the costs order itself.  The Courts have consistently held that a costs order must be construed according to its natural and ordinary meaning, having regard to the context in which it was made.” (§4 of P’s Skeleton)  I agree. 

16.  P further submitted that the Orders were framed in the broadest possible terms, ie “the costs of this Action, including the present application”, and that the phrase “costs of this Action” had “consistently been construed by the Hong Kong courts as encompassing all costs incurred in and incidental to the action from its commencement until the final resolution of all matters arising from it, including steps taken to give effect to orders made therein.”  (Emphasis added) (§§5-6 of P’s Skeleton) 

17.  I do not see that the Orders were “framed in the broadest possible terms”.  The Orders in my eyes are just usual costs orders made when application for summary judgment is granted.

18.  P referred to Chan Lan v Shing Kei & Anor (unrep, HCA 1206/2006, 16 June 2008) as one of the authorities supporting its contention that the phrase “costs of this Action” had been consistently construed by the Hong Kong courts as encompassing all costs incurred in and incidental to the action including steps taken to give effect to orders made therein. 

19.  P specifically referred to the costs order nisi made in the Chan Lan case which read: “the costs of the action, including the costs of the Defendants’ action in HCA 48/2006, should be paid by the Plaintiff to the 1^st and 2^nd Defendants to be taxed if not agreed.”  P submitted that: “The decision confirms that the phrase “costs of action” extends to associated proceedings”. 

20.  The costs order in the Chan Lan case was made by the court in the judgment dated 18 April 2008 (not in the Ruling on Costs dated 16 June 2008).  In §99 of the April judgment, the court stated that:

“As to costs, since the Plaintiff has failed in her action and the Defendants have been substantially successful in their Defence and Counterclaim, it seems to me that the costs of the action, which should also include the costs of the Defendants’ action in HCA 48/2006 with which the Plaintiff’s Originating Summons was consolidated, should be paid by the Plaintiff to the 1^st and 2^nd Defendants, to be taxed if not agreed, and I make an order nisi to that effect.”

21.  The court further explained the situation in §11 of the June 2008 Ruling on Costs as follows:

“… … The claims made in the counterclaim were originally claims in an action (HCA No.48 of 2006) commenced by the Defendants.  When that action was stayed, the Defendants’ action was consolidated with the Plaintiff’s action so that the Defendants’ claims became counterclaims in this consolidated action.  In my view, I should treat the Defendants in this case as if they were plaintiffs for the purposes of determining whether they should be entitled to the entire costs of the counterclaim.”

22.  The costs order in the Chan Lan case was made in the aforesaid context.  The court did not simply deal with costs of a related action in the costs order of HCA 1206/2006.  In fact, the related action (HCA 48/2006) had been consolidated with HCA 1206/2006.  The court was dealing with the costs order for the consolidated action.  It did not extend the “costs of the action” costs order in one action to cover costs in another action, albeit related.  The court was dealing with costs of a consolidated action which consolidated HCA 48/2006 with HCA 1206/2006.  P read the costs order made by the court in HCA 1206/2006 out of context. 

23.  The Chan Lan case is simply irrelevant to the Issue and does not assist P. 

24.  P further referred to Wong Wai Kay v Hong Kong Economic Journal Company Ltd & Anor (P gave a wrong citation for this case in P’s Skeleton which Ds took issue on.  I shall deal with this wrong citation issue later.)

25.  P agreed that the dispute in the Wong Wai Kay case did not concern the scope of the phrase “costs of this action” but contended that the parties in that case “proceeded on the common understanding that “costs of this action” encompassed all costs properly incurred in the prosecution and defence of the action, including costs of interlocutory and post-judgment steps”. (§8 of P’s Skeleton)  I have read the Wong Wai Kay case carefully but did not find any part of that case showed that the parties in that case had proceeded on the common understanding that “costs of this action” encompassed costs incurred for “post-judgment steps”.  The Wong Wai Kay case does not assist P’s case. 

26.  P further submitted that the “inclusion of the words “including the present application” in the Costs Orders is particularly significant.” (§9 of P’s Skeleton)  P contended that: “The phrase “including the present application” is a deliberate extension.” (§6(a) of P’s Reply) 

27.  I do not agree.  Costs order including the aforesaid words is only usual in a successful summary judgment application.  There is no magic in those words in a costs order. 

28.  I also do not agree that: “The costs of serving the orders made on those applications, and of perusing documents filed in compliance with those orders, are costs of the present application itself, because they are steps taken to give practical effect to the orders made on that application.” (§6(a) of P’s Reply)  The words “present application” included in the Orders referred to the relevant summary judgment application and no more.  Making an application and enforcing order(s) granted in the application are separated (though may be seen as related) legal proceedings.  I do not see any “absurdity” (as P suggested in §6(c) of P’s Reply) for a costs order covering the making of the application but not the implementation of the orders granted in the application.  

29.  P contended that “[i]f the Costs Orders expressly cover those applications, it must follow that they also cover steps taken to give effect to the orders made on those applications, including the service of those orders and the perusal and handling of documents filed pursuant to those orders.  To hold otherwise would lead to the anomalous result that the Costs Orders cover the making of the application (the “present application”) but not the necessary implementation of the orders arising from it.  That cannot have been the intention of the Court.” (§9 of P’s Skeleton) 

30.  I have difficulties to follow P’s logic in the aforesaid contention.  Why costs order expressly covers costs of an application must follow that it also covers steps taken to give effect to the orders made on the application, including the service of the order and handling of documents filed pursuant to the order?  I agree that costs for general service of the order concerned will be covered by such costs order but I do not agree that costs for particular mode of service for the purpose of future enforcement of the order or costs for necessary implementation of the order are covered by such costs order without express provisions in the costs order.  I do not agree that such interpretation will lead to any anomalous result as contended by P.  Those costs are costs for enforcement proceedings which though related to the original action or application are nevertheless separate proceedings and separate costs orders will be made by the court. 

31.  P referred to section 52A(1) of the High Court Ordinance (Cap 4) (“Ordinance”) which provides that costs of and incidental to all proceedings in the Court of First Instance shall be in the discretion of the Court.  I have no disagreement to this legal position but it has no relevancy to the Issue.

32.  P referred to World Fuel Services (Singapore) Pte Ltd v Florens Container Inc (2007) 10 HKCFAR 256 (wrongly cited as “[2007] HKCFA 35” in P’s Skeleton but rectified with the correct action number and date of judgment in the Plaintiff’s List of Authorities dated 26 June 2026 (“P’s LOA”)) to submit that the phrase “costs of and incidental to” had been interpreted broadly. 

33.  I am of the view that this case does not assist P’s case. 

34.  Firstly, we are not concerning with a costs order ordering costs “incidental to”.  I agree with Mr Lui, counsel for Ds, that being awarded “costs” of an action is inherently different from being awarded “costs of and incidental to” an action. (§9 of Ds’ Skeleton referring to §62/1/3 of the Hong Kong Civil Procedure 2026 vol 1)  However, I shall make a note here that I make no finding as to whether costs order granting “costs of and incidental to” covers post-judgment costs as I am not dealing with a “costs of and incidental to” costs order. 

35.  Secondly, P rightly pointed out that in the World Fuel Services case, the Court of Final Appeal confirmed that section 52A of the Ordinance conferred jurisdiction to order costs against a person who, though not a party to the application giving rise to those costs, was a party of record in the action and had funded the application.  However, the aforesaid ruling of the Court of Final Appeal has no relevancy to the Issue. 

36.  I am of the view that P’s contention (§10 of P’s Skeleton) that because the court had confirmed that section 52A of the Ordinance conferred jurisdiction to order costs against a person who was not a party to the application but a party of record in the action, the breath of the terminology “costs of and incidental to” was well established and should be incorporated in the construction of “costs of this action” in the Orders to cover costs incurred to give effect to the Judgments, is clearly untenable.  

37.  In the premise, I reject Reason 1. 

Reason 2

38.  P contended that costs claimed in stage 4 of section A of the Bill were costs incurred as a direct and necessary consequence of the disclosure orders (ie Disclosure) made by the Court as part of the Judgments. 

39.  I have no disagreement with P that the Disclosure formed an integral part of the Judgments.  However, it does not necessarily mean that costs incurred in relation to the Disclosure or enforcing the Disclosure are covered by the Orders.  Other that Disclosure, Injunction, Deliver-up and Money Compensation also formed integral parts of the Judgment.  I note that P does not seek to argue that the Orders also cover costs incurred in relation to the Injunction, Deliver-up or Money Compensation or their enforcement. 

40.  If P’s aforesaid contention stands, P has to wait until all aspects of the Judgments have been enforced in full before it can tax its bill.  This cannot be right and I note that this is not P’s case. 

41.  P further referred to Order 62, rule 28(2) of the RHC to contend that in a party-and-party taxation P should be allowed all such costs as were necessary or proper for the attainment of justice or for enforcing or defending its rights.  P referred to Yau King Kau v Andy Tsang (unrep, HCA 1419/2009, 30 January 2014) (wrongly cited as “[2014] HKCFI 155” in P’s Skeleton but rectified with the correct action number and date of decision in P’s LOA) when the Court held in §3 of the decision that: “As the costs under the Costs Order are to be assessed on a party and party basis, pursuant to Order 62, rule 28(2) of the Rules of the High Court, only costs that are necessary or proper for the attainment of justice or for enforcing or defending the taxing party’s rights are allowed.”  P further referred to R A Stegemann v Time Enterprises Publications Ltd (unrep, HCA 282/2005, 15 December 2006) (wrongly cited as “[2006] HKCFI 1422” in P’s Skeleton but rectified with the correct action number and date of judgment in P’s LOA) and Poon Shu Fan v Wong Tin Yan & Leung Yuk Lin (unrep, CACV 81/2012, 9 October 2012) (wrongly cited as “[2013] HKCFI (unreported)” in P’s Skelton but rectified with the correct action number and date of judgment in P’s LOA).

42.  I have no disagreement with P on the legal principles governing recoverability of costs under a party-and-party costs order but I agree with Mr Lui for Ds that there is a prerequisite as to the application of the aforesaid test that the subject matter being assessed must be costs items that are covered by the Orders (Order 62, rule 28(1) of the RHC) and expenses which do not fall within the ambit of the Orders are not subject to taxation at all, as no party shall be entitled to recover any costs of or incidental to any proceedings from any other party to the proceedings except under the RHC or an order of the court (Order 62, rule 3(1) of the RHC). 

43.  P drew an analogy between perusing pleadings filed in an action and affirmations filed pursuant to the Disclosure ordered by the Judgments and submitted that costs for perusing pleadings were routinely allowed in taxation.  This is a fallacious contention oversimplifying the taxation proceedings.  Only when the costs order covered costs for perusing pleadings will those costs be allowed in taxation. They are not “routinely allowed” in taxation. 

44.  P had rightly pointed out in §10 of P’s Reply that if (and only if) the courts found that the Orders covered the claimed post-judgment steps, then the statutory test provided the mechanism for determining which of those costs were recoverable. (Emphasis and words in bracket added)  As such, the legal principles set out in Order 62, rule 28(2) of the RHC, being taxation principles applicable to party-and-party taxation, have no relevancy to the Issue.  Only after determination of the Issue, will those legal principles come into play in the taxation of the relevant items of costs claimed. 

45.  Reason 2 does not assist P’s case. 

Reason 3

46.  P contended that: “It has long been the established custom and practice in Hong Kong that the costs of effecting service of court orders are recoverable as costs of the action.” (§20 of P’s Skeleton”)  As pointed out above, I am prepared to accept that general service of an order is covered by the costs order.  However, costs for other modes of service for future enforcement purposes will not be covered unless otherwise expressly provided in the costs order. 

47.  P went on to submit that costs for “perusal of documents filed by the other party in compliance with court orders” were allowed by Taxing Masters as a matter of course or were routinely allowed in taxation. (§§21-22 of P’s Skeleton)  Again, this is a fallacious contention oversimplifying the taxation proceedings.  As discussed in Reason 2 above, only when the costs order covered the claimed items of costs will those costs be allowed in taxation.  They are not “routinely allowed” or “allowed as a matter of course” in taxation.  

48.  P submitted that: “The Plaintiff’s costs in perusing and handling those affirmations [ie affirmations served pursuant to the Disclosure ordered in the Judgments] are therefore directly attributable to the Court’s order, and it is consistent with Hong Kong taxation practice that such costs should be recoverable.” (§23 of P’s Skeleton)

49.  I accept that P’s costs in perusing and handling the affirmations served pursuant to the Disclosure ordered in the Judgments were directly attributable to the Court’s order.  This is neither here nor there for determination of the Issue.  I do not agree that there is such “Hong Kong taxation practice” as alleged by P.  Whether those costs are recoverable depends on the coverage of the relevant costs order.  This is the subject matter for the Issue. 

50.  P suggested that: “The Court may take judicial notice of these established practices” (§24 of P’s Skeleton) or “to have regard to the well-established and consistent practice of taxing masters in Hong Kong” (§12 of P’s Reply)  I am not aware of such “established practices” or “well-established and consistent practice of taxing masters in Hong Kong” as claimed by P.  I note that P adduced no authorities to substantiate its aforesaid contention. 

51.  I reject Reason 3. 

Reason 4

52.  P submitted that: “Given that the disclosure orders formed part of the same judgments, it must have been within J Lok’s anticipation that: … … the costs of these necessary steps [ie personal service of the Judgments, filing of disclosure affirmations, perusal and handling of those affirmations] would be recoverable under the Costs Orders.” (§27 of P’s Skeleton”) 

53.  P further submitted that: “In the absence of any express exclusion in the Costs Orders, the default position is that the Costs Orders cover all costs reasonably incurred in giving effect to the orders made.” (§28 of P’s Skeleton”)  

54.  As stated above, I have no disagreement that the Disclosure (as well as the Injunction, Deliver-up and Money Compensation) formed part of the Judgments but this does not necessarily mean that the Orders cover costs incurred in giving effect or enforcing the various orders granted in the Judgments.  If P is correct, costs for all enforcement proceedings will be covered by “costs of the action” costs order and it will not be necessary for the court to make any costs order in subsequent enforcement proceedings.  This cannot be right.

55.  P referred to Lo Wo & Ors v Cheung Chan Ka, Joseph & Anor with the citation “[2000] HKCFI 409” in P’s Skeleton to submit that in that case “the Court considered the scope of a costs order and held that the court’s intention, as discerned from the language of the order and the context in which it was made, is paramount.” (§29 of P’s Skeleton)  P’s solicitors, upon the directions of the Court, provided a hard copy of the Lo Wo case to the Court under cover of their letter dated 9 September 2026 but received by the Court by fax on 10 September 2026.  It transpires that the Lo Wo case referred to in P’s Skeleton is a Court of Appeal case, instead of a Court of First Instance case and the correct citation of the Lo Wo case provided to the Court shall be: “unrep, CACV 217/2000, 31 May 2001”.  P’s solicitors again provided an incorrect citation of case referred to in their submissions and offered no explanation for the error.  In fact, in the covering letter dated 9 September 2026 sending the hard copy of the Lo Wo case to the Court, P’s solicitors still stated the citation of the Lo Wo case as “[2000] HKCFI 409”.  This is very unsatisfactory. 

56.  By another letter dated 11 September 2026, P’s solicitors, without leave or directions from the Court, sent another two judgments made by the Court of First Instance in Lo Wo & Ors v Cheung Chan Ka, Joseph & Anor (HCA 618/1997) dated 9 June 2000 and 17 January 2001 (“CFI Judgments”).  P’s solicitors stated in their said letter that the previous wrong citation for the Lo Wo case provided in P’s Skeleton “was a typo”.  As one can see from various paragraphs in this decision above, P’s solicitors had repeatedly provided to the Court incorrect citation for cases referred to in P’s Skeleton.  I do not accept that this can be explained away as “typo”.  I am of the view that P’s solicitors were at the least careless, if not reckless, in discharging their duties to the Court in preparing submissions.

57.  The conduct of P’s solicitors taking liberty to send additional legal authorities (ie the CFI Judgments) to the Court, without leave or directions, after the time for them to lodge submissions on the Issue to the Court has long expired is unacceptable and most unsatisfactory.  For the sake of justice, I have considered the CFI Judgments.  They were about gross sum assessment of the trial costs in lieu of taxation (Judgment dated 9 June 2000) and an appeal against Master’s directions on restoring an adjourned taxation hearing (Judgment dated 17 January 2001).  None of the CFI Judgments concerns with matters relevant to the Issue.  

58.  Although I have no disagreement in principle to the proposition that when we consider the scope of a court order, “the court’s intention, as discerned from the language of the order and the context in which it was made, is paramount”, I must say that I have read the Lo Wo case and the CFI Judgments provided by P’s solicitors carefully but did not find anything in these cases suggesting that: “the Court considered the scope of a costs order and held that the court’s intention, as discerned from the language of the order and the context in which it was made, is paramount.”  The Lo Wo case and the CFI Judgments do not assist P. 

59.  P contended that: “If J Lok had intended to exclude post-judgment compliance costs, one would have expected an express limitation in the Costs Order (such as “costs up to and including the date of this judgment” or “costs of the action to judgment”).  No such limitation appears.” (§28 of P’s Skeleton”)  

60.  The Orders provided for Ds to pay the ordered costs “forthwith, to be taxed if not agreed”.  This clearly showed that Lok J had anticipated that further costs would be incurred in the Action but His Lordship was minded to order costs payable under the Orders to be taxed “forthwith”.  For a costs order to be taxed forthwith, the costs covered by the costs order have to be ascertainable as at the date of the costs order.  If not, how may the court tax the costs “forthwith”?  All future costs which cannot be reasonably ascertained as at the date of the costs order are excluded from the costs order.  Lok J did limit the scope of the Orders by express provision.

61.  Reason 4 works against P’s case. 

Reason 5

62.  P referred to section 52A of the Ordinance and Order 62, rule 28(2) of the RHC as well as those cases which I have discussed above (the Yau King Kau case, the R A Stegemann case, the Poon Shu Fan case and the World Fuel Services case) as legal authorities supporting its case.  As discussed above, those statutory provisions and cases do not assist P.  They are irrelevant to the Issue. 

63.  P further referred to the following cases in section B of §30 of P’s Skeleton in support of its contention:

(1)  Chung Sun Kwan v the Official Receiver [2021] HKCFI 712 when the Court upon dismissing the plaintiff’s claim, ordered that: “Costs of the Action, including all costs reserved, if any, be to the Defendant, to be taxed if not agreed, and paid by the Plaintiff forthwith, certificate for counsel.”

The issue for that case was whether the Official Receiver owed any common law duty of care to the plaintiff in principle and on the facts of that case.  If so, whether that duty was breached. 

The case does not support P’s contention that: “Judgment debts include costs, and costs are recoverable as part of the judgment debt, reinforcing the principle that costs incurred in enforcing a judgment are within the scope of the costs order.”

I have no disagreement to the statement that: “Judgment debts include costs, and costs are recoverable as part of the judgment debt” but I do not see that such principle has the effect of “reinforcing the principle that costs incurred in enforcing a judgment are within the scope of the costs order”.

This case has no relevancy to the Issue.

(2)  Lee Tso Fong v Kwok Wai Sun & Anor [2008] 4 HKLRD 270 (wrongly cited as “[2008] HKCFI 563” in P’s Skeleton but rectified with the correct action number and date of judgment in P’s LOA) in which the Court made no order as to costs between the parties upon dismissing the plaintiff’s claims against the defendants because of the way the defence was conducted which had caused the plaintiff incurring unnecessary costs far more than what she should be liable for, including her own as well the defendants’ costs, had the defence been properly conducted. 

This case does not support P’s contention that: “Costs orders are to be construed in the context of the litigation as a whole.”  Instead, it reiterates the principle that costs are at the discretion of the court and such discretion is to be exercised in the context of the litigation as a whole. 

This case is not on construction of costs order and has no relevancy to the Issue. 

(3)  In the Lo Wo case, the Court of Appeal dismissed the appeal “with an order nisi of costs in favour of the plaintiffs.”  However, nowhere in this case did the Court of Appeal deal with “post-judgment costs”. 

P contended that this case “confirms the court’s broad discretion in relation to costs, including post-judgment costs.”  Although I have no disagreement to the proposition set out in the above quoted statement, I must say that having read the Lo Wo case carefully I did not find anything in that case suggesting that the Lo Wo case “confirms the court’s broad discretion in relation to costs, including post-judgment costs.”

I have also discussed the CFI Judgments above.  They also did not deal with “post-judgment costs”.

Both the Lo Wo case and the CFI Judgments are irrelevant to the Issue.

64.  P submitted that in England, the phrase “costs of and incidental to the proceedings” had been held to include costs incurred after judgment, including costs of enforcement.  P referred to Re Elgindata (No 2) [1992] 1 WLR 1207 as authority supporting its aforesaid contention.  The Elgindata case was on apportionment of costs and whether winning party should be ordered to pay losing party’s costs.  P submitted that in the Elgindata case, “the English Court of Appeal confirmed that costs incurred after judgment may be recoverable if they are properly incurred as part of the proceedings.” (§31 of P’s Skeleton)  I have read the Elgindata case carefully and did not find anything in support of P’s aforesaid contention.  In any event, as discussed above, costs order covering “costs incidental to” the proceedings is different from the terms of the Orders. 

65.  P referred to the Chan Lan case as local authority approving the approach in the Elgindata case. (§31 of P’s Skeleton)  P referred specifically to §6 of the judgment in the Chan Lan case saying that “where the Court applied the principles summarized by Nourse LJ [in the Elgindata case].”  I quote below §6 of the judgment in the Chan Lan case in full:

“As to costs, the applicable principles were conveniently summarised by Nourse LJ in In re. Elgindata (No.2) [1992] 1 WLR 1207 at 1214A-D:-

(1) Costs are in the discretion of the court.

(2) They should follow the event, except when it appears to the court that in the circumstances of the case some other order should be made.

(3) The general rule does not cease to apply simply because the successful party raises issues or makes allegations on which he fails, but where that has caused a significant increase in the length or costs of the proceedings he may be deprived of the whole or a part of his costs.

(4)  Where the successful party raises issues or makes allegations improperly or unreasonably, the court may not only deprive him of his costs but may order him to pay the whole or a part of the unsuccessful party’s costs.”

66.  It is correct to say that in §6 of the judgment in the Chan Lan case, Mr Recorder Fok, SC [as his lordship then was] had summarized the principles set out by Nourse LJ in the Elgindata case applicable to the court making a costs order.  However, it can be seen from the above quoted passage that those principles have no relevancy to the Issue. 

67.  P mentioned Wong Yim Man Anthea v Wong Ho Ming Felix (HCA 352/2011) in the table set out in §3 of P’s Skeleton.  P provided the citation for this case as “[2016] HKCFI 675”.  The court had issued two judgments dated 24 September 2015 and 22 April 2016 in that case but none was of the citation provided by P.  The 2016 judgment had been reported in [2016] 3 HKLRD 249.  P did not refer to this case again in the subsequent part of P’s Skeleton.  As P had cited this case as an authority in support of its contention, I will also look into this case. 

68.  In the Wong Yim Man Anthea case, upon dismissing the plaintiff’s claim, the court ordered her to pay 40% of the defendant’s costs on the ground that the defendant abandoned certain lines of his defence at the outset of the trial and some only after the close of evidence.  The court maintained the same order after hearing an application to vary the costs order nisi.  However, nothing in the Wong Yim Man Anthea case provides legal authorities relevant to the Issue, not to say supporting P’s contentions.  

69.  P contended that section 52A of the Ordinance, Order 62, rule 28(2) of the RHC and the aforesaid cases “confirm that costs of steps taken to enforce or give effect to judgments, including post-judgment compliance work, are properly allowable.” (No 5 of the table set out in §3 of P’s Skeleton)  I have no problem with the proposition that “costs of steps taken to enforce or give effect to judgments, including post-judgment compliance work” may be properly allowable under costs orders of the court covering such costs.  However, this is not the Issue concerning us.  The Issue is whether the Orders are such costs orders, ie costs orders covering post-judgment costs claimed by P in stage 4 of section A of the Bill. 

70.  I have carefully considered all the above authorities, none of them are relevant to the Issue.  Suffice it to say that none of them assist P.

Reason 6

71.  P submitted that the sole substantive dispute between the parties was the concerned trade mark infringement.  The post-judgment compliance work performed by P (claimed in stage 4 of section A of the Bill) related directly to the trade mark infringement claims.  If the Orders were construed not to cover these post-judgment costs, then those costs would fall within no other category of recoverable costs.  P contended that in the present context, the construction that yielded a sensible outcome was that the Orders encompassed the post-judgment compliances costs.

72.  I am of the view that this argument is a non-starter. 

73.  A costs order only concerns costs covered by the order.  Whether a party’s costs are otherwise non-recoverable is neither here nor there.  If such costs are not within the ambit of the costs order, they will not become subject matter of the costs order simply because they are otherwise non-recoverable.  The construction of a costs order is to ascertain what costs are covered by the order but not to assist the receiving party to recover costs which are not included by the court making the costs order.  What costs are to be covered by the costs order are matters for the court making the order.  Construing costs order in this way is not inconsistent with the underlying objective of the RHC to deal with cases justly. 

74.  If a party wishes to recover certain items of costs from the other side, it is for the party’s legal representatives to obtain from the court a costs order covering such costs.  If the costs order obtained by a party does not cover post-judgment costs, such post-judgment costs will not be dealt with in the taxation for that costs order.  Whether such costs will be recoverable under other costs order(s) does not concern the court taxing that costs order.  

75.  P submitted that: “if the post-judgment costs are not covered by the Costs Orders, they would fall into a complete vacuum and be irrecoverable, leading to an absurd and inequitable outcome.” (§15 of P’s Reply)  I do not agree.  If it is necessary for P to incur costs to enforce the Judgments, be it order for the Injunction, Deliver-up, Disclosure or Money Compensation, P may seek appropriate costs order in the relevant enforcement proceedings for those costs.

Conclusion on the Issue

76.  None of the Reasons advanced by P has persuaded me that the Orders cover costs claimed in stage 4 of section A of the Bill.  I accordingly tax off the whole stage 4 of section A of the Bill and conclude the taxation of the Bill.

Wrong citation for the Wong Wai Kay case and the Lo Wo case

77.  P referred to the Wong Wai Kay case and provide citation in §8 of P’s skeleton for that case as “[2021] HKCFI (unreported, HCA 2624/2008, 18 March 2021)”. 

78.  Ds’ legal representatives were unable to locate the case and alleged that the Wong Wai Kay case might not exist.  Ds alleged that P intended to mislead the Court by citing a non-existing case.

79.  Ds referred to Licksun Company Ltd v Occupiers of Lot No 552 in DD 85, NT, Hong Kong and Another [2025] HKDC 1287 to seek a costs order against P on a more stringent basis, presumably on indemnity basis as awarded in the Licksun case.  

80.  It transpires that the Wong Wai Kay case does exist but with a totally different citation, action number and judgment date.  The correct citation shall be “(unreported, HCA 1385/2010, 3 June 2013)”.

81.  P’s solicitors had upon the Court’s directions provided a hard copy of the Wong Wai Kay case to the Court on 26 June 2026 and confirmed that it was the case referred to in P’s Skeleton but offered no explanation for providing a totally wrong citation in P’s Skeleton. 

82.  As noted above, P’s solicitors have the habit of providing incorrect citation for cases referred to in their skeleton.  I do not think that P’s solicitors intended to mislead the Court as they are not non-existing cases.  Instead, I am of the view that P’s solicitors were careless, if not reckless, in preparing their submissions.  This is unacceptable and most unsatisfactory. 

83.  The Wong Wai Kay case is not a fictitious case.  However, by providing a wrong citation for the case, P’s solicitors had caused unnecessary costs being incurred by Ds’ legal representatives in checking and clarifying the matter.  As shown above, this is not a single isolated incident.  It occurred repeatedly in P’s Skeleton.  I am of the view that P’s solicitors shall personally liable for such wasted costs on indemnity basis to mark the disapproval of this Court to the way P’s solicitors discharging their duties towards the Court in making submissions to the Court. 

84.  I am also of the view that P’s solicitors shall also be personally liable for costs incurred by Ds to have their solicitors considering the CFI Judgments being additional authorities submitted without leave or directions from the Court.  These additional authorities turn out to be irrelevant to the Issue.  In other words, P’s solicitors had burdened Ds’ solicitors with irrelevant legal authorities submitted without leave or directions of the Court.  P’s solicitors shall be personally liable for such wasted costs on indemnity basis

85.  I make an order nisi that P’s solicitors shall personally pay Ds’ costs incurred for clarifying the wrong citations in respect of the Wong Wai Kay case and the Lo Wo case and for considering the CFI Judgments on indemnity basis with counsel certificate and that P’s solicitors shall not be entitled to charge their client for costs incurred in clarifying the wrong citations in respect of the Wong Wai Kay case and the Lo Wo case. (“Wrong Citation Costs Order”) 

86.  I grant liberty for P’s solicitors to apply within 14 days from the date of this order to fix an oral hearing before me with 30 minutes reserved to show cause as to why the aforesaid order nisi shall not be made absolute.  Such application can be made by letter to Master Lai with copy to Ds’ solicitors.  Failing such application, the aforesaid order nisi shall become absolute 14 days after the date of this order. 

87.  Ds proposed in Ds’ Supplemental for this Court to consider this matter in an oral hearing instead of dealing it on papers.  As the nature of the matter concerned is not as serious as those concerning the courts in the Licksun case or Cork v Smith [2026] EWHC 1199 (Ch), where non-existing case or statutory text were cited to the courts, I am of the view that it may not be desirable for the parties to incur further costs on this matter to attend an oral hearing unless P’s solicitors wish to show cause as to why they shall not be personally liable for the wasted costs on indemnity basis as I have ordered in the aforesaid order nisi.  If so, P’s solicitors may request an oral hearing as directed in the aforesaid order nisi.

Costs

88.  As P has failed in its arguments on the Issue, P shall pay Ds’ costs for arguing the Issue (other than the costs covered by the Wrong Citation Costs Order) on party-and-party basis with counsel certificate.  I so order. 

89.  Ds have submitted their statement of costs.  I assess Ds’ costs for arguing the Issue by summary assessment at $15,175.  Such costs to be set off from the amount of taxed costs payable by Ds to P after this taxation pursuant Order 62, rule 18(a) of the RHC.

90.  I also assess the costs to be paid by P’s solicitors to Ds under the Wrong Citation Costs Order by summary assessment at $18,450.  Such costs shall be payable forthwith upon the Wrong Citation Costs Order becomes absolute as aforesaid.