WONG TO YICK WOOD LOCK OINTMENT LTD v. KIN LAM MEDICINE CO LTD AND OTHERS

HCMP 2472/2016

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO 2472 OF 2016

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J U D G M E M T

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1.  By the Amended Originating Summons herein dated 23 January 2017, the applicant seeks an order that the 1^st, 2^nd, 3^rd and 4^th respondents each be committed to prison or fined for their joint and/or several contempt of court in failing, refusing and/or neglecting to comply with the court’s judgments more particularly described below.

2.  The 1^st, 2^nd and 3^rd respondents are each a company incorporated in Hong Kong, and the 4^th defendant was at all material times and is a director of each of them.

3.  On 16 September 2015, the court gave judgment (“the 1^st Judgment”) for the applicant against the 1^st, 2^nd and 3^rd respondents in HCA 2585/2014:-

(1) prohibiting each of them, whether acting by themselves, their directors, officers, servants or agents, or any of them or otherwise howsoever, from committing acts of passing off, in particular, using “黃道活絡油” and/or “Wong Do Lo Ye” or any other names which are confusingly similar thereto or the get-ups at Annex B of the Statement of Claim (“the Statement of Claim”) in that action or any other get-ups which are confusingly similar thereto (paragraph 1(b));

(2) requiring each of them to deliver up the Offending Items (as defined in paragraph 2 of the judgment) within 14 days of the service of the judgment on it, and verify upon oath that it has fully complied with the order for delivery up within 21 days of the service of the judgment on it (paragraphs 2 and 3); and

(3) requiring a director to provide discovery upon oath within 21 days of the service of the judgment on it (paragraph 4).

4.  Also on 16 September 2015, the court gave judgment (“the 2^nd Judgment”) for the applicant against the 4^th respondent in HCA 2585/2014:-

(1) prohibiting him, whether acting by himself, his servants, agents or any of them or otherwise howsoever, from committing acts of passing off, in particular, using “黃道活絡油” and/or “Wong Do Lo Ye” or any other names which are confusingly similar thereto or the get-ups at Annex B of the Statement of Claim in that action or any other get-ups which are confusingly similar thereto (paragraph 1(b));

(2) prohibiting him from authorizing, assisting, counselling, instigating, inciting, procuring, aiding, abetting, directing, causing, or enabling others to commit any of the acts in (1) above or acting in concert with others in furtherance of any such acts pursuant to a common design (paragraph 1(c));

(3) requiring him, at his own cost and expense, to execute and file all necessary documents and forms with the Trade Mark Registry to withdraw the trade mark applications No 302872918 and No 302869534 within 14 days of the service of the judgment on him (paragraph 2);

(4) requiring him to deliver up the Offending Items (as defined in paragraph 3 of the judgment) within 14 days of the service of the judgment on him, and verify upon oath that he has fully complied with the order for delivery up within 21 days of the service of the judgment on him (paragraphs 3 and 4); and

(5) requiring him to provide discovery upon oath within 21 days of the service of the judgment on him (paragraph 5).

5.  The 1^st Judgment, duly endorsed with a penal notice, was served on the 1^st, 2^nd and 3^rd respondents at their registered office at Room B1, 8/F, Hung Tuk Factory Building, 60 Hung To Road, Kwun Tong on 25 September 2015.

6.  The 1^st Judgment (duly endorsed with a penal notice against the 4^th respondent as director of the 1^st, 2^nd and 3^rd respondents), and the 2^nd Judgment (duly endorsed with a penal notice against the 4^th defendant), were served on the 4^th respondent personally outside Hung Tuk Factory Building on 15 March 2016.

7.  Notwithstanding the matters aforesaid:-

(1) the 1^st, 2^nd and 3^rd respondents each failed to comply with paragraphs 2, 3 and 4 of the 1^st Judgment; and

(2) the 4^th respondent failed to comply with paragraphs 2, 3, 4 and 5 of the 2^nd Judgment.

8.  The evidence before the court also establishes that:-

(1) On 11 May 2016, a medicated balm in a packaging which (i) bore the name of the 3^rd respondent, (ii) bore the words “黃道活絡油” and “Wong Do Lo Ye”, and (iii) was confusingly similar to the packaging at Annex B of the Statement of Claim was being offered for sale and sold in a retail shop in Hong Kong.

(2) On 11 November 2016, the 1^st respondent exhibited for sale on its website a medicated balm in a packaging which (i) bore the name of the 3^rd respondent, (ii) bore the words “Wong Do Lo Ye”, and (iii) was confusingly similar to the packaging at Annex B of the Statement of Claim.

(3) On 16 November 2016, the 2^nd respondent, through its managing director (the 4^th respondent), offered for sale or supply a medicated balm which (i) bore the name of the 3^rd respondent, (ii) bore the words “Wong Do Lo Ye”, and (iii) was confusingly similar to the packaging at Annex B of the Statement of Claim.

9.  By reason of the aforesaid matters:-

(1) the 1^st, 2^nd and 3^rd respondents each acted in breach of paragraph 1(b) of the 1^st Judgment;

(2) the 4^th respondent acted in breach of paragraphs 1(b) and (c) of the 2^nd Judgment; and

(3) the 4^th respondent is further liable under Order 45, rule 5(1)(b)(iii) of the Rules of the High Court, Cap 4A, for failing to ensure that the 1^st, 2^nd and 3^rd respondents complied with the 1^st Judgment.

10.  I am satisfied beyond reasonable doubt that each of the 1^st, 2^nd and 3^rd respondents had proper notice of the 1^st Judgment but wilfully failed to comply with the judgment with knowledge of its contents.  Each of them is therefore in contempt of court.

11.  I am also satisfied beyond reasonable doubt that the 4^th respondent had proper notice of the 1^st and 2^nd Judgments but wilfully failed to (i) take reasonable steps to ensure that the 1^st, 2^nd and 3^rd respondents complied with the 1^st Judgment, and (ii) comply with the 2^nd Judgment, with knowledge of their contents.  He is therefore in contempt of court.

12.  The respondents did not appear this morning.  None of them has offered any explanation for its or his failure to comply with the 1^st and/or 2^nd Judgments, or any facts or matters in mitigation.

13.  The breaches of the 1^st and 2^nd Judgments by the 4^th respondent are particularly serious, in that the 4^th respondent appears to have been engaged in a significant commercial operation over a substantial period of time involving the passing off of products as and for the products of the applicant, with full knowledge that he is prohibited from so doing by judgments of the court.

14.  In all the circumstances, I make the following orders:

(1) the 1^st to 3^rd respondents each be fined HK$80,000;

(2) the 4^th respondent be committed to prison for a period of 4 months; and

(3) the respondents do pay to the applicant the costs of and occasioned by this application, to be taxed if not agreed on an indemnity basis.