LEHMANBROWN LTD v. UNION TRADE HOLDINGS INC AND OTHERS

HCMP 775/2012

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO 775 OF 2012

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D E C I S I O N
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1. This is an application by the defendants for leave to appeal against my decision given on 18 February 2015.

The parties and the application

2. The plaintiff sues the defendants in these proceedings for various reliefs in relation to two Hong Kong trademarks and 11 China trademarks.

3. The 1st and 2nd defendants are BVI companies.  Each of them has filed an address for service with the Registrar of Trade Marks pursuant to rule 105 of the Trade Mark Rules.

4. The 3rd and 4th defendants are residents of Beijing.

5. The defendants issued a summons to dispute the service of the proceedings on them and to seek stay of proceedings.

The decision

6. The details of my decision have been summarised by Mr Barlow, SC in paragraph 3 of his written submissions for the defendants in this application as below:

“3.1 The ultimate conclusions in the Decision [9-39] are as follows.

3.2 Because of the facts that: (a) D1 previously had; and (b) D2 currently has an address for service with the Registrar of Trade Marks, pursuant to R. 105 of the Trade Mark Rules — each of D1 and D2 was duly served in respect of the Plaintiff’s claims concerning D2’s two registered Hong Kong Marks (paras. 13-14).

3.3 D1 and D2 have not been duly served in respect of the Plaintiff’s claims concerning the Mainland Marks (paras. 14-15).

3.4 This Court has no jurisdiction over D1 and D2 in respect of the Plaintiff’s claims concerning the Mainland Marks (para. 15).

3.5 Since the Plaintiff could have made a successful application for leave to serve D3 out of the jurisdiction, D3’s application to set aside service is dismissed and pursuant to RHC O. 12 R. 8(6), he is to be treated as having been duly served in respect of all the Plaintiff’s claims (paras. 37-79).

3.6 D4 was validly served in respect of all the Plaintiff’s claims by the Plaintiff’s delivery of the copy Originating Summons to the office address of Pan-Ocean Secretarial Services Ltd (paras. 29-36).

3.7 The Court has jurisdiction in respect of all the Plaintiff’s claims against D3 and D4.

3.8 There shall be no order for the costs of D1 and D2 ( para. 80).

3.9 D3 and D4 are to pay the Plaintiff’s costs on the Defendants’ summons (para. 81).”

I also dismissed the application for stay of proceedings pending the conclusion of proceedings in the mainland.

The legal principle

7. The defendants now seek leave to appeal under section 14AA(1) and (4) of the High Court Ordinance, Cap 4 and O 59 r 2B of the Rules of the High Court.  Sections 14AA(1) and (4) of the Ordinance provide.

“(1) Except as provided by rules of court, no appeal lies to the Court of Appeal from an interlocutory judgment or order of the Court of First Instance in any civil cause or matter unless leave to appeal has been granted by the Court of First Instance or the Court of Appeal.

…

(4) Leave to appeal for the purpose of subsection (1) shall not be granted unless the court hearing the application for leave is satisfied that—

(a) the appeal has a reasonable prospect of success; or

(b) there is some other reason in the interests of justice why the appeal should be heard.”

This application is made under section 14AA(4)(a).

8. It has been explained in the case of SMSE v KL [2009] 4 HKLRD 125 at para 17 per Le Pichon, JA that “reasonable” means more than fanciful but without having to be probable.  The learned Judge also said in the same paragraph that leave is not lightly granted.  I fully agree.

9. The defendants have given a number of grounds of appeal in support of this application.

Use of the 1st defendant’s rule 105 address

10. For the 1st defendant, it is now submitted that it is a BVI company without business or registered trademarks in Hong Kong.  It is thus argued now that as it is not a registered proprietor of the Hong Kong Marks, the address for service it provided to the Registrar of Trade Marks under rule 105 could not be used for service on it.  It further submitted that I was wrong in holding that the plaintiff had duly served the proceedings on it in relation to the Hong Kong Marks.

11. However, the legal representatives of the defendants seem to have forgotten that my decision on service on the 1st defendant was made pursuant to a concession by the 1st defendant.

12. Mr Barlow, SC in his written submissions used for the original arguments had in paragraph 2.2 disputed service of the proceedings on the 1st defendant.  However, after Mr Clark for the plaintiff had in his written submissions referred to Re Yoshida & Co Ltd [2004] 2 HKC 577 and Re Yoshida (2004) 7 HKCFAR 625, Mr Barlow changed his stance.  He then said in paragraph 7 of the defendants’ Reply Points that after becoming aware of Re Yoshida:

“… the defendants accept that insofar as the 1st and 2nd defendants are concerned, their Hong Kong Trade Marks Registry address for service is an address for service for the plaintiff’s causes of action against the 1st/2nd defendants concerning the ‘Hong Kong Marks’.”

13. In the light of such concession, I do not think it is now open to the 1st defendant to turn around and argue again on whether it had been duly served in relation to the Hong Kong Marks.

Unregistered Hong Kong marks

14. The next ground is raised for both the 1st and 2nd defendants.  It is in relation to the two unregistered trade marks pleaded in paragraph 6 of the relief of the Amended Originating Summons as follows:

“6. A declaration that the 1st and/or 2nd and/or 3rd and/or 4th Defendants infringed the Plaintiff’s trademarks, namely ‘LehmanBrown’ and ‘雷博’ (pin yin ‘liu bu’) (‘Trademarks’).”

15. The 1st and 2nd defendants now argue that this court has no jurisdiction concerning these two alleged unregistered marks.  I understand that they are referring to these marks as marks used in Hong Kong and not in the mainland.  I have already declared in paragraphs 15 and 28 of my decision that these proceedings in relation to the Mainland Marks have not been duly served on the 1st and 2nd defendants.  Hence, there is no decision on Mainland Marks registered or otherwise for the 1st and 2nd defendants to appeal against.

16. Mr Barlow submitted that this is not a new ground but had been raised in relation to marks in Hong Kong in paragraph 5.4 of his original written submissions.  However, this submission is inaccurate.  What Mr Barlow said in para 5.4 of his written submissions was only in relation to “extraterritorial registered or unregistered trade marks in the PRC”, not Hong Kong Marks whether registered or otherwise.  Paragraph 5.4 of his original submissions reads:

“5.4 Also, this Court has no jurisdiction over any extra-territorial registered or unregistered trademarks in the PRC (i.e. the ‘Mainland Marks’ and/or the (allegedly unregistered) ‘Trademarks’) (i.e. para. 3.4’s ‘(D)’ – ‘(J)’) – see:-”

17. If the unregistered marks mentioned in paragraph 5.4 of the submissions included the unregistered marks in paragraph 6 of the relief of the Amended Originating Summons, then the 1st and 2nd defendants were treating those marks as unregistered marks in the PRC and not unregistered Hong Kong Marks.  Hence, they had never raised any issue in the original hearing on unregistered Hong Kong Marks.

18. Mr Leung for the plaintiff also submitted that if issue should have been raised by the 1st and 2nd defendants at the original hearing on unregistered marks in Hong Kong, the plaintiff could have responded by relying on the concept of well-known trademarks in sections 4 and 63 of the Trade Marks Ordinance and the protection by the law of passing-off under section 10 of the Ordinance.

19. Since this issue was not raised in the original hearing, I cannot allow the 1st and 2nd defendants to raise it now.

No application for service out of jurisdiction on the 3rd defendant

20. It is argued for the 3rd defendant that the plaintiff had not applied under O 11 r 1 for service of the proceedings on him out of jurisdiction.

21. This ground ignores the fact that the 3rd defendant himself had accepted service subject to reserving his right to challenge jurisdiction. It was on such basis that he had been served with these proceedings.  He then challenged the jurisdiction of this court in the original hearing. 

22. O 12 r 8(6) provides:

“8. (6) A defendant who makes an application under paragraph (1) or (2) shall not be treated as having submitted to the jurisdiction of the court by reason of his having given notice of intention to defend the action; but if the Court makes no order on the application or dismisses it, the notice shall stand unless otherwise directed by the Court and the defendant shall be treated as having given notice of intention to defend the action.”

23. Rogers VP has also said in Iu Po Shing Patrick vEmpresa Hoteleira De Macau, Limitada & Anor, HCMP 1495/2009, paragraph 6:

“6. That rule is very clear. Unless the judge makes an order the defendant shall be treated as having given notice of intention to defend the action. The rule clearly gives the judge a discretion. … I would also go further by saying that it would appear to me that the rule is directed to facilitate the administration of justice by treating the defendant as having given notice to defend and thus avoiding any unnecessary further delays, unless the court saw good reason otherwise.”

24. I dismissed the 3rd defendant’s challenge.  Hence O 12 r 8(6) applied.  He was deemed to have given notice of intention to defend.  There is thus no need for the plaintiff to apply to serve the proceedings out of jurisdiction on him again.  This ground is thus of no merit.

Double-actionability for the 3rd defendant

25. The next ground for the 3rd defendant is the principle of double-actionability and is raised in relation to the Mainland Marks.  However, this issue had not been mentioned in the original hearing.  I would therefore not allow it to be argued now.

The 4th defendant did not live or work at her last known address in HK

26. The first ground for the 4th defendant alleges that I have failed to find that the plaintiff knew that she resided in Beijing with her family and did not live or work at the Hong Kong address at which the proceedings were served on her.  I find this ground factually incorrect. 

27. The fact that the 4th defendant resided in Beijing is not challenged (para 34 of the decision).  I also said that the plaintiff was aware that she did not live at the Hong Kong address (para 35 of the decision).  Her residency in Beijing was one of the grounds she relied on in saying that it was inconvenient for her to come to Hong Kong to contest these proceedings.  It was also not suggested that she had worked at the Hong Kong address.  The plaintiff served her at this address not because she had worked or lived there but because she had used it as her address and the plaintiff knew it as one of her last known addresses.  This ground thus has no merit.

The actual mode of service on the 4th defendant

28. The next three grounds can be grouped into one. They say that the actual mode of service on the 4th defendant was not in compliance with O 10 r 1(1), O 65 r 2 and O 11 r 1(1).  But these grounds were never raised in the original hearing.  I dismiss them all.

Mainland proceedings still in progress and these proceedings be stayed

29. The defendants also argued that despite the conclusion of the contest before the Trademark Review and Adjudication Board, the revocation proceedings in the mainland are still in progress and the 2nd defendant’s ownership of two of the Mainland Marks is still good.  Hence, the defendants say that these proceedings should be stayed.  But I have made it plain that these proceedings are for enforcement of agreements whilst the mainland proceedings are for revocation of trademark registrations.  Hence, they are different proceedings.

30. I have also given other reasons for not staying these proceedings in paragraphs 74-79 of the decision.

The 2nd defendant is the owner of the trade marks

31. The defendants also submitted that the 2nd defendant is the owner of the Mainland Marks.  Hence, the plaintiff has no title to sue the defendants for infringement of the Mainland Marks.  They also referred to relief paragraph 5 in the Amended Originating Summons (which relied on the judgment of Harris J).  They thus submitted that the plaintiff’s claim so framed is based on the tort of misappropriation.  Hence, they argued that only the mainland courts have jurisdiction over such claims.

32. The plaintiff responded by saying that its claims for misappropriation and infringement are based on breaches of agreements by the 2nd and/or 3rd and/or 4th defendants.

33. Relief para 5 of the Amended Originating Summons pleads:

“5. A declaration that the 2nd and/or 3rd and/or 4th defendants misappropriated the plaintiff’s Mainland Chinese Marks having trademark registration numbers: 5047543, 5047542, 5047541, 5047540, 3013120, 3013121, 6429080, 5047528, 5047527, 5047525 and 5047524 (‘Mainland Marks’) in accordance with the findings (‘Misappropriation and Infringement Findings’) at paragraphs 127 – 130 of the Reasoned Judgment of The Honourable Mr Justice Harris in HCCW 377/2010 & HCCW 383/2010 (‘Consolidated Action’) dated 15 November 2011 and the Corrigendum in the Consolidated Action dated 18 November 2011 (‘Reasoned Judgment’)”

34. This relief refers to the findings of Harris J at paras 127-130 of his judgment.  It is useful to set out the relevant parts of those paragraphs here:

“Misappropriating the Company’s trademark (Effiscient’s complaint 4)

127. The original agreement as evidenced by Mr. Lehman’s email dated 22 August 2001 recorded that the Company would trademark its brand. It appears from an email from Christine Hu of LLX to Mr. Brown dated 12 November 2001, that Mr. Lehman registered the trademark in his own name and, consistent with the original agreement. He then appears to have executed an irrevocable agreement on 16 November 2001 to transfer the trademark to the Company. I say “appears” because for the first time in cross-examination Mr. Lehman said this: ‘I did not write this letter. This letter is not a valid letter. … No, this is not my letter’. Mr. Lehman went on to suggest that, what appears to have been his signature was computer generated.

…

129. I agree with Mr Manzoni’s submission that this was the low point in Mr. Lehman’s evidence. … His evidence was a fabrication produced in order to his denial of signing the agreement of November 2001, which I find he did sign.

130. I find that in breach of his agreement he misappropriated the Company’s trademark by transferring it to his Wife’s company, Home & Garden, and refusing when requested, to cause it to be transferred to the Company. …” (Emphasis supplied)

35. It is clear that Harris J was referring to the breach of agreement by the 3rd defendant and his breach was committed by way of misappropriation of the plaintiff’s trade mark.  Hence, the plaintiff says that its claims are based on breaches of agreements.  In fact Mr Brown has in his affidavits referred to the two agreements and the breaches of them by the 2nd to 4th defendants.  Thus the plaintiff is not making a tortuous claim which is only available to the registered owner of the Mainland Marks and only justiciable in the mainland courts.  The plaintiff is in fact suing for breaches of agreements and this court can certainly exercise jurisdiction over such claims even though the subject matters of the agreements are the Mainland Marks.

Decision

36. Since none of the proposed grounds of appeal put forward by the defendants has merit, this appeal has no reasonable prospect of success. I therefore dismiss this application. 

37. I also make a costs order nisi that the defendants do pay the plaintiff the costs of this application to be taxed and paid forthwith.