首页 苹果诉唯冠IPAD商标案件香港法院一审判决书

苹果诉唯冠IPAD商标案件香港法院一审判决书

举报
开通vip

苹果诉唯冠IPAD商标案件香港法院一审判决书 A B C D E F G H I J K L M N O P Q R S T U V A B C D ...

苹果诉唯冠IPAD商标案件香港法院一审判决书
A B C D E F G H I J K L M N O P Q R S T U V A B C D E F G H I J K L M N O P Q R S T U V 由此 HCA739/2010 IN THE HIGH COURT OF THE HONG KONG SPECIAL ADMINISTRATIVE REGION COURT OF FIRST INSTANCE ACTION NO. 739 OF 2010 -------------------------- BETWEEN APPLE INC. 1st Plaintiff IP APPLICATION DEVELOPMENT LIMITED 2nd Plaintiff and PROVIEW INTERNATIONAL HOLDINGS LIMITED 1st Defendant (唯冠国际控股有限公司) PROVIEW ELECTRONICS CO. LTD 2nd Defendant (唯冠电子股份有限公司) PROVIEW TECHNOLOGY (SHENZHEN) CO., LTD 3rd Defendant (唯冠科技(深圳)有限公司) YANG LONG-SAN, ROWELL(楊榮山) 4th Defendant YOKE TECHNOLOGY (SHENZHEN) CO. LTD 5th Defendant (唯冠光电照明(深圳)有限公司) -------------------------- Before : Hon Poon J in Chambers Date of Hearing : 28 June 2011 Date of Decision: 28 June 2011 Date of Reasons for Decision : 14 July 2011 - 2 - A B C D E F G H I J K L M N O P Q R S T U V A B C D E F G H I J K L M N O P Q R S T U V 由此 ------------------------------------------------------- R E A S O N S F O R D E C I S I O N ------------------------------------------------------- 1. This is an application for interlocutory injunctions, which I allowed on 28 June 2011. These are the reasons for my decision. 2. The background leading to these proceedings may be summarized as follows. A. BACKGROUND A.1. The parties 3. Apple, a US company established in January 1977, is a world renowned leader in the business of designing, manufacturing and marketing of a wide variety of innovative products including computers, iPod media players, iPhones and iPads. IP Application, an English company incorporated in August 2009, is a special purpose company set up and used by Apple to acquire trademarks related to the name “iPad”. They are the plaintiffs in these proceedings. 4. The defendants come from the Proview Group. The Proview Group is a producer of display devices. Its major products include LCD monitors, CRT monitors and flat-panel digital products. It has operations and offices around the world, including Taiwan, Mainland China (Shenzhen and Wuhan), Hong Kong and Europe. Its holding company is Proview Holdings, which was incorporated in Bermuda and is listed on the Hong Kong Stock Exchange. - 3 - A B C D E F G H I J K L M N O P Q R S T U V A B C D E F G H I J K L M N O P Q R S T U V 由此 5. Yang Long San, Rowell (“Yang”), a Taiwanese, is the founder of the Proview Group. He was at all material times the chairman and chief executive officer of Proview Holdings until he was adjudicated bankrupt on 2 August 2010. Other companies of the Proview Group that feature in these proceedings are Proview Electronics, a Taiwan company, Proview Shenzhen and Yoke Technology, both being Shenzhen companies. Yang was at all material times the responsible person and director of Proview Electronics. He was also the legal representative, general manager and chairman of both Proview Shenzhen and Yoke Technology and remains so despite his bankruptcy. A.2. The disputes 6. In January 2010, Apple announced its new tablet computer branded “iPad”. It was first launched on the US market on 3 April 2010 and then in other places around the world one month later. It has since become much sought after worldwide. As at June 2010, over 1 million units had already been sold in the US market alone. Its success is phenomenal. 7. In preparation for the launch of iPads, Apple caused investigations to be conducted throughout the world to identify registered trademarks associated with the name “iPad” with a view to acquiring them. As Mr Paul Schmidt of Messrs Baker & Mackenzie (“B&M”), solicitors for Apple and IP Application explained in his second affidavit : “17. … Apple’s products are highly sought after by consumers throughout the world and the launch of every new product by Apple is eagerly awaited and the subject of much media coverage. Accordingly, in the lead up to the launch of a new product, Apple faces the dual challenges of maintaining the confidentiality of the product (including its features and - 4 - A B C D E F G H I J K L M N O P Q R S T U V A B C D E F G H I J K L M N O P Q R S T U V 由此 the name or trade mark under which it will be marketed) and ensuring that upon its launch, the product can be marketed under the name or trade mark selected for it. The latter challenge is met, inter alia, by Apple securing all requisite trade mark registrations worldwide prior to the announcement and launch of the new product. However, in order to maintain confidentiality and the anonymity of Apple, this is done through special purpose companies incorporated for the purpose for securing such requisite trade mark registrations. Based on my 16 years’ experience as a lawyer, and in particular, 7 years of experience as a trade marks lawyer, it is my experience that this practice of using special purpose vehicles to secure trade mark registrations in order to preserve the anonymity of a well known company and the confidentiality of its plans to launch a new product is a common practice throughout the world, and especially in mainland China. 18. Accordingly, in 2009, Apple carried out investigations into the use of trade marks associated with the name ‘iPad’ via its lawyers and agents… in preparation for the proposed announcement and launch of its iPad branded device in early 2010.” 8. The investigations revealed that Proview Group owned trademark registrations in eight countries or territories (“the Subject Trademarks”) including two trademark registrations in the Mainland, Registrations Nos. 1590557 and 1682310 (“the China Trademarks”). Negotiations between an agent engaged by Apple and IP Application and Proview Group’s representatives then took place between August and December 2009. Eventually, IP Application and Proview Holdings, Proview Electronics and Proview Shenzhen (“the Contracting Defendants”) entered into a written agreement in December 2009 whereby the Contracting Defendants agreed to sell, transfer and assign the Subject Trademarks to IP Application for £35,000 (“the Agreement”). 9. It is Apple and IP Application’s case that in the process of drawing up the formal written agreement (“the Written Agreement”) and - 5 - A B C D E F G H I J K L M N O P Q R S T U V A B C D E F G H I J K L M N O P Q R S T U V 由此 the assignments (“the Country Assignments”) to give effect to the Agreement, the representatives of the Contracting Defendants represented and led IP Application to believe that all the Subject Trademarks, including in particular the China Trademarks, were owned by and registered in the name of Proview Electronics. Accordingly, the Written Agreement and the Country Assignments executed on 23 December 2009 expressly stated that Proview Electronics was the proprietor of the Subject Trademarks including the China Trademarks and that Proview Electronics warranted that it was the unencumbered sole owner of the Subject Trademarks including the China Trademarks. The Country Assignment pertaining to the China Trademarks (“the China Country Assignment”) also recited that Proview Electronics was the proprietor of the China Trademarks. However, after Apple had announced the launch of iPads in January 2010, it was discovered that the China Trademarks were in fact registered in the name of Proview Shenzhen. The China Country Assignment was accordingly ineffective in assigning the China Trademarks to IP Application. 10. Apple and IP Application further complained that while acknowledging that a mistake had been made in the China Country Assignment, the Contracting Defendants refused to rectify the mistake and suggested that Apple should pay US$10 million to purchase the China Trademarks. 11. On 24 March 2010, Apple and IP Application, through B&M, issued a letter to the Contracting Defendants demanding them to transfer the China Trademarks to them. The Contracting Defendants refused to do so. - 6 - A B C D E F G H I J K L M N O P Q R S T U V A B C D E F G H I J K L M N O P Q R S T U V 由此 B. APPLICATIONS FOR INTERIM INJUNCTIVE RELIEF B.1. Events leading to the applications 12. Since early April 2010, there had been intermittent reports in the media suggesting that the Proview Group, in particular Proview Holdings and Proview Shenzhen were about to sell or dispose of the China Trademarks. When pressed by B&M, Proview Holdings and Proview Shenzhen gave an undertaking on 9 April 2010 not to sell the China Trademarks before 30 April 2010. On 29 April 2010, Proview Shenzhen, through its solicitors, gave a further undertaking not to sell or otherwise dispose of the China Trademarks until 31 May 2010 in order to facilitate further discussions for a commercial resolution of the dispute. 13. Despite the second undertaking, press reports about the possibility of Proview Holdings and Proview Shenzhen selling the China Trademarks continued to surface. In response to B&M’s demands, Proview Shenzhen, through its solicitors, reiterated on 12 May 2010 that it had no intention of selling or otherwise disposing the China Trademarks until 31 May 2010. 14. In the meantime, the fact that the Proview Group was in financial difficulties began to emerge. In fact, on 12 May 2010, the Hong Kong Stock Exchange issued a notice that trading of Proview Holdings’ shares had been suspended. Legal proceedings had been instituted against Proview Holdings, Proview Shenzhen and Yang in the Mainland seeking recovery of substantial assets. More pertinently, B&M found out that China Minsheng Banking Corporation had obtained an asset preservation order (“APO”) against Proview Shenzhen and that such asset preservation - 7 - A B C D E F G H I J K L M N O P Q R S T U V A B C D E F G H I J K L M N O P Q R S T U V 由此 order had since March 2010 been registered with the Mainland Trade Mark Office (“TMO”) over the China Trademarks. 15. Apple and IP Application immediately commenced the present action on 20 May 2010. 16. On 24 May 2010, they instituted proceedings against Proview Shenzhen in the Shenzhen Intermediate People’s Court and filed an application for APO in respect of the China Trademarks. The application was granted on 12 June 2010 but subject to the APOs obtained by some other Mainland banks. 17. Further searches revealed that contrary to its undertakings, Proview Shenzhen had in fact lodged applications with the TMO to transfer the China Trademarks to Yoke Technology on 7 May 2010. B.2. Applications 18. On 2 June 2010, Apple and IP Application applied, ex parte, for interim injunctive relief against Proview Holdings, Proview Shenzhen, Yang and Yoke Technology essentially to preserve the China Trademarks. Deputy Judge Carlson allowed the application. 19. On 3 June 2010, Apple and IP Application took out the present inter parte summons (“the Summons”), which was returned for the first hearing before Sakhrani J on 11 June 2010. - 8 - A B C D E F G H I J K L M N O P Q R S T U V A B C D E F G H I J K L M N O P Q R S T U V 由此 20. Proview Shenzhen and Yoke Technology were then absent. Sakhrani J granted the interim relief sought against them until trial or further order. 21. Proview Holdings and Yang were legally represented. After hearing arguments, Sakhrani J ordered that until the determination of the Summons, Proview Holdings be restrained from dealing in or with the China Trademarks and Yang be restrained from procuring, assisting or authorizing Proview Holdings, Proview Shenzhen and/or Yoke Technology to deal in the China Trademarks. His Lordship then gave directions for filing of evidence and adjourned the Summons for substantive hearing. C. THE PRESENT HEARING 22. The substantive hearing then came before me. 23. Yang purported to file an affirmation for and on behalf of himself and Proview Holdings on 30 July 2010. That affirmation was affirmed outside Hong Kong before a solicitor of Hong Kong. It is clearly inadmissible : see Top Flying Investment Ltd v Open Mission Assets Ltd [2006] 4 HKLRD 83, per Recorder McCoy, SC at paragraphs 30–32. B&M pointed out the deficiency to Yang’s solicitors but no attempt had been made to rectify the defect. Effectively, neither Proview Holdings nor Yang has placed any evidence before me. 24. As noted, Yang was adjudicated bankrupt on 2 August 2010. Apple and IP Application had obtained leave to proceed against him on 10 November 2010. - 9 - A B C D E F G H I J K L M N O P Q R S T U V A B C D E F G H I J K L M N O P Q R S T U V 由此 25. By letter dated 20 June 2011, Proview Holdings, through its solicitors, indicated that it would not object to the orders sought against it insofar as they relate to it. 26. What remains for my determination is the outstanding application against Yang. He is now acting in person. He did not appear at the hearing. D. DISCUSSION D.1. The applicable principles 27. They have become well established since American Cyanamid Co. v Ethicon Ltd [1975] AC 396. In brief, the plaintiff must show that : (1) there is a serious question to be tried in respect of the claim; (2) the plaintiff will suffer irreparable damage if no injunction is granted; (3) the defendant will not suffer irreparable damage if the injunction is granted; and (4) if (b) and (c) are not conclusive, on a proper consideration of the balance of convenience or balance of justice, an injunction shall be granted. These requirements are discussed in turn below. D.2. A serious question to be tried 28. The causes of action that Apple and IP Application rely on are as follows. - 10 - A B C D E F G H I J K L M N O P Q R S T U V A B C D E F G H I J K L M N O P Q R S T U V 由此 D.2.a. Breach of the Agreement by the Contracting Defendants 29. There is clearly a serious question to be tried that the Contracting Defendants have acted in breach of the Agreement in that they had wrongfully refused to honour their obligation to assign the China Trademarks to IP Application. D.2.b. Unlawful means conspiracy 30. In a claim of conspiracy, the plaintiff must prove the following elements : (1) a combination or agreement between two or more individuals; (2) an intent to injure; (3) pursuant to which combination or agreement and with that intention certain acts were carried out; (4) resulting in loss and damage to the plaintiff. See Bullen & Leake & Jacob’s Precedents of Pleadings 15th Edn, Vol. 2, at paragraph 50–01.1. 31. A combination to effect a breach of contract is an actionable conspiracy. A party to the conspiracy can liable even if he is not a party to the contract and even where it was not possible to establish that he had procured any breach of it, but where he had merely combined, with a common design, together with the parties committing the breach. See Clerk & Lindsell on Torts 20th Edn, at paragraph 24–103. 32. A company, being a separate legal person, can conspire with its directors; and the knowledge of the company may be found in a director - 11 - A B C D E F G H I J K L M N O P Q R S T U V A B C D E F G H I J K L M N O P Q R S T U V 由此 who has management or control for the transaction or act in question. See Clerk & Lindsell on Torts 20th Edn, at paragraph 24–93; Belmont Finance Corporation v Williams Furniture Ltd and others (No. 2) [1980] 1 All ER 393. 33. Here, the conduct of all the defendants demonstrate that they have combined together with the common intention of injuring Apple and IP Application by acting in breach of the Agreement. Proview Holdings, Proview Electronics and Proview Shenzhen, all clearly under Yang’s control, have refused to take any steps to ensure compliance with the Agreement so that the China Trademarks are properly assigned or transferred to IP Application. Instead, they attempted to exploit the
本文档为【苹果诉唯冠IPAD商标案件香港法院一审判决书】,请使用软件OFFICE或WPS软件打开。作品中的文字与图均可以修改和编辑, 图片更改请在作品中右键图片并更换,文字修改请直接点击文字进行修改,也可以新增和删除文档中的内容。
该文档来自用户分享,如有侵权行为请发邮件ishare@vip.sina.com联系网站客服,我们会及时删除。
[版权声明] 本站所有资料为用户分享产生,若发现您的权利被侵害,请联系客服邮件isharekefu@iask.cn,我们尽快处理。
本作品所展示的图片、画像、字体、音乐的版权可能需版权方额外授权,请谨慎使用。
网站提供的党政主题相关内容(国旗、国徽、党徽..)目的在于配合国家政策宣传,仅限个人学习分享使用,禁止用于任何广告和商用目的。
下载需要: 免费 已有0 人下载
最新资料
资料动态
专题动态
is_242079
暂无简介~
格式:pdf
大小:135KB
软件:PDF阅读器
页数:0
分类:房地产
上传时间:2012-07-17
浏览量:52