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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
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-------------------------------------------------------
R E A S O N S F O R D E C I S I O N
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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.
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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
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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
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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.
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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
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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.
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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.
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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.
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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
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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
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