ALIBABA INNOVATION PRIVATE LTD v. HONG KONG JUHUASUAN INTERNATIONAL TRADING LTD

HCIP 67/2025

[2025] HKCFI 6401

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

INTELLECTUAL PROPERTY PROCEEDINGS NO 67 OF 2025

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J U D G M E N T

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1.  I have before me an application for default judgment under O.19, r.7 of the Rules of the High Court, Cap. 4A (“RHC”)  by Alibaba Innovation Private Limited, the Plaintiff (“P”), against the Defendant (“D”).

2.  By Summons dated 22 October 2025 (“P’s Summons”), P seeks:

(1)  To permanently restrain D, whether acting by itself, its directors, officers, employees, servants, agents, affiliates or any of them or otherwise howsoever, from doing the following acts:

(a)  Infringing any of P’s Registered Trade Marks[1] in Hong Kong contrary to s.18 of the Trade Marks Ordinance, Cap. 559 (“TMO”);

(b)  Using any trade marks which, or the essential part of which, are identical or similar to the well-known marks where such use is likely to cause confusion on the part of the public contrary to s.63 of TMO;

(c)  Passing-off, attempting to pass off any business or goods or services not being those of P as and for those of P or as being in any way connected with P, whether by advertising, carrying on any business or trade under, using in connection with any business or trade, or registering as a company name, business name, trade mark, domain name or otherwise howsoever (including by means of the Internet or otherwise)  the name “Juhuasuan”/ “聚划算” and/or any other name(s)  or sign(s)  confusingly and/or deceptively similar to the aforesaid names;

(d)  Passing-off or attempting to pass off any business or goods or services not being those of P as for those of P by carrying on business under or by reference to the company names “Hong Kong Juhuasuan International Trading Limited” and “香港聚划算國際貿易有限公司”, or any other name(s)  confusingly similar to any of P’s company names or trade names including “Juhuasuan” and “聚划算” in Hong Kong or anywhere in the world;

(e)  Using in the course of trade or carrying on business under the company names “Hong Kong Juhuasuan International Trading Limited”, “香港聚划算國際貿易有限公司”, or any other name(s)  confusingly similar to any of P’s company names or trade names including “Juhuasuan” and “聚划算” in Hong Kong or anywhere in the world; and

(f)  Authorizing, approving, directing, causing, enabling, assisting or procuring others to commit any of the acts mentioned above;

(2)  An order that D do forthwith take all such steps as are necessary to change its company name registered with the Hong Kong Companies Registry to one which does not include the names “Juhuasuan” , “聚划算”, or any other name(s)  which is similar thereto, and to notify the Business Registration Office of the change of name accordingly;

(3)  An order that D do forthwith deliver up or destroy upon oath, at P’s option, all items in its possession, power, custody, or control including all signs, facia boards and the like, and all printed matters such as stationery, business cards and the like, bearing the names “Hong Kong Juhuasuan International Trading Limited”, “香港聚划算國際貿易有限公司”, “Juhuasuan” and/or “聚划算”, the continued retention, distribution and/or use of which D will offend against the foregoing injunction;

(4)  An enquiry as to damages, or alternatively damages, or at P’s option an account of profits in respect of the wrongful acts of D;

(5)  An order that D do pay all sums found due to P upon taking such enquiry or account together with such interest thereon;

(6)  An order that D do within 14 days of service of the order make discovery upon oath of all matters relating to the foregoing; and

(7)  An order that D do pay P the costs of this action including this application to be summarily assessed.

3.  On 9 September 2025, P has issued a Writ of Summons endorsed with a Statement of Claim (“the Writ”)  against D. Essentially, it is pleaded that:

(1)  P is a company incorporated under the law of Singapore and P’s shares were listed on the Main Board of the Hong Kong Stock Exchange in November 2019;

(2)  P and its affiliates are a family of Internet-based businesses known as “Alibaba Group” and comprised various businesses including Taobao and Tmall Group; 

(3)  “Taobao” platform was established in 2003 by Alibaba Group and Tmall platform was subsequently founded in 2008.  Together they constitute the world’s largest digital retail business in terms of Gross Merchandise Volume (“GMV”)  for the twelve months ended 31 March 2024;

(4)  “聚划算” (Juhuasuan)  launched in 2010, is China’s most popular group buying marketplace by its monthly active users and GMV generated on “聚划算” amounted to RBM47.7B in 2013.  Today, Juhuasuan is operated under Taobao and Tmall Group and is integrated with Taoboa and Tmall platforms;

(5)  P was and is established to apply for, hold and manage the overseas portfolio of registered trademarks and other intellectual properties including certain trademarks registered in Hong Kong containing “Juhuasuan” and/or “聚划算” (collectively, “Registered Trade Marks”);

(6)  P had authorised the use of the Registered Trade Marks to companies and affiliates of the Alibaba Group and P;

(7)  P and its affiliates undertake various promotional activities and invests a huge amount of resources advertising and marketing the marks “Juhuasuan” and/or “ 聚划算”.  As a result, Alibaba Group (including P)  has achieved goodwill and reputation in the market and the consumers worldwide including Hong Kong and elsewhere associate the marks “Juhuasuan” and/or “聚划算” with P and the Alibaba Group exclusively;

(8)  D is a company incorporated in Hong Kong on 11 April 2025, with the English company name “Hong Kong Juhuasuan International Trading Limited” and a Chinese company name “香港聚划算國際貿易有限公司”;

(9)  D is liable for trade mark infringement and passing off;

(a)  D has prior to the Writ, infringed or threatened to infringe P’s Registered Trade Marks by registering and using or threatening to use a company name, under which it carries on business or threatens to carry on business in Hong Kong, the predominant part of which under its company name comprise the English word “Juhuasuan” and the Chinese words “聚划算”, which are identical and/or confusingly similar to the Registered Trade Marks.  The use of such name which is the same as or confusingly similar to the Registered Trade Marks is calculated or likely to mislead and deceive the public into believing that the business, goods or services involved in or provided by D are authorised by, connected or associated with P or otherwise associated with, licensed or authorised by P, contrary to the facts;

(b)  The Registered Trade Marks should be considered as well-known trademarks and the use of the English word “Juhuasuan” and “聚划算” would take unfair advantage of, or be detrimental to, the distinctive character or repute of the Registered Trade Marks under s.18(4)  of TMO; and

(c)  The incorporation of D under its company name as well as the registration of the said name on or about 11 April 2025 are calculated or likely to mislead and deceive the public into believing that the business, goods or services involved in or provided by D are authorised by, connected or associated with P or otherwise associated with, licensed or authorized by P contrary to the facts.  Such acts of misrepresentation by D have damaged or are likely to damage P and/or Alibaba Group’s business and goodwill.  By reason of the foregoing, D has passed off and/or attempted or threatened to pass off and/or has caused, enabled, procured, authorized or assisted others to pass off its or their business and/or goodwill as and for P and/or Alibaba Group’s business and goodwill; and

(10)  P claims various injunctive relief, orders, inquiry as to damages or account of profits, together with interests and costs.

4.  Notwithstanding service of the Writ, D has not filed any Acknowledgment of Service nor defence.

5.  D has not appeared at today’s hearing.  Given that I am satisfied from the affirmations of service that D has been served P’s Summons and the relevant documents, and has never participated in these proceedings notwithstanding service of the Writ, I am of the view that it is expedient to proceed with the hearing of P’s Summons in D’s absence under O.32, r.5 of RHC.

6.  The applicable principles for default judgment under O.19, r.7 of RHC are well-settled.  The power to grant judgment under O.19, r.7 is discretionary.  The court is required to scrutinize whether the matters pleaded in the Statement of Claim entitle the plaintiff to the judgment sought.  The court’s decision is made on the basis of pleaded facts, rather than on evidence.  This is because where no defence is filed, the court will assume that the Statement of Claim has been impliedly admitted.  See Hong Kong Civil Procedure 2026, Vol.1, §§19/2/1, 19/7/11 and 19/7/14. 

7.  As for injunctive relief, it is now well-established that the court has jurisdiction to grant injunctions in default judgment: see Biostime International Investment Ltd v France Heson Paper (Hong Kong)  Co Ltd [2015] 2 HKLRD 658, §§12-13 per DHCJ Paul Lam SC and Hong Kong Civil Procedure 2026, Vol.1, §19/7/17.

8.  As for the claim for trade mark infringement, the following provisions of TMO are relevant:

(1)  S.18(3)  which provides:

“A person infringes a registered trade mark if-

(a)  he uses in the course of trade or business a sign which is similar to the trade mark in relation to goods or services which are identical or similar to those for which it is registered; and

(b)  the use of the sign in relation to those goods or services is likely to cause confusion on the part of the public.”;

(2)  S.18(4)  which provides:

“A person infringes a registered trade mark if –

(a)  he uses in the course of trade or business a sign which is identical or similar to the trade mark in relation to any goods or services;

(b)  the trade mark is entitled to protection under the Paris Convention as a well-known trade mark; and

(c)  the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark.”

9.  As for the law of passing off, it is also well-established there are three essential elements:

(1)  That the plaintiff enjoys reputation and good will in the name, mark or indicia which it wishes to prevent the defendant from using;

(2)  That the defendant has made a representation which was likely to lead members of the public to believe that his business, goods or services are the business, goods or services of the plaintiff; and

(3)  That the plaintiff was suffering and was likely to suffer damage by reason of the erroneous belief engendered by the defendant’s misrepresentation.

See: Oriental Food Industries Sdn Bhd v Sze Hing Loong Development Ltd (unrep)  HCA 2094/2011, 12 February 2015 at §30 per DHCJ B Chu (as she then was).

10.  On the facts as pleaded in the Statement of Claim, which in default of defence are assumed to be impliedly admitted, I am satisfied that P is entitled to the orders sought.  In particular, I am satisfied that:

(1)  P is entitled to an injunction to restrain D from infringing the Registered Trade Marks where: (a)  the Registered Trade Marks have been registered under TMO; (b)  D has breached s.18(3)  of TMO by using the name “Juhuasuan” and/or “聚划算” in the course of trade or business similar to that that carried on by P and the use of the sign is likely to cause confusion on the part of the public; (c)  D has breached s.18(4)  of TMO by using the name “Juhuasuan” and/or “聚划算” in the course of trade or business that is entitled to protection as a well-known trade mark and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark; and (d)  P as present owner of the Registered Trade Mark is entitled to sue for infringements thereof by virtue of s.22(1)  of TMO;

(2)  P is entitled to an injunction restraining D from passing off by using a company name containing the words “Juhuasuan” and “聚划算”: (a)  P enjoys a goodwill or reputation in the name of “Juhuasuan” and “聚划算”; (b)  by using the company name containing the words “Juhuasuan” and “聚划算”, D has made a representation which is likely to lead members of the public to believe that D’s business, goods or services are the business, goods or services of or related to P; and (c)  P will suffer damage by reason of that erroneous belief engendered by D’s misrepresentation; and

(3)  The other orders are consequential and should follow.

11.  Accordingly, I will make an order in terms of P’s Summons as amended by me.  P’s costs of this action, including this application, was summarily assessed by me at HK$30,000.