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Advanced Connection Ltd v Able Technology (Hong Kong) Ltd And Others

Judgment Cited authorities 3 Cited in 1 Precedent Map Related
Vincent
Judgment Date02 October 2019
Neutral Citation[2019] HKCA 1092
Year2019
Judgement NumberCAMP11/2019
Subject MatterMiscellaneous Proceedings
CourtCourt of Appeal (Hong Kong)
CAMP11/2019 ADVANCED CONNECTION LTD v. ABLE TECHNOLOGY (HONG KONG) LTD AND OTHERS

CAMP 11/2019

[2019] HKCA 1092

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF APPEAL

MISCELLANEOUS PROCEEDINGS NO 11OF 2019

(ON AN INTENDED APPEAL FROM HCA NO 2594 of 2013)

________________________

BETWEEN
ADVANCED CONNECTION LIMITED Plaintiff
(先進網絡有限公司)
and
ABLE TECHNOLOGY (HONG KONG) LIMITED (愛保科技(香港)有限公司) 1st Defendant
YUEN SO LAN (袁素蘭) 2nd Defendant
KWOK HON CHEONG EINSTEIN (郭漢昌) (also known as CHUNG WAI YIN) 3rd Defendant

________________________

Before: Hon Chu and Au JJA in Court
Date of Judgment: 2 October 2019

_________________

JUDGMENT

_________________

Hon Chu JA (giving the Judgment of the Court of Appeal):

1. This is the 2nd defendant’s renewed application for leave to appeal against the Judgment of P Ng J (“the Judge”) given on 9 November 2018 dismissing her appeal against the decision of Master KW Wong joining her and the 3rd defendant to the action below.

2. Having considered the papers filed in this application and the 2nd defendant’s written statement and the plaintiff’s written submission, we consider it is appropriate to determine the application on paper without an oral hearing pursuant to Order 59 rule 2A(5)(a) of the Rules of the High Court, Cap. 4A.

Background

3. The plaintiff is a company incorporated in Hong Kong in 1999 specializing in the business of telecommunication services by reference to the mark “Accessyou”. It is the registrant of the internet domain name “accessyou.com”.

4. The 1st defendant is a company incorporated in Hong Kong in 2008 and carries on business, inter alia, as a telecommunication operator providing messaging service in Hong Kong. It is the registrant of the internet domain name “ablesms.com”.

5. The 3rd defendant was and is the sole director and shareholder of the 1st defendant, as well as its managing director. It is the plaintiff’s case that he is involved in managing the business and operation of the 1st defendant.

6. The 2nd defendant is the wife of the 3rd defendant and the sole director of a company called Commerce One Limited, the registered address of which was next door to that of the 1st defendant.

7. The plaintiff commenced the action below against the 1st defendant claiming damages and other relief for infringement of trademark and passing off. The infringing acts complained of include: (1) on 12 August 2011, the 1st defendant registered the internet domain name of “accessyou.co”, which was automatically linked to its website “www.ablesms.com”; and (2) on 29 October 2012, the 1st defendant registered the trademark “ABLESMS” in Hong Kong in Classes 38 and 42 in respect of, inter alia, telecommunication services relating to the provision of access to a platform for customers to deliver SMS online.

The plaintiff’s application

8. By summons filed on 10 October 2017 (as amended on 7 February 2018), the plaintiff applied under Order 15 rule 6(2)(b) of the Rules of the High Court to add the 2nd and 3rd defendants.

9. The plaintiff’s case for joinder of the 2nd defendant is that: (1) the 2nd defendant, either on her own volition or at the direction of the 1st and/or 3rd defendants, purchased the domain name “ablesms.com” and the tradenames of “ABLESMS” and “AbleSMS” for and on behalf of the 1st defendant from GoDaddy.com LLC; and (2) the 2nd defendant has acted in concert with the other defendants to further the common design in relation to the infringing acts complained of by the plaintiff in the action.

10. The relief sought by the plaintiff in the action includes: (1) a declaration that the 1st defendant’s trade mark registration is invalid and shall be removed from the Trade Marks Registry; (2) an injunction restraining the defendants from: (a) passing off the plaintiff’s telecommunication business by reference to domain which is not the domain of, or associated with, the plaintiff, and (b) using and/or dealing in or with any domain names and/or websites “accessyou.co” and “www.accessyou.co”; and (c) damages or an account of profits.

11. The 2nd and 3rd defendants deny any involvement in the infringing acts of the 1st defendant complained of. The 2nd defendant’s case is that she has never been involved in the management and operation of the 1st defendant, and she merely let the 1st defendant use her credit card to purchase the “ablesms.com” domain name because neither the 1st nor the 3rd defendant had a credit card.

12. On 28 February 2018, Master KW Wong granted the application. The 1st to 3rd defendants appealed the decision.

The Judge’s decision

13. By his judgment handed down on 9 November 2018[1], the Judge dismissed the 1st to 3rd defendants’ appeal.

14. The Judge’s deliberation is set out in [16] to [27] of the judgment. After referring to Order 15 rule 6(2)(b), the Judge discussed the relevant test and approach to a joinder of party application at [17] to [22] as follows:

“17. Prima facie, a Plaintiff is entitled to choose the person against whom it wishes to proceed: Hong Kong Civil Procedure 2018 Vol 1 para 15/6/6.

18. The purpose of joinder is to bring all parties to disputes relating to one subject‑matter before the Court at the same time so that the disputes may be determined without the delay, inconvenience and expense of separate actions and trials: Byrne v Brown (1889) 22 QBD 657. The rule should be construed liberally so as to ensure that, as far as possible, all matters in dispute between the parties are completely and finally determined, and all multiplicity of legal proceedings with respect to any of those matters is avoided: Lin Man Yuan v Kin Ming Holdings International Ltd [2012] 3 HKLRD 550.

19. The test to apply in a joinder application is whether there is a bona fide claim and a proper question to be tried as between the plaintiff and the intended defendant that is necessary or just and convenient for resolution between them as well as between the plaintiff and the defendant in the proceedings. At this stage, there is no requirement for an applicant to show merits of his case under this rule: Wong Shan Shan v The Incorporated Owners of Yue Wah Mansion unrep, HCA 1086 of 2013, 28 January 2015, DHCJ Kent Yee; Wong To Yick Wood Lock Ointment Ltd v Merika Medicine Factory Ltd & Anr unrep, HCA 562 of 2014, 10 March 2017, DHCJ A Lee.

20. In Pang Kwok Lam v Schneider Electric Asia Pacific Ltd unrep, HCPI 90 of 2010, 5 January 2011, at [72] and [73] Master Marlene Ng (as she then was) commented:

“72. In my view, given the objectives of Order 15 rule 6(2)(b) of the RHC outlined above, the court’s power to join parties is a generous one, and the court’s attitude is permissive although it must still ensure that the joinder is necessary and/or just having regard to the statutory criteria. According to Hong Kong Civil Procedure 2011 Vol 1 para 15/6/1 at pp 285‑286, ‘[the] power given by the rule is, however, widely exercised … though the addition of new parties may cause new expense and necessitate new evidence … But, generally speaking, the court will make all such changes in respect of parties as may be necessary to enable an effectual adjudication to be made concerning all matters in dispute … The court will not, however, decide questions of right on applications under the rule …’

73. I am persuaded that the relevant approach to be adopted is whether there is a bona fide claim and a proper question to be...

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    • Court of Appeal (Hong Kong)
    • 8 Octubre 2021
    ...Wing v Yip Hoi Ching & Anor，未經彙編，CACV 362/2008，2009年6月29日和Advanced Connection Limited v Able Technology (Hong Kong) Limited & Ors [2019] HKCA 1092。 26. 本庭認為根據女方提交的證據，她的申請符合上述兩項規則的條件。她提出的爭議，即男方是否FTCL/RTDL...

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