GERMAN POOL GROUP CO LTD AND OTHERS v. DYSON TECHNOLOGY LTD AND ANOTHER

HCIP 53/2019

[2026] HKCFI 2297

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

INTELLECTUAL PROPERTY PROCEEDINGS NO 53 OF 2019

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D E C I S I O N

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Introduction

1.  This court handed down the decision dated 29 December 2025 (“the Discovery Decision”) for the disposal of the summons taken out by the plaintiffs for their application for specific discovery dated 21 January 2025 (“the Discovery Summons”).

2.  In the Discovery Decision, I invite the parties to make submissions on costs and indicate that the costs issue will be determined by paper disposal. Accordingly, Mr Hui, not appearing at the substantive hearing of the Discovery Summons (“the Hearing”), with Mr Tse, filed written submissions for German Pool and Mr Lok together with Mr Liu filed theirs for Dyson.

3.  In this decision, I shall adopt the abbreviations used in the Discovery Decision. I shall not repeat the background facts of this action narrated in the Discovery Decision here.

4.  Mr Hui helpfully gives a summary of the outcome of the Discovery Summons. First, by the Discovery Summons, German Pool asked for discovery of 21 classes of documents.

5.  The parties were able to reach some agreements on the day of the Hearing. Dyson agreed to provide 5 classes of documents within a narrower scope and German Pool withdrew its request for 12 classes of documents. What remained controversial were Requests 1,2,4 and 17 documents.    

6.  In the Discovery Decision, this court allowed German Pool’s application in respect of Requests 2 and 17 documents and refused discovery of Requests 1 and 4 documents.

7.  In the correspondence exchanged between the parties, German Pool agreed that the costs of the Discovery Summons should be costs in the cause. Dyson disagreed and contended that they should be entitled to 80% of the costs of the Discovery Summons.

8.  In their respective written submissions, Mr Hui contends that German Pool should be allowed 43%/50% of the Summons whereas Mr Lok maintains Dyson’s unchanged position: 80% of the costs of and occasioned by the Summons, including all reserved costs, with certificate for one counsel, to be taxed if not agreed.

Reasons for parties’ respective positions

9.  The parties’ respective arguments can be summarized as follows.

10.  Mr Hui submits that the paramount consideration is that German Pool was required to come to court so as to obtain an order for discovery albeit with a much narrower scope of documents. He stresses that a court does not grant costs against a resisting party or make a no order as to costs order merely because certain requests has been refused. He relies on Ho Yuen Ki Winnie and Anor. v Hong Hung Sun Stanley and Anor. (unreported, HCA 391/2006, 4.11.2009) per A Cheung J (as Cheung CJ then was) at§6.

11.  Mr Hui goes on to divide the 21 requests of documents into the following 7 distinct categories:

(1)  Internal documents regarding press release and 3 June email (Requests 1, 5, 6, 9(2), 11 and 16);

(2)  Internal documents regarding Dyson’s strategy and campaign (Requests 2, 3, 9(1), 12 and 13);

(3)  Sales data of Dyson’s bladeless fans (Request 4);

(4)  Written communications/Internal documents regarding publication of articles (Requests 7 and 8);

(5)  Litigation documents regarding Dyson’s patent litigation strategy (Requests 14, 15, 20 and 21);

(6)  Internal documents regarding prior arts (Requests 17, 18 and 19); and

(7)  Alleged advice (Request 10).

12.  Mr Hui points out that German Pool succeeded in Categories 2, 4 and 6. On that basis, German Pool should be entitled to 3/7, namely, 43% of its costs of and occasioned by the Discovery Summons, including all costs reserved, with a certificate for two counsel, to be taxed if not agreed.                                                                                        

13.  To save time and costs, German Pool also accepts that costs be in the cause.

14.  On the other hand, Mr Lok draws my attention to a document of German Pool entitled “Scope of Dispute” (“the Note”) made available to Dyson and the court shortly before the Hearing. In the Note, German Pool confirmed that (1) they would not pursue Requests 5, 6, 10, 11, 13, 14, 15, 16, 18, 19, 20 and 21 (12/21 Requests) (“Not Pursued Requests”) , (2) they would agree to dispose of Requests 3, 7, 8, 9 and 12 per various revised formulations (5/21 Requests) (“Agreed Disposal Requests”) and they would insist to apply to the court regarding Requests 1, 2, 4 and 17 (4/21 Requests) (“Contested Requests”).

15.  Mr Lok urges this court to adopt the approach in Wong Hon Wai v The Secretary of Justice (for and on behalf of the Government of Hong Kong SAR) (unreported, HCPI 664/2009, 24.2.2011) per Master Marlene Ng (as she then was) in which the learned master held that costs should follow the “respective events” with reference to individual requests for different and distinct classes of documents.

16.  Mr Lok submits that for the Not Pursued Requests and Agreed Disposal Requests, Dyson is the effective winner and should be entitled to costs in regard to these Requests.

17.  For the Contested Requests, each of German Pool and Dyson was successful in half of them and hence by way of a set-off, there should be no order as to costs in respect of these Requests.

18.  Mr Lok then submits that Dyson should be entitled to 80% (12+5/21) of the costs.

Analysis

19.  The starting point is that but for the Discovery Summons, Ps would not have obtained discovery of certain documents, which D eventually accepts to be discoverable or which this court has ruled to be discoverable.

20.  Ps should be able to recover such costs incurred for the purpose of obtaining disclosure of those documents. Mr Hui fairly does not ask for recovery of all costs of the Discovery Summons.

21.  My view is that had Ps formulated their requests properly and merely asked for those discoverable documents, the parties could have saved a large portion of the legal costs expended. Ps should be ordered to pay D such costs incurred by Ps’ invalid requests. Such costs should include costs incurred arising from the Not Pursued Requests and the re-formulation of the Agreed Disposal Requests by D.

22.  P’s concession in regard to the Not Pursued Requests and the Agreed Disposal Requests came far too late. Though these matters were not argued in court, there is no doubt that legal costs had already been incurred including the involvement of counsel.  

23.  Ideally, there should be a set-off. My inclination is that Ps should recover some costs for their Agreed Disposal Requests and the two Requests which were accepted by this court to be set off by all other unnecessarily incurred costs arising from the Not Pursued Requests, the reformulation of the Agreed Disposal Requests and the two Requests rejected by this court.

24.  There is plainly inadequate evidence for a reasonable computation of such costs to be set-off, nevertheless. I am not in a position to find a fair and accurate set-off.

25.  On the other hand, I do not find Mr Hui’s categorisation of the Requests to be helpful and relevant. The sheer number of the Requests is not indicative of how much legal costs have actually incurred unnecessarily.

26.  The proposed costs orders of the parties are not attractive to this court. I am not convinced that any of them takes care of any set-off.

27.  Nor am I persuaded that the alternative position of Ps is acceptable. This action is for the assessment of damages and I am not sure how costs can be in the cause. If Ps would be entitled to all the costs of the Discovery Summons in the event that Ps could recover minimal amount of damages, or even nominal damages, it would be grossly unfair.

Conclusion and orders

28.  Looking at this matter in the round, I believe that the fairest order is that each party bears its own costs of and occasioned by the Discovery Summons including all costs reserved. I so order.

29.  Last but not least, I thank Mr Hui, Mr Tse, Mr Lok and Mr Liu for their helpful assistance in this matter.