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

Judgment Cited authorities 6 Cited in 2 Precedent Map Related
Vincent
Judgment Date09 November 2018
Neutral Citation[2018] HKCFI 2465
Year2018
Judgement NumberHCA2594/2013
Subject MatterCivil Action
CourtCourt of First Instance (Hong Kong)
HCA2594/2013 ADVANCED CONNECTION LTD v. ABLE TECHNOLOGY (HONG KONG) LTD AND OTHERS

HCA 2594/2013

[2018] HKCFI 2465

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO 2594 OF 2013

________________________

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

________________________

Before: Hon Ng J in Chambers
Date of Hearing: 20 June 2018
Date of Judgment: 9 November 2018

__________________

J U D G M E N T

__________________

Introduction

1. On 28 February 2018, Master KW Wong granted leave to the Plaintiff to amend the Writ of Summons herein by adding Yuen So Lan 袁素蘭 as the 2nd Defendant (“Yuen”) and Kwok Hon Cheong Einstein 郭漢昌 (also known as Chung Wai Yin) as the 3rd Defendant (“Kwok”) as well as leave to re‑amend the Amended Statement of Claim herein to plead its case against Yuen and Kwok.

2. This is the 1st to 3rd Defendants’ appeal against the learned Master’s decision.

The parties’ case

3. The Plaintiff’s case, as pleaded in the Re‑amended Statement of Claim, can be summarized as follows.

4. The 1st Defendant is a company incorporated in Hong Kong and carries on business as a telecommunication operator providing, inter alia, messaging services in Hong Kong. Kwok was and is the sole director and shareholder of the 1st Defendant, as well as its managing director, and directly involved in managing its business, operation and affairs, including the infringing acts complained of below. The 1st Defendant has at all material times been the registrant of the internet domain name “ablesms.com”.

5. Yuen is the wife of Kwok and was at all material times the sole director of Commerce One Limited (“Commerce One”), a Hong Kong company with its registered address right next door to that of the 1st Defendant.

6. The Plaintiff is a famous company specialising in the business of telecommunication services by reference to the mark “Accessyou” (“Plaintiff’s Mark”) since 1999. The Plaintiff’s Mark has been used as a trademark to denote services provided by the Plaintiff since at least 1999. The Plaintiff’s Mark has come to be well‑known to the public in Hong Kong and a substantial reputation exists in it. The Plaintiff has at all material times been the registrant of the internet domain name “accessyou.com” (“Plaintiff’s Domain Name”). Since 1999, the Plaintiff has begun marketing efforts to promote its business of telecommunication services by reference to the Plaintiff’s Mark as well as the Plaintiff’s Domain Name in Hong Kong.

7. On 12 August 2011, the Defendants registered the internet domain name of “accessyou.co” (“Infringing Domain Name”). Subsequently, the Infringing Domain Name was automatically linked to its website “www.ablesms.com”.

8. In or about September 2012, Yuen either on her own volition or at the direction of the 1st Defendant and/or Kwok purchased the domain name “ablesms.com” and the tradenames “ABLESMS” and “AbleSMS” for and on behalf of the 1st Defendant from GoDaddy.com LLC.

9. On 29 October 2012, the Defendants registered the trademark “ABLESMS” in Clauses 38 and 42 of the Hong Kong Trade Marks Registry under registration no. 302417526 (“Defendants’ Registered Trademark”) in respect of inter alia telecommunication services relating to the provision of access to a platform for customers to deliver short message service (“SMS”) online.

10. The Defendants have passed off and/or attempted to pass off in Hong Kong telecommunication services as and for the services of the Plaintiff and/or provided under licence from the Plaintiff and/or associated with the Plaintiff.

11. In addition, the Defendants have, since the date of registration of the Infringing Domain Name, passed off the Plaintiff’s business by using in Hong Kong in relation to telecommunication services for which the Infringing Domain Name is identical and/or similar to the Plaintiff’s Domain Name, by reason whereof the public has been misled.

12. Yuen and Kwok have each acted in concert with the other Defendants to further the common design in relation to the infringing acts complained of in this action. They are also jointly and severally liable for all the infringing acts of the other Defendants complained of in this action.

13. In the prayer for relief, the Plaintiff claims for inter alia:

(1) A declaration that the 1st Defendant’s trade mark registration no. 302417526 is invalid and shall be removed from the Trade Marks Registry.

(2) An injunction to restrain the Defendants from doing the following acts:

(a) passing off, and/or attempting to pass off the Plaintiff’s telecommunication business by reference to the domain not the domain of or associated with the Plaintiff;

(b) using and/or dealing in or with any domains and/or websites under or by reference to the domain names and/or websites “accessyou.co” and “www.accessyou.co”.

(3) Damages or an account of profits.

14. As stated in their counsel’s skeleton submissions, Yuen’s and Kwok’s case is that:

(1) The 1st Defendant ceased redirecting “accessyou.co” to its website on 24 February 2014 and its registration for the domain name “accessyou.co” lapsed on 11 August 2014.

(2) Yuen has never been involved in any way in the management and operations of the 1st Defendant — she is neither a director, shareholder nor employee of the 1st Defendant. She had no involvement with any of the matters pleaded in this action.

(3) On 13 September 2012, the 1st Defendant purchased the domain name “ablesms.com” comprising its mark “ABLESMS”. The “ablesms.com” domain name was purchased by the 1st Defendant online from the well‑known domain name registrar GoDaddy, and was paid for using Yuen’s Mastercard.

(4) At the time of purchase of the “ablesms.com” domain name, neither the 1st Defendant nor Kwok owned a credit card so Yuen was asked to provide her credit card information for payment. She did not know the purpose of such purchase or its subject matter as the payment was handled solely by the 1st Defendant.

(5) While Kwok...

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2 cases
  • Advanced Connection Ltd v Able Technology (Hong Kong) Ltd And Others
    • Hong Kong
    • Court of Appeal (Hong Kong)
    • 2 Octubre 2019
    ...Clark instructed by Benny Kong & Tsai for the plaintiff. Mr Sebastian Hughes instructed by Huen & Partners for the 2nd defendant. [1] [2018] HKCFI 2465 [2] See Practice Direction 14.3, paragraph ...
  • Man Loy Hei v The Personal Representative Of Man Cheuk Hi, Deceased
    • Hong Kong
    • District Court (Hong Kong)
    • 27 Agosto 2021
    ...(emphasis added) 17. In applying the test, Hon Peter Ng J in Advanced Connection Ltd v Able Technology (Hong Kong) Ltd and Others [2018] HKCFI 2465 stated the “22. Mr Clark, for the Plaintiff, submits that on a joinder application, the burden is therefore on the parties opposing to establis......

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