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HCA 2231/2013
IN THE HIGH COURT OF THE
HONG KONG SPECIAL ADMINISTRATIVE REGION
COURT OF FIRST INSTANCE
ACTION NO 2231 OF 2013
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BETWEEN
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HUGO BOSS TRADEMARK |
1st Plaintiff |
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MANAGEMENT GMBH & CO KG
HUGO BOSS AG |
2nd Plaintiff |
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HUGO BOSS HONG KONG LIMITED |
3rd Plaintiff |
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and
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THE BRITAIN BOSS INTERNATIONAL COMPANY LIMITED (英國博斯國際有限公司) |
1st Defendant |
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SUN XIAOWEN (孫曉文) |
2nd Defendant |
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| Before: Hon Zervos J in Chambers |
| Dates of Hearing: 24 October 2014 and 5 January 2015 |
| Date of Decision: 22 April 2015 |
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D E C I S I O N
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Index
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Page |
| Introduction |
2 |
| Background |
3 |
| The final judgment |
6 |
| The parties |
8 |
| The plaintiffs’ claim |
10 |
| Application to set aside |
15 |
| (a) Irregular judgment |
16 |
| (i) Evidence relating to the issue of service |
18 |
| (ii) Service on the 2nd defendant |
21 |
| (iii) Material non-disclosure |
23 |
| (iv) Absence from the jurisdiction |
26 |
| (b) Regular judgment |
28 |
| The evidence relating to the claim and defence |
30 |
| Infringement of trademarks |
45 |
| (a) The legislative provisions |
46 |
| (i) Similarity |
55 |
| (ii) Likelihood of confusion |
59 |
| Passing off |
60 |
| (a) Reputation |
61 |
| (b) Misrepresentation |
61 |
| (c) Damage |
62 |
| Findings on the merits of the defence |
67 |
| Amendment of pleadings |
69 |
| Conclusion |
71 |
Introduction
1. On 19 February 2014, I made an order entering judgment against the 1st and 2nd defendants upon their failure to serve and file a defence.[1] This decision deals with the defendants’ application to set aside the default judgment. It will address whether proper service was effected on the 2nd defendant by postal or letter box service at the address that she listed in the annual returns of the 1st defendant as her residential address which was the registered office of the 1st defendant. It will also address the distinction between setting aside a regular and irregular default judgment. It will finally address the merits of the defence advanced by the defendants in submission against an evaluation of the plaintiffs’ claim of infringement of trademarks and passing off.
Background
2. Despite the long history of disputation between the parties, this litigation first commenced when the solicitors for the plaintiffs forwarded by hand a cease and desist letter dated 25 September 2013 to the 1st defendant at its registered office, requesting the 1st defendant to cease to use the “BOSSSUNWEN”, “博斯绅威” and/or “BOSSCO” names or marks or any other names or marks similar to the 1st plaintiff’s “HUGO BOSS”, “BOSS”, and “雨果博斯” trademarks. There was no reply.[2] I note that in the company records of the 1st defendant there is listed together with the address of the registered office an email address, but it would appear that no communication with the 1st defendant was made through this medium.[3]
3. In November 2013, the plaintiffs instituted civil proceedings against the defendants with default judgment being entered against them in January 2014 as a result of their failure to defend the action.
4. The writ of summons issued on 18 November 2013[4] and the summons for default judgment issued on 8 January 2014[5] were served on the 1st defendant under cover of letter dated 19 November 2013 and 9 January 2014 respectively[6] by leaving the same at the 1st defendant’s registered address, Flat B‑1, 6th Floor Wider Industrial Building, 58 Tsun Yip Street, Kwun Tong, Kowloon, Hong Kong.
5. The writ of summons was served on the 2nd defendant under cover of letter dated 19 November 2013 by registered post and by inserting through the letter box on 19 November 2013[7] at the usual and last known address of the 2nd defendant which was the same address as that of the 1st defendant, and the summons for default judgment was served by ordinary post and by inserting through the letter box on 9 January 2014 at the same address.[8] The process server affirmed that in his opinion, the 2nd defendant would have come to have known of the writ and the summons for default judgment within seven days of inserting them in the letter box and that the letter dated 19 November 2013 together with the writ, and the letter dated 9 January 2014 together with the summons for default judgment, had not been returned to the offices of the plaintiffs’ solicitors by the Hong Kong Post Office through the dead letter post.[9]
6. There followed the statement of costs for summary assessment dated 6 February 2014 which arose from the default judgment. It was served on the 1st defendant by leaving a letter dated 6 February 2014[10] at the registered office of the 1st defendant and on the 2nd defendant by ordinary post and by leaving a letter dated 6 February 2014[11] at the usual and last known address of the 2nd defendant which was the same address as that of the 1st defendant.[12]
7. By summons dated 8 January 2014, the plaintiffs made application on 19 February 2014 for final judgment against the 1st and 2nd defendants for failure to serve a defence.[13] By this stage, no acknowledgment of service or an intention to defend had been filed by the defendants. The order for final judgment was granted.[14]
8. The 1st and 2nd defendants were each served with a sealed copy of the order and judgment of 19 February 2014 under cover of letters dated 26 February 2014, which were left at the registered office of the 1st defendant.[15]
9. As is apparent from the above, all the relevant documents in relation to both the 1st and 2nd defendants were served at the one address being the registered office of the 1st defendant. The documents were sent or served at this address over a period from 25 September 2013 to 26 February 2014.
10. It was not until 8 April 2014 that the solicitors for the 1st and 2nd defendants filed a notice to act for them in the proceedings.[16]
11. On 10 June 2014, the 1st and 2nd defendants issued a summons to set aside the judgment entered on 19 February 2014 in the case of the 1st defendant on the ground that it has a good defence to this action with a real prospect of success, and in the case of the 2nd defendant on the grounds (i) that the judgment was an irregular judgment because the writ had not been duly served on her as she was not within the jurisdiction at the relevant time; and (ii) that she has a good defence to this action with a real prospect of success.[17]
The final judgment
12. In this action the plaintiffs’ claim against the defendants is for trademark infringement and passing off. The plaintiffs seek relief in the form of an injunction restraining the defendants from infringing the registered trademarks of the 1st plaintiff or passing off, an order that the 1st defendant change its company name and transfer the changed name to the 1st plaintiff, an order that the 2nd defendant transfer domain names of specified websites to the 1st plaintiff, and an order that all articles and items used in breach of the injunction be forfeited and delivered to the 1st plaintiff.
13. As a result of the failure of the defendants to file a defence, final judgment was entered and an order was made in the following terms:
“1. The 1st defendant, whether acting by itself, its directors, officers, servants, employees, agents, representatives or associated companies or subsidiary companies or any of them or otherwise howsoever, and the 2nd defendant whether acting by herself, her servants, employees or agents or any of them or otherwise howsoever, both be permanently restrained from doing the following acts or any of them (including by means of the Internet) in Hong Kong:
(a) Passing off or attempting to pass off any business, goods or services as those of or in any way connected with the plaintiffs or any of them, 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, trademark, trade name, domain name or otherwise howsoever the names “BOSS, “博斯”, “BOSSsunwen”, “BOSS SUNWEN”, “BOSSCO”, “博斯紳威” or any other name or device identical or confusingly similar to any of them;
(b) infringing the Hong Kong registered trademarks of the 1st plaintiff; or
(c) causing, enabling or assisting others to do any of the aforesaid acts.
2. The 1st and 2nd defendant do take all necessary steps within 14 days from the date of service of this Order to change the name of the 1st defendant to a name that does not include the word “BOSS” and “博斯” or any name confusingly similar to the names “BOSS” and “博斯”, whether registered at the Business Registration Office of the Inland Revenue Department or as a company name or as a trademark or as an application for a trademark, domain name or other property, and including any entry of such name in any directory or other public record.
3. The 1st and 2nd defendants do take all necessary steps within 14 days from the date of service of this Order to transfer the , and domain names to the 1st plaintiff.
4. The 1st and 2nd defendants do within 14 days from the date of service of this Order deliver up to the plaintiffs’ solicitors and confirm upon oath or affirmation of all articles and all signboards, advertisements, circulars, notepapers, business cards, letter heads, stationary labels or other printed matter now or subsequently in the possession, custody, power or control of the defendants, the continued use or possession of which would be in breach of any of the aforesaid injunctions.
5. The 1st and 2nd defendants do forfeit to the plaintiffs of all goods and materials so delivered up.
6. There be an inquiry as to damages or,...
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