Misrepresentation of ruling will not affect pending decision

Hong Kong

In Yakult Honsha Co Ltd v Yakudo Group Holdings Ltd ([2003] 1 HKLRD 391), the Hong Kong High Court has rejected the plaintiff's application for an injunction restraining the defendant from misrepresenting in Taiwan the contents or effects of an earlier ruling relating to a passing-off action, which is still pending. The court found that the misrepresentation will not affect the pending decision.

Yakult Honsha, a Japanese company, produces and distributes a yogurt drink under the marks YAKULT and YANG-LE-DUO. Yakudo Group, a Chinese company which also produces a yogurt drink, applied to be listed on the Hong Kong Stock Exchange under a name incorporating the word 'yakudo' (the Japanese pronunciation of yakult) and the mark YANG-LE-DUO. Yakult sued for passing-off.

The court granted an interlocutory injunction in August 2002 restraining Yakudo from seeking to be listed on the Hong Kong Stock Exchange or conducting business in Hong Kong under a name incorporating yakudo or YANG-LE-DUO.

Yakudo subsequently issued a notice in Taiwan stating that the court had ruled that Yakult's claims were invalid. As Yakudo refused to publish a correction statement, Yakult applied to the Hong Kong court for a further injunction to restrain Yakudo from misrepresenting the contents or effects of the August ruling.

The court rejected Yakult's application, finding that there is no real risk that the administration of justice will be prejudiced by Yakudo's misrepresentation in Taiwan of the August ruling since the pending passing-off issue is to be tried by a Hong Kong judge alone. However, the court (i) allowed the general publication of this most recent decision to prevent its misrepresentation, and (ii) advised that Yakult apply for an interlocutory injunction in Taiwan if it considers that Yakudo's misrepresentation is damaging its reputation there.

For a discussion of the August 2002 ruling, see Yakult likely to prevail in Hong Kong but not in China.

Chi Keung Kwong, Sit Fung Kwong & Shum, Hong Kong

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