In two recent Hong Kong cases, Power Dekor (Hong Kong) Ltd v. Power Dekor Group Co Ltd [2014]1 HKLRD 845 and Exxon Mobil Corporation v. USA Exxon  Mobil Oil Limited & Others (HCA 2188/2013), Zervos J of the Hong Kong Court of First Instance re-opened the debate about shadow companies in  Hong Kong. Despite changes to the Companies Ordinance in 2010, aimed specifically at dealing with the shadow companies problem, Zervos J’s  judgments in effect expressed the view that the amendments do not adequately deal with the problem  and called for proactive measures to be taken by the Companies Registry of Hong Kong to deal with  the root of the problem.

The two cases involved similar factual and legal issues. In each case, the claimant had an  established reputation in Hong Kong, whereas the defendant was an unrelated company incorporated in  Hong Kong with a name very similar to the claimant’s household brand. The defendants were typical  “shadow companies” in Hong Kong, which exhibit the following characteristics:

  • They are largely inactive companies and do not have substantial business activities in Hong Kong.
  • Their directors and shareholders typically reside overseas, very often in the People’s Republic  of China.
  • They engage secretarial companies based in Hong Kong to serve as their company secretary.
  • They use the address of their company secretary as their registered office address.
  • Many of them use or are suspected of using their Hong Kong company name as a front to give  legitimacy to infringing activities taking place in the People’s Republic China or overseas.

Under the current company registration regime in Hong Kong, the Companies Registry is not required to examine a proposed company name at the time of  incorporation of the company to see if it may conflict with another person’s rights to the name (or  part of it). Unless the proposed company name is identical to an existing Hong Kong company name or  contains restricted words such as “bank” or “trust”, the Companies Registry will not raise any  objection and will approve the proposed name.

If a trade mark owner objects to a new company name that has been approved by the Companies  Registry, it is essentially left with two options: (i) to complain to the Companies Registry  (within 12 months of the incorporation of the company) on the ground that the company name adopted  by the newly incorporated company is too like the name of an existing company in Hong Kong, or (ii)  to commence civil proceedings in Hong Kong on the grounds of passing off (and possibly trade mark  infringement if the defendant company uses an identical or confusingly similar mark in the course  of trade in Hong Kong).

Prior to the amendment to the Companies Ordinance in 2010, pursuing option (ii) involved quite an  expensive and complex process. While a large  number of these lawsuits ended up with a default  judgment in favour of the claimant, the judgment would not automatically lead to a change of name  of the shadow company, given that the Companies Registry did not have a power to act upon a court  order to enforce a name change in the event that the defendant failed to comply. The only effective solution that led to an eventual change of the company name , involved joining the shareholders of  the shadow companies as parties to the proceedings and seeking an order from the court that the  claimants’ solicitors be authorised to sign a special resolutions on behalf of the shareholders to  effect a 

name change, in the event they failed to comply. These extra steps took time and incurred costs for  the claimants, especially as typically the  shareholders of shadow companies reside overseas and provide fake addresses making service of  process difficult and expensive.

As a result of joint lobbying by the IP community and the Companies Registry, changes to the  Companies Ordinance were made in 2010 in advance of the major overhaul of the Companies Ordinance  in 2014. The 2010 amendments deal with the enforcement of judgments against shadow companies when  only the company and not the shareholders also are sued. They give the Companies Registry the power it did not have prior to 2010 to act upon a Hong Kong  court order to direct a shadow company to change its company name to one not including the  objectionable name or mark. If the shadow company fails to comply, the Companies Registry will then proceed to replace the objectionable part of the company  name with its registration number. The amendment however, does not deal with the root of the  problem which is the incorporation of companies which adopt company names that incorporate a third  party’s trade mark.

Zervos J seized upon this in the two recent cases. He expressed concern over the fact that the  defendants were able to register the companies successfully with the Companies Registry despite  having names so similar to some well-known brand names or trade marks. The learned judge commented  that the unscrupulous individuals behind these shadow companies might be able to use the fact of  incorporation to pass themselves off as the claimants in their business pursuits in the People’s  Republic of China to deceive potential customers. The learned judge acknowledged the changes brought about by the Companies Ordinance amendment of 2010 but felt that the legislative provisions  do not go far enough to deal with the problem. Zervos J called for greater scrutiny in the approval  process, as well as legislative changes enabling the Companies Registry to take more effective  measures, including the power not to refuse the adoption of a company name that incorporates a  third party’s trademark or to deregister a company name that is the same as or too like another. In  Power Dekor, Zervos J directed that a copy of his judgement be referred to the Companies Registry.

Zervos J’s concerns are shared by many in the IP community and may re-open the discussion on  company name hijacking. Despite the 2010 amendment to the Companies Ordinance the problem remains.  Shadow companies continue to be incorporated in Hong Kong and brand owners have to expend time and  money to deal with the problem by commencing court proceedings in Hong Kong. While realistically it  would be difficult to see further amendments to the Companies Ordinance being made in the near  future especially given the recent overhaul of this ordinance, Zervos J’s remarks are to be  welcomed as they highlight the need to deal with the problem at source. How this can be done is  another matter – should the Companies Registry employ IP experts to vet company names or should an  objection period be set up whereby proposed company names could be published and interested third  parties could object? Any such process or proposal would take time to agree and vet but Zervos J’s  judgments highlight the fact that there is more work to be done in Hong Kong to finally solve the company name hijacking problem.