“Intellectual property” and “intellectual property rights” refer to a wide range of intangible property and rights to them, including copyright, trade marks, patents, designs, plant varieties, the layout design of integrated circuits and trade secrets, etc.

In Hong Kong, these rights are protected under the common law (in relation to, e.g. trade secrets, know-how and confidential information, and passing off) and also various statutes including the Copyright Ordinance, Prevention of Copyright Privacy Ordinance, Trade Marks Ordinance, Trade Descriptions Ordinance, Patents Ordinance, Registered Designs Ordinance, Plant Varieties Protection Ordinance and the Lay-out Design (Topography) of Integrated Circuits Ordinance.

Matters protected by intellectual property rights may be categorised as follows:

1. inventions, which are protected as registered patents, trade secrets, know-how and confidential information, etc.;
2. other proprietary interests based on creative efforts, which are protected as copyright, registered designs, layout-designs of integrated circuits, plant varieties, trade secrets, know-how and confidential information; works protected under the Copyright Ordinance include literary works, dramatic works, musical works, artistic works, sound recordings, films, broadcasts, cable programmes or typographical arrangements of published works; and
3. brands and reputation, which are protected as registered trade marks, causes of action in passing off and malicious falsehood, etc.

Patents.  An invention which is new, involves an inventive step and is industrially applicable may be patentable in Hong Kong under the Patents Ordinance. Some matters like discoveries, scientific theories and surgical treatments are not patentable. The invention is disclosed during the application process. The inventor enjoys an exclusive period for exploiting the invention by virtue of the granted patent.

Trade secrets. In Hong Kong, the common law provides rights against unauthorised use of confidential information including trade secrets (which include “know-how”). In practice, trade secrets are often contractually protected under employment contracts, manufacturing licence agreements, joint venture agreements, etc and are often used alongside non-compete clauses.

Before a patentable invention is published in the patent application process, the invention can be protected as a trade secret. If the invention becomes public domain knowledge before the filing of the application, novelty is lost and a patent application can no longer be pursued.

Even where a patent application is published or a patent is granted, the protection of trade secrets is still important. There is often associated, existing undisclosed trade secrets or new trade secrets developed on the basis of the disclosed matters, which may either become the subject matters of new patent applications or will be protected as unpatented or unpatentable know-how.

In practice, trade secrets are protected internally and externally. Internally, there can be office measures, strict control of access to trade secrets by staff or the public, etc. Externally, a company should secure contracts with appropriate confidentiality provisions, e.g. non-disclosure agreements, and take careful follow-up actions when a contract is being performed or when there are disputes between parties to a contract. For example, where there is a termination of a manufacturing licence agreement by reason of breach of the licensee and there is evidence that the licensee is planning to make unauthorised disclosure of the licensed know-how to a third party contract manufacturer, the licensor may consider applying for an interlocutory injunction against the licensee to forbid unauthorised disclosure.

Registered designs. A design that may be registered pursuant to the Registered Designs Ordinance must comprise features of shape, configuration, pattern or ornament applied to an article by an industrial process. A registered design protects the appearance of a product but not the processes that constitute its function.

Copyright. Copyright is a statutory right given by the Copyright Ordinance to forbid others from copying an original work protected by the Ordinance or doing certain related restricted acts in relation to the original work. The Copyright Ordinance provides for the following categories of copyrightable works:

• Literary Works: Works in written form, such as poems, novels, essays, letters, lyrics, product specifications, user manuals and data, etc. Literary works also include forms of arrangement of data such as tables and compilations, and also computer programs.
• Artistic Works: Graphic works such as drawings, sketches, paintings, diagrams, maps, photographs, sculptures, buildings, works of artistic craftsmanship, etc.
• Musical Works: Musical scores.
• Dramatic Works: Works intended to be performed, such as play scripts, screenplays, works of dance and mime.
• Sound Recordings: Recordings of sounds regardless of the medium and format of storage, e.g. MP3 files, CDs. gramophone records, tapes, etc.
• Films: Recordings of moving images regardless of medium and format of storage, e.g. tapes, MP4 files, DVDs, VCDs, etc.
• Broadcasts: Wireless transmissions of sounds and/or visual images,g. TV broadcasts and radio broadcasts.
• Cable Programmes: Items included in a service via cable, e.g. cable TV programmes.
• Typographical arrangements of published editions.
• Layouts and typographies of published works (e.g. newspapers, books or magazines).
• Designs which are not registered under the Registered Designs Ordinance may be protected by way of copyright protection for the underlying original works (e.g. design drawings).

 Lay-out Design (Topography) of Integrated Circuits. The Layout-Design (Topography) of Integrated Circuits Ordinance protects the layout-design (topography) of integrated circuits in semiconductor chips used in computers and various types of equipment.

To qualify for protection, a layout-design (topography) must be original, and must be recorded in documentary form or incorporated into an integrated circuit. Like copyright, the layout-design (topography) of integrated circuit is protected automatically as soon as it is created; registration is not required.

A right in a layout-design (topography) of an integrated circuit is a personal property. A qualified owner has the exclusive right to reproduce or to commercially exploit his protected layout-design (topography). The owner may bring civil actions for infringement of the exclusive rights.

Trade marks. A mark (be it a word mark, logo, colour, smell or even the shape of a product) may be registered as a trade mark if it is capable of distinguishing the goods or services of the mark user from those of others. It must also be capable of being represented graphically on the register.

A trade mark registration in Hong Kong provides the exclusive right to use the trade mark in relation to the goods and services for which the mark is registered. If others use the mark in Hong Kong in relation to the same or similar goods or services without the owner’s consent, they may be liable for infringement of the registered trade mark action.

Certification marks and collective marks do not have the same function as ordinary trade marks but instead provide an indication of standards, quality or identity. They may also be registered under the Trade Marks Ordinance. A certification mark is a sign indicating that the goods or services in connection with which it is used are certified by the owner of the sign in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics. A collective mark is a sign that distinguishes the goods or services of members of an association from those of other organisations.

Plant Varieties. The Plant Varieties Protection Ordinance provides plant breeders with the right to obtain statutory proprietary rights in plant varieties they have bred. A grantee of a plant variety rights has the exclusive rights to (i) produce reproductive material of the protected variety for the purposes of commercial marketing; (ii) sell or offer for sale reproductive material of the protected variety; (iii) export or import reproductive material of the protected variety; and (iv) grant a licence to others to carry out the above activities.

Passing off. Passing off is a common law cause of action. It protects goodwill created by the use of trade marks, product getups, shop front designs etc in relation to goods or services. A misrepresentation that causes or is likely to cause the public to believe the goods or services of a third party are the plaintiff’s or are related to the plaintiff (e.g. by way of a licence) constitutes actionable passing off if such misrepresentation brings or is likely to bring damage to the plaintiff.  In relation to a trade mark, the common law cause of action of passing off does not require the registration of the trade mark, and can be an additional cause of action in a claim for trade mark infringement.

Patents. In Hong Kong, patents may be registered as standard patents or short-term patents.  A standard patent has a protection term of up to 20 years. A short-term patent has a protection term of up to 8 years. Renewals upon payment of renewal fees are required to maintain the registration until the end of its full term.

Registered designs. A registered design is protected for a maximum period of 25 years. Renewals upon payment of renewal fees are required to maintain the registration until the end of its full term.

Copyright. Generally speaking, the “50-year rule” (elaborated below) applies to most copyright works. If an existing work is modified with sufficient originality, then the modified work may be protected as a new work as from the date of creation of the modified work.

Copyright in a literary, dramatic, musical or artistic work expires at the end of the period of 50 years from the end of the calendar year in which the author dies. However, if the work is computer-generated, then copyright expires at the end of the period of 50 years from the end of the calendar year in which the work was made.

Copyright in sound recordings expires at the end of the period of 50 years from the end of the calendar year in which it is made, or, if during that period it is released, 50 years from the end of the calendar year in which it is released,  but note that in determining whether a sound recording has been released, no account is to be taken of any unauthorized act.

Copyright in a film expires at the end of the period of 50 years from the end of the calendar year in which the death occurs of the last to die of the principal director, the author of the screenplay, the author of the dialogue, or the composer of music specially created for and used in the film. If during that period the film is made available to the public, then the copyright expires at the end of the period of 50 years from the end of the calendar year in which it is first so made available. In determining whether a film has been made available to the public, no account is to be taken of any unauthorized act.

Copyright in broadcasts and cable programmes expires at the end of the period of 50 years from the end of the calendar year in which the broadcast was made or the programme was included in a cable programme service. Copyright in a repeat broadcast or cable programme expires at the same time as the copyright in the original broadcast or cable programme; and accordingly no copyright arises in respect of a repeat broadcast or cable programme which is broadcast or included in a cable programme service after the expiry of the copyright in the original broadcast or cable programme.

Copyright in the typographical arrangement of a published edition expires at the end of the period of 25 years from the end of the calendar year in which the edition was first published.

Exploitation of design derived from artistic work. Exploitation means the making by an industrial process of articles which are copies of an artistic work and the marketing of such articles in Hong Kong or elsewhere. Where there is such exploitation, the periods of copyright protection regarding exploitation of registered designs and unregistered designs are different. It is 25 years from the end of the calendar year in which such articles incorporating a registered corresponding design are first marketed, whilst the period is 15 years in the case of an unregistered design.

Lay-out design (topography) of integrated circuits. Like copyright, rights in a layout-design (topography) of an integrated circuit subsist immediately when the layout-design (topography) is created. The duration of protection does not refer to any registration, but depends on whether there has been commercial exploitation. It is 10 years after the end of the year in which it was first commercially exploited, with the qualified owner’s consent, anywhere in the world. Where a layout-design (topography) has not been commercially exploited, with the qualified owner’s consent, anywhere in the world, the term of protection is 15 years after the end of the year in which it was created.

If a layout-design (topography) has not been commercially exploited anywhere in the world, the term of the protection will end 15 years after the end of the year in which it was created.

On the other hand, if a layout-design (topography) has been commercially exploited anywhere in the world, the term of the protection will end 10 years after the end of the year in which it was first commercially exploited.

Plant varieties. A grant for any prescribed species under the Plant Varieties Protection Ordinance is in force for 25 years or any longer prescribed period. The term of grant is 20 years for non-prescribed species.

Trade secrets. A trade secret is protected as long as its confidentiality is preserved, or until it is independently discovered or invented by a third party without breach of the agreement that created the confidentiality.

Trade marks. A Hong Kong registered trade mark is initially registered for 10 years. The registration can be renewed for further periods of 10 years each upon payment of renewal fees and thereby may last indefinitely via renewals.

Generally speaking, the first owner of an intellectual property right is the one who creates the work, e.g. the inventor of a patent, the author of a book (literary work protected by copyright), the designer of a registered design. If the work is created by an employee in the course of employment, the employer is usually the first owner of the right. If the work is under a commission, the contractual terms of the commission should govern who the first owner would be; without such terms, the first owner would usually be the creator of the work.

Where there is a statutory registration scheme, the first owner of the registered intellectual property (e.g. a patent or a registered trade mark) would be the named applicant.

The owner of a plant variety (i.e. the breeder) is the first owner of a plant variety eligible to a grant under the Plant Varieties Protection Ordinance.

The first owner of a trade mark is the person who applies the mark to goods that the owner produces, or uses the mark in the sale or advertising of services that the owner performs.

Ownership is subject to challenges by anyone who claims to be the true proprietor of the intellectual property.

Patents, designs, layout-designs (topographies), plant varieties and registered trade marks are rights registered pursuant to statutes.

Patents. The inventor or the owner of an invention can apply for grant of a patent for the invention. An owner may acquire ownership of an invention by commissioning its creation in accordance with a commissioning agreement, employment agreement, or by an assignment of the ownership of the invention, etc.

If the applicant of an application for a standard patent (R) in Hong Kong is not the applicant named in the designated patent application, the applicant must file a statement and supporting documents (for example, a copy of an assignment) explaining your right to apply.

There are two types of patents in Hong Kong: (i) standard patents; and (ii) short-term patents.

The grant of a short-term patent in Hong Kong is based on a search report from one of the following searching authorities: (i) an international searching authority appointed under Article 16 of the Patent Cooperation Treaty; (ii) the China National Intellectual Property Administration; (iii) the European Patent Office; and (iv) the United Kingdom Intellectual Property Office.

No substantive examination is conducted for applications for short-term patents in Hong Kong. The Hong Kong Patents Registry only conducts a formality examination for applications for short-term patents (i.e. an examination of the information required in the application form and the supporting documents).

An application for a standard patent can be made via either (i) the “original grant patent” route directly in Hong Kong for a standard patent (“standard patent (O)”); or (ii) the “re-registration” route for a standard patent (“standard patent (R)”) on the basis of a corresponding patent application for the same invention previously filed with a designated patent office outside Hong Kong.

For a standard patent (O) application, if the invention has been disclosed and the applicant claims that the disclosure does not prejudice the invention’s novelty, the standard patent (O) application must be filed in Hong Kong within 6 months of the disclosure. If the applicant wishes to claim priority from a first application in a Paris Convention country or World Trade Organization member, the application must be filed in Hong Kong within 12 months of filing the first application.

After the filing of a standard patent (O) application, there will be (i) examination on formal requirements of application; (ii) publication of the application; and then (iii) substantive examination of the application.  The applicant must file a request for substantive examination within 3 years of the filing date or the earliest date of priority claimed (if applicable). The substantive examination mainly assesses the patentability of the invention. If the application is considered to be unfit for a grant of patent, the Registrar of Patents will issue an examination notice to the applicant. The applicant may respond to the examination notice within 4 months by filing a written representation and/or a request to amend the application. There will then a further examination notice. The applicant may, within 4 months elaborate, revise or clarify the response if required by the notice. If the Registrar of Patents, upon considering the response(s) to the examination notice(s) and/or any further examination notice(s), still considers that the application does not comply with the examination requirement(s), a provisional decision of refusal will be made. The applicant may file a request to review the provisional decision of refusal within 2 months by filing a written representation and/or a request to amend the application. If the Registrar of Patents maintains the view that the application does not comply with the examination requirement(s) in question, a review opinion to that effect will be issued. The applicant may file a written representation in response, a request to amend the application and/or a request for hearing (if the Registrar of Patents has offered the opportunity to be heard) within 2 months. If the Registrar of Patents still takes the view that the relevant requirements are not met, he may issue one or more further review opinion(s) to that effect. The applicant may provide elaboration, revision or clarification of the earlier response, and/or requesting a hearing (if the Registrar of Patents has offered such opportunity) within 2 months.

If upon examination of a standard patent (O) application the Registrar of Patents considers the application to be in order, a grant will be made and the patent will be published in the Hong Kong Intellectual Property Journal, and a certificate of grant of the patent will be issued. Otherwise, the Registrar of Patents will issue a final decision of refusal to grant the patent. The decision of the Registrar of Patents is subject to the right of appeal to the court.

For a standard patent (R) application, the applicant must file a request to record in Hong Kong within 6 months after the publication of the designated patent application in the designated patent office. Examination on formal requirements of the request to record and publication of the request to record will follow. The applicant must file a request for registration and grant in Hong Kong within 6 months after publication of the request to record or the grant of the designated patent by the designated patent office, whichever is the later. If the applicant cannot proceed to request for registration and grant, the application can be maintained upon payment of the maintenance fee, and the application can be maintained before the expiry of the fifth or any succeeding year from the anniversary of the date of filing the corresponding designated patent application first occurring after the date of publishing the request to record. If there is no deficiency or the deficiencies are corrected, the designated patent will be registered and a standard patent (R) for the invention will be granted.

Registered designs. The owner of a design is entitled to apply for the registration of the design. The owner may be the designer, or may have obtained ownership by commissioning the creation of the design, or under an employment agreement or by assignment, etc.

The filing date of an application is the date used by the Designs Registry for determining the novelty of the design (unless priority is claimed). The Designs Registry examines the formalities of the application and generally does not conduct any substantive examination. However, the following types of designs are not acceptable for registration:

1. designs in respect of an article the appearance of which is not material;
2. computer programs or protected layout-designs (topographies);
3. designs that are applied to works of sculpture (other than casts or models used or intended to be used as models or patterns to be multiplied by any industrial process); wall plaques, medals and medallions; and printed matter primarily of a literary or artistic character, e.g. book jackets, calendars, certificates, dress-making patterns, greeting cards, postcards, labels, leaflets, maps, etc.;
4. a method or principle of construction;
5. features of shape or configuration of an article which are dictated solely by the function which the article has to perform;
6. features of shape or configuration of an article which are dependent upon the appearance of another article of which it is intended by the designer to form an integral part;
7. designs that consist of or contain the national flag, the national emblem, the regional flag, the regional emblem or their designs; and
8. designs that are contrary to public order or morality.

If there is no deficiency in an application and all requirements for registration are met, the application will be accepted by the Designs Registry for registration. If an application is not in order, the Designs Registry will give notice to the applicant to correct the deficiencies within three months. Failure to correct deficiencies will result in the application being deemed withdrawn.

Plant varieties. An application for a plant variety right may be filed with the Agriculture, Fisheries and Conservation Department by:

1. the person who bred or discovered and developed the variety;
2. an agent (such as a procedural representative) of that person;
3. a successor to that person; or
4. the breeder’s employer if a plant variety arose during the course of employment duties.

After an application is made to the Agriculture, Fisheries and Conservation Department, any document or instrument accompanying it or supplied subsequently, or a copy of that document or instrument certified by the Registrar to be a true copy, will be made available for inspection by the public.

Applications are handled by the Registrar of Plant Variety Rights (ie the Director of Agriculture, Fisheries and Conservation). An application must be accompanied by the quantity of reproductive material, if any, prescribed in respect of varieties of the kind concerned. The applicant must give to the Registrar (i) a description of the origin and breeding of the variety concerned; (ii) the botanical features of that variety, and those aspects of that variety that, in the opinion of that applicant, distinguish it from those other varieties whose existence was a matter of common knowledge at the time of that application; and (iii) the proposed denomination for that variety. Upon the Registrar’s request, the applicant must furnish the Registrar with such further reproductive material of the variety concerned as the Registrar may specify and any other information that the Registrar thinks relevant and requests from that applicant.

If the requirements are met, the Registrar will publish a notice of the making of the application in the Gazette and advise the applicant accordingly.

Any person who considers that the Registrar should not approve a proposed denomination notified in the Gazette may, within 3 months of its notification in the Gazette, object to the approval of that denomination by notice in writing to the Registrar, Further, any person who considers that an application has been made by or on behalf of an applicant who is not an owner of the variety concerned may, at any time before a grant is made to the applicant in respect of that variety, by notice in writing to the Registrar, object to the making of a grant in respect of that variety to the applicant. Where any person considers that an application has been made in respect of a variety that is not new, distinct, stable, and homogeneous as required by the Plant Varieties Protection Ordinance, he may, at any time before a grant is made in respect of that variety, object to the making of a grant in respect of that variety by written notice to the Registrar.

Where an objection is made, the Registrar will not make a grant in respect of the variety concerned before giving the applicant and the objector a reasonable opportunity to be heard. The applicant may withdraw the application any time before a grant is made.

Where an objection is made, the objector shall upon the Registrar’s request furnish the Registrar within 1 month after being requested by the Registrar with (i) a statement of the grounds upon which the objector makes his objection; (ii) particulars of any evidence by way of a statutory declaration in support of the objector’s objection; and (iii) any other information that the Registrar thinks relevant and requests from the objector. If the objector fails to comply with this requirement, he shall, unless the Registrar otherwise directs, be deemed to have abandoned his objection. The Registrar shall within 14 days of being furnished with the materials from the objector (i) send to the applicant concerned a copy of such matters; and (ii) send to the applicant concerned and the objector notice of a date and time when he will hear argument in the case. A decision will be made after the hearing. An appeal against the Registrar’s decision can be made to the court.

As from the day on which an application is made, the applicant has the same rights to take proceedings under the Plant Varieties Protection Ordinance as if on that day a grant had been made to the applicant in respect of the variety concerned. Such rights will be treated as never having been conferred if the application concerned is withdrawn or lapses, or the Registrar declines to make a grant in respect of that application.

Any person aggrieved by a decision of the Registrar made in respect of him to decline to make a grant may, within 28 days after being given notice of that decision by the Registrar, appeal to the Court against that decision.

Any person aggrieved by the making of a grant may, at any time, appeal to the Court against the making of that grant upon the ground that that grant was made in contravention of the Plant Varieties Protection Ordinance.

Trade marks. The proprietor of a trade mark may apply to register the trade mark. Upon receipt of a trade mark application, the Trade Marks Registry will first conduct a formality check and request the applicant to rectify all formality deficiencies. The application will then proceed to the search and examination stage – An examiner at the Trade Marks Registry will (i) conduct a search of the trade marks records to see if the same or similar trade mark has already been registered or been applied for by another trader in respect of the same or similar class of goods and services; and (ii) check if the trade mark satisfies the registration requirements prescribed by the Trade Marks Ordinance. The examiner will then issue a written opinion which either sets out the grounds for objection to registration or confirm acceptance of the trade mark for registration. If the requirements for registration are not met, the examiner will object to the mark. The applicant has 6 months in which to meet the requirements, which can be extended for 3 months. The examiner will indicate in the opinion why the mark does not meet the requirements for registration and where possible may suggest ways to over the objection. If the applicant tries to overcome the objections made in the initial opinion but the examiner still finds that the requirements for registration have not been met, the examiner will issue a further opinion.
If the applicant may, within 3 months after the date of the further opinion, try to to satisfy the registration requirements or call for a hearing. A time extension can be applied for, but only in certain circumstances specified in the Trade Marks Rules, e.g. where additional time is required for obtaining the consent of the owner of a cited earlier trade mark. If the applicant requests a hearing, all the evidence for and against the trade mark will be considered at a hearing, and a decision will be issued by a hearing officer.

Once a trade mark has been accepted for registration, it will be published in the Hong Kong Intellectual Property Journal which is a public document. Opposition to the mark may be made by a third party by filing a notice of opposition within the 3 months of the date of publication. The applicant may withdraw the application or file a counter-statement. If the applicant withdraws the application or loses in the opposition proceedings, the applicant may have to pay the opponent’s costs. The parties to the opposition may file evidence in support of the application and the opposition. With the evidence of the parties in place, a hearing will take place. The hearing officer will then make a decision. The successful party in opposition proceedings will usually be awarded costs.

Once a trade mark has been accepted for registration, the Registrar of Trade Marks will enter the details of the trade mark into the trade marks register and a certificate of registration will be issued. The registration rights retrospectively takes effect from the filing date of the application.

Please consult the filing agent on a case-by-case basis. Generally speaking, the various registries in Hong Kong are very efficient. The following are rough estimates only:

Patents – The time required depends on the application route selected and the applicant’s own filing strategy. For example, the entire examination process of a standard patent (O) application from filing to grant normally takes at least 2 to 3 years. However, the overall examination time frame can be substantially shortened if the applicant elects to file a request for early publication of the application as soon as practicable and responds promptly to examiner’s actions.

Registered designs – 1 to 2 months.

Trade marks – 4 to 6 months.

Plant varieties – 2 to 4 years.

A registration may be intervened by a third party by way of the filing of pre-grant oppositions, post-grant cancellation, invalidation and/or revocation actions. See section 5 above.

There are procedures for applicants to seek reviews in applications for registration of intellectual property rights. See section 5 above.

Please consult your filing agent on a case-by-case basis. Applicants should note that agents’ costs comprise (i) official fees, tax (VAT, but there is none in Hong Kong) and other out-of-pocket disbursements; and (ii) the agents’ professional fees. Agents often charge in 2 to 3 stages, namely (i) before or upon filing of the application; (ii) the handling of objections in the substantive examination (if any); and (iii) registration.

Patents. Short-term patents: A short-term patent is in force up to a maximum term of 8 years. A renewal fee for a further 4 years must be paid before the expiry of the 4^th year from the date of filing of the patent application.

Standard patents (O): A standard patent (O) is in force up to a maximum term of 20 years. The 1^st renewal fee is due on the 4^th anniversary of the date of filing of the patent application following the date of grant. The subsequent renewal payment falls due on every anniversary date thereafter until the expiry of the 20-year term.

Standard patents (R):  A standard patent (R) is in force up to a maximum term of 20 years. The first renewal fee is due on the 4^th anniversary of the date of filing of the designated patent application following the date of grant. The subsequent renewal payment falls due on every anniversary date thereafter until the expiry of the 20-year term.

A renewal fee can be paid up to 3 months before the renewal due date for a patent. If the due date is missed, the patent can still be renewed within a 6-month grace period after the due date but an additional fee will be incurred. Non-payment of renewal fee leads to cancellation of a patent.

Registered designs. Registration of a design can maintained for a maximum term of 25 years. The initial period is 5 years beginning on the filing date of the application, and upon payment of renewal fees can be renewed for 4 further periods of 5 years each.

An associated registered design can be renewed only if the original registered design has been renewed.

A renewal fee can be paid up to 3 months before the renewal due date for a registered design. If the due date is missed, the registration can still be renewed within a 6-month grace period after the due date but an additional fee will be incurred. Non-payment of renewal fee leads to cancellation of a patent.

Plant varieties. Annual grant fees are payable for a registered plant variety. The Plant Varieties Protection Ordinance provides that the Registrar must cancel a grant at any time during its term if in any particular year any prescribed annual grant fee in relation to the variety concerned has not been paid.

Trade marks. A trade mark registration must be renewed every 10 years upon payment of a renewal fee. There is no limit on the number of renewals.  No earlier than 6 months and no later than 1 month before expiry, the Registrar will send a notice of approaching expiry to the registered owner. Failure to renew within 6 months after expiry results in the mark being removed from the register. A request for restoration and renewal must be made and the applicable fee for restoration and renewal paid within 6 months after the date of removal.

Generally speaking, the assignment of a registered intellectual property right is a matter of contract. There are also recordal requirements prescribed by the relevant registries.

Patents. An assignment of a patent or a patent application must be registered with the Patents Registry upon payment of the prescribed fee. Documentary evidence of the assignment is not required to be filed if the prescribed form is signed by or on behalf of the assignor. Otherwise, the application must be accompanied by such evidence (e.g. a deed of assignment) as suffices to establish the transaction.

Registered designs. An assignment of a registered design or a pending application must be registered with the Designs Registry upon payment of the prescribed fee. Documentary evidence of the assignment is not required to be filed if the prescribed form is signed by or on behalf of the assignor. Otherwise, the application must be accompanied by such evidence (e.g. a deed of assignment) as suffices to establish the transaction.

Plant Varieties. The grantee of a plant variety right may license or assign the right.  The Plant Varieties Protection Ordinance allows a grantee of plant variety right to authorize, by licence or otherwise, any other person or persons to exercise the granted rights.

Trade Marks. A registered trade mark or a pending trade mark application can be transferred from one person to another by way of an assignment. An assignment must be in writing and signed by the assignor (and in practice, it is often also signed by the assignee). An assignment may be limited, for example to some but not all of the goods or services of the registration or application. A partial assignment of an application effectively operates as a division of the application.

An assignment of a registered trade mark or a pending trade mark application is a registrable transaction. Until particulars of an assignment are filed for registration, the assignment is ineffective as against a person acquiring a conflicting interest without knowledge of it. Unless particulars of the assignment are filed within 6 months from the date of the assignment, the assignee will not be entitled to damages or an account of profits for infringements for the period before particulars of the assignment are registered.

It is not necessary to produce the assignment when applying to register particulars (of an assignment of a registered mark) or when giving notice to register particulars (of an assignment of an application for registration) if the application, or notice, is signed by or on behalf of the assignor. If the application, or notice, is not signed by or on behalf of the assignor, a copy of the assignment has to be filed and will be open to public inspection. Where a copy of the assignment is not filed, other documentary evidence will be accepted if it is sufficient to establish the assignment.

See also section 11 above. Although recordal of an assignment is not mandatory, it is highly recommended and should be regarded as a must. The general rule for assignment of registered rights is that, until a recordal application is filed, the assignee’s right is ineffective against a person who acquires a conflicting interest in that right in good faith and without knowledge, or remedies available to the assignee will be limited. This principle applies under statutes and/or in equity.

Generally speaking, there is no mandatory requirement to register licences of intellectual property rights. However, a licence may be ineffective against a third party who acquires a conflicting interest in the right in good faith until the licence is registered.

Patents. If any right in or under a patent or an application for a patent is acquired by virtue of the grant or assignment of a licence or sub-licence, it must be registered with the Patents Registry’s records. Documentary evidence (e.g. the licence agreement) is not required to be filed if the filed form is signed by or on behalf of the licensor. Otherwise, the application shall be accompanied by such evidence as suffices to establish the transaction.

Where a person becomes the exclusive licensee of a patent, then unless (i) an application for registration of the prescribed particulars of the licence is made within 6 months; or (ii) the court is satisfied that it was not practicable for such an application to be made before the end of that 6-month period and that an application was made as soon as practicable thereafter, he is not entitled to damages or an account of profits in respect of any infringement of the patent occurring after the date of the licence and before the prescribed particulars are registered.

Registered designs. A licence for a registered design or a pending application must be registered with the Designs Registry’s records. Documentary evidence is not required to be filed if the prescribed form is signed by or on behalf of the licensor. Otherwise, the application shall be accompanied by evidence of the licence.

Trade marks. A registered trade mark or a pending trade mark application can be licensed or sub-licensed. A licence must be in writing, signed by or for the licensor (and in practice it is often also signed by the licensee). A licence is a registrable transaction. Unless particulars of a licence are filed for registration, the licence is ineffective as against a person acquiring a conflicting interest without knowledge of it, and the licensee does not have the rights of a licensee under the Trade Marks Ordinance, including rights in relation to infringement. Unless particulars of the licence are filed before the end of the period of 6 months beginning on its date, the licensee will not be entitled to damages or an account of profits for infringements for the period before particulars of the licence are registered.

It is not necessary to produce the licence when applying to register particulars (of a licence of a registered mark) or when giving notice to register particulars (of a licence of a mark that is the subject of an application for registration) if the notice is signed by or for the grantor of the licence. If the application or notice is not signed by or for the grantor, documentary evidence to establish the licence must be filed and such evidence will be available for public inspection.

See also section 13 above. Although recordal of a licence is not mandatory, it is highly recommended and should be regarded as a must. The general rule for licensing of registered rights is that, until a recordal application is filed, the licensee’s right is ineffective against a person who acquires a conflicting interest in that right in good faith and without knowledge, or remedies available to the assignee will be limited. This principle applies under statutes and/or in equity.

Patents. The exclusive licensee of a patent has the same right as the proprietor of the patent to bring proceedings in respect of any infringement of the patent committed after the date of the licence.  In awarding damages or granting any other relief in any such proceedings, the court would take into consideration any loss suffered or likely to be suffered by the exclusive licensee as such as a result of the infringement, or, as the case may be, the profits derived from the infringement, so far as it constitutes an infringement of the rights of the exclusive licensee as such.

Registered designs. An exclusive licensee of a registered design has the same right as the registered owner to bring proceedings in respect of any infringement of the design committed after the date of the licence. Where a person becomes an exclusive licensee of a registered design, then unless (i) an application to register the prescribed particulars of the licence is made within 6 months; or (ii) the court is satisfied that it was not practicable for such an application to be made before the end of that period and that an application was made as soon as practicable thereafter, the licensee may not be entitled to any compensation in respect of any use of the design by a public officer or a person authorized by a public officer before the prescribed particulars of the licence are registered.

In awarding damages in any proceedings taken by an exclusive licensee, the court may take into consideration only the losses suffered or likely to be suffered by the exclusive licensee as a result of the infringement. In ordering an account of profits in any proceedings taken by an exclusive licensee, the court may take into consideration only the profits derived from the infringement which are attributable to the infringement of the exclusive licensee’s rights.

Trade marks. An exclusive trade mark licence may provide that the exclusive licensee shall, to such extent as may be provided by the licence, have the same rights and be entitled to the same remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment. Where this is the case, the exclusive licensee is entitled to bring infringement proceedings in his own name against any person other than the owner of the registered trade mark. The rights of the exclusive licensee and the remedies to which he is entitled are concurrent with those of the owner of the registered trade mark.

The Hong Kong Customs & Excise Department (“Hong Kong Customs”) is responsible for taking criminal actions against:

1. copyright infringement under the Copyright Ordinance (Cap. 528) and the Prevention of Copyright Piracy Ordinance (Cap. 544);
2. forgery of trade marks, false trade descriptions and unfair trade practices under the Trade Descriptions Ordinance (Cap. 362); and
3. falsifying the register of trade marks, falsely representing a trade mark as registered and misusing the title of the Trade Marks Registry under the Trade Marks Ordinance (Cap. 559).

The Hong Kong Customs’ enforcement work includes:

1. conducting investigations and taking enforcement actions against persons and syndicates suspected of committing offences relating to infringement of intellectual property rights;
2. executing court orders to detain goods at importation for the purpose of enforcing boundary measures to comply with the Agreement on Trade-Related Aspects of Intellectual Property Rights established under the auspices of the World Trade Organization;
3. arranging and supervising the examination and identification of seizures by trade mark and copyright owners or their representatives;
4. conducting inspections on licensed optical disc mastering and replication factories to guard against manufacture of pirated optical discs and stampers;
5. controlling the import and export of optical discs mastering and replication equipment; and
6. applying to the court for the confiscation of financial proceeds obtained from intellectual property rights infringement crimes.

Civil court proceedings. In Hong Kong, enforcement of intellectual property is typically pursued via civil court proceedings.

Hong Kong IPD. The Intellectual Property Department of Hong Kong has some jurisdiction given by statutes to hear disputes in respect of patents, registered design rights and registered trade marks in relation to registrability, validity and entitlement.

Hong Kong AFCD. The Registrar of Plant Variety Rights of the Agriculture, Fisheries and Conservation Department also has some jurisdiction over matters concerning registration of plant varieties under the Plant Varieties Protection Ordinance.

Alternative dispute resolution. As an alternative to court litigation, parties to a dispute over an intellectual property right may opt to, or in compliance with agreed contractual terms, use alternative dispute resolution (“ADR”).

Arbitration and mediation are the most common types of ADR in Hong Kong:

Arbitration is a procedure in which a dispute is submitted, by agreement of the parties, to one or more arbitrators (the tribunal) who make a decision on the dispute which is legally binding on the parties. The process including the arbitral award is confidential and not open to public. The Arbitration Ordinance applies to arbitration in Hong Kong.

Mediation, which is a private, voluntary negotiation facilitated by an impartial mediator who does not give comments on the merits of the parties’ cases. A successful mediation ends with a legally binging settlement agreement. The details of the mediation are confidential and cannot be disclosed to the court or tribunal. The Mediation Ordinance applies to mediations in Hong Kong.

The time it takes for a civil case in court or in arbitral tribunal to reach the substantive hearing depends on the complexity of the case, the conduct of the parties and the diaries of the relevant court or arbitral tribunal. Infringement cases that do not have any contractual disputes in the background are most likely handled by the court. A vast majority of infringement cases are settled at an early stage especially when there are interlocutory injunctions in place.

From commencement to trial, a court case may last 12 to 18 months or even longer if not settled at an early stage.

The successful party in civil court case or arbitration is able to recover a proportion of its legal costs from the other party. That proportion depends on a number of factors. In the Court of First Instance of the High Court of Hong Kong, the successful party might typically be entitled to recover around 50-75% of its legal costs from the unsuccessful party.

All civil intellectual property disputes fall within the jurisdiction of the District Court and the Court of First Instance of the High Court of Hong Kong.

Proceedings in court are commenced by filing an originating claim (usually a writ of summons) setting out the particulars of the claim. The parties then exchange further pleadings, followed by mutual disclosure of documents and exchange of witnesses’ statements. There may also be various interlocutory applications, e.g. specific discovery of documents, interrogatories, etc. When all preparation work is done, trial will be scheduled. An appeal system in Hong Kong applies.

A copyright or registered trade mark holder may report suspected import of infringing goods to the Hong Kong Customs. The Customs seize counterfeit goods upon import. The intellectual property right holder may commence civil proceedings to claim civil damages.  The Customs may also take action on their own initiative.

The short answer would be nil, but parties to disputes over intellectual property may consider alternative dispute resolution during the course of litigation. Mediation almost always take place between parties to a court case in Hong Kong. Where there is a pre-existing contract with provisions providing for alternative dispute resolution, the parties will have to pursue alternative dispute resolution accordingly.

Parties to an intellectual property dispute may settle the dispute in a number of ways:

1. Adjudication by court or arbitration. This is the most time consuming and costly method, but is the ultimate one. Besides the time and costs spent, ultimate recoverability of the awarded damages and costs may also be in question.
2. A settlement can be reached by the parties before or at any stage of legal proceedings, or, in relation to the satisfaction of the final judgment or arbitral award, even after the making of such judgment or award. A settlement reached after commencement of proceedings can be given effect as a private agreement or a court order obtained by consent of the parties.
3. Expert determination. It is a form of alternative dispute resolution in which the parties jointly retain an independent third party expert to decide an issue in dispute between the parties. The third party expert will generally be a specialist or a person with extensive experience or knowledge in the area of the dispute. The agreement to jointly retain the third party expert may be a term in a pre-existing contract between the parties or a separate agreement reached after the dispute has occurred.

The tests for infringement in respect of the intellectual property rights described in section A are set out below. Note that when planning for claims against infringement, the possibility of a counterclaim, e.g. for invalidity or non-use should be carefully considered.

Patents – What constitutes infringement of a patent depend on the subject matter:

1. In relation to a product: making, putting on the market, using, importing or stocking the product;
2. In relation to a process: using or offering the process for use in Hong Kong with actual or constructive knowledge that unauthorised use is prohibited;
3. In relation to any product obtained directly by means of a patented process: making, putting on the market, using, importing, or stocking the product; and
4. Supplying or offering to supply to another person in Hong Kong with the means (which relates to an essential element of that invention) for putting a patented invention into effect.

Note that the grant of a short-term patent alone is not sufficient for commencing patent enforcement proceedings. The owner of the short-term patent must establish the validity of the patent (or validity of its relevant respect).

Trade marks. A person infringes a registered trade mark if, in the course of trade or business, that person uses a sign which is identical or confusingly similar to the registered trade mark in relation to identical or similar goods or services.

Copyright. Primary copyright infringement is committed when a person does any act restricted by the copyright. This includes reproducing the work, communicating the work to the public, adapting the work, and performing the work in public. A person who authorizes another to commit a primary infringement is liable for authorizing infringement. A person who knowingly trades in an infringing article is liable for secondary infringement.

Registered designs. The registration of a design gives to the registered owner the exclusive right (i) to make in Hong Kong or import into Hong Kong for sale or hire or for use for the purpose of trade or business; or (ii) to sell, hire, or offer or expose for sale or hire in Hong Kong, any article in respect of which the design is registered and to which that design or a design not substantially different from it has been applied. Such right is infringed by any person who, without the consent of the registered owner and while the registration is in force does any of the above, makes anything for enabling any infringing article to be made in Hong Kong or elsewhere, does anything in relation to a kit that would constitute an infringement of the design if it had been done in relation to the assembled article, or makes anything for enabling a kit to be made or assembled, in Hong Kong or elsewhere, if the assembled article would be an infringing article.

In the Court of First Instance of the High Court of Hong Kong, the Intellectual Property List (“the IP List”) facilitates the disposal of intellectual property proceedings. Such proceedings include:

1. applications, appeals or claims made in respect of trade marks under the Patents Ordinance, Registered Designs Ordinance, Trade Marks Ordinance, Copyright Ordinance, Layout-Design (Topography) of Integrated Circuits Ordinance and Plant Varieties Protection Ordinance;
2. an application, appeal or claim made in respect of foreign intellectual property;
3. claims in respect of which it would be advantageous to the proper conduct thereof that the proceedings should be commenced in or transferred to the List; such claims typically involve technical trade secrets, domain names, complicated knowhow relating to life science, chemical processes, telecommunications, computer and internet matters and transactions involving transfer, licencing or restricting the use of intellectual property rights, etc.; and
4. contempt proceedings arising from any of the proceedings above.

Expert evidence is accepted by the court where it is required in assisting the court to decide the relevant issues. For example, in a patent infringement case, expert witnesses are called upon to render opinion concerning claim construction and issues of validity and infringement. When dealing with damages in an infringement case, expert opinion may be required in relation to quantification of damages.

Interlocutory applications can be made to the court for orders compelling the obtaining, disclosure and preservation of evidence. In cases where there is sufficient urgency and necessity, an “Anton Piller” injunction may be obtained to assist the plaintiff in gathering and preserving evidence in support of a claim that intellectual property rights have been or are being breached. The injunction, obtained unilaterally by the plaintiff without prior notice to the defendant, enables the plaintiff to search the defendant’s premises and seize documents or other property in the defendant’s possession.

Mutual disclosure of documents is required in a court case. Upon the application of a party, the court may order the other party to disclose specific documents or classes of documents if those documents are relevant and disclosure is necessary for either disposing fairly of the cause or matter or saving costs.

Witnesses’ statements are usually adopted as their evidence-in-chief at trial.  All witnesses including expert witnesses will be subject to cross-examination by the opposing counsel.

Defences are formulated on one or more of the following bases:

1. The plaintiff’s intellectual property lacks the quality required for protection by the applicable law, e.g. an alleged copyright work does not have the requisite originality.
2. The registration of the plaintiff’s registered intellectual property is invalid.
3. The defendant’s acts in question did not amount to infringement as defined by the relevant law.
4. The infringing act falls under a statutory exception or a statutory licence must be granted.
5. The plaintiff is not entitled to make the claim because of late or non-registration of an assignment or licence of the intellectual property right.
6. The plaintiff has not suffered any loss or damage.

Patent. Any person may initiate proceedings in court to revoke a granted patent on the grounds that the invention was not patentable (i.e. that the invention was not new, did not involve an inventive step and was not susceptible of industrial application), or on other grounds. The validity of a patent can also be challenged by a defendant in an infringement action.

Registered designs. Any person may initiate proceedings in court to revoke the registration of a design on the following grounds:

1. the design was not new or was not registrable for any other reason, or on other grounds.
2. the publication or use of the design would be contrary to public order or morality.
3. the registered owner is not entitled to be registered as the owner (note that this ground can be raised only by someone who has been found by the court to be entitled to be registered as the owner of the design).

Plant varieties. Any person who considers that a grant has been made in respect of a variety that is not new, distinct, stable, and homogeneous as required by the Plant Varieties Protection Ordinance may at any time, by notice in writing to the Registrar, object to the continuation in force of that grant. Further, any person who considers that a grant was made to a person who was not an owner of that variety may, by notice in writing to the Registrar, object to the continuation in force of that grant.

Trade marks. An application for the revocation of the registration of a trade mark may be made by any person, and may be made either to the Registrar or to the court. Grounds of revocation include the following:

1. The trade mark has not been genuinely used in Hong Kong by the owner or with his consent, in relation to the goods or services for which it is registered, for a continuous period of at least 3 years, and there are no valid reasons for non-use (such as import restrictions on, or other governmental requirements for, goods or services protected by the trade mark).
2. The trade mark consists of a sign that, in consequence of the acts or the inactivity of the owner has become the common name in the trade for goods or services for which the trade mark is registered, or has become generally accepted within the trade as the sign that describes goods or services for which the trade mark is registered.
3. In consequence of the use made of the trade mark by the owner or with his consent, in relation to the goods or services for which it is registered, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.
4. There has been a contravention of or a failure to observe any condition entered in the register in relation to its registration.

An application for a declaration of invalidity of the registration of a trade mark may also be made by any person, and may be made either to the Registrar or to the court. In the case of bad faith in the registration of a trade mark, the Registrar himself may apply to the court for a declaration of the invalidity of the registration.

See also section 27 above.

Trade marks. A trade mark application may be challenged via opposition to prevent its registration. Post-registration, it may be challenged by invalidation or non-use revocation proceedings.

Patents. A patent may be challenged pre-grant only as to whether the patentee is entitled to own the patent. There is no opposition available, but observations by third parties on patentability of invention can be filed after a standard patent (O) application for an invention has been published. The Registrar must, as soon as practicable after receiving the notice, send a copy of the notice to the applicant. The Registrar must consider the observations when carrying out a substantive examination of the patent application. This process does not lead to any proceedings between the third party and the applicant.

Post-grant, the validity of a patent may be challenged via a patent revocation application to the court or by way of a counterclaim in an infringement action.

Registered designs. A registered design may only be revoked after registration.

Patents. Any person may initiate proceedings in court to revoke a granted patent on the grounds that the invention was not patentable (i.e. that the invention was not new, did not involve an inventive step and was not susceptible of industrial application), or on other grounds. The validity of a patent can also be challenged by a defendant in an infringement action.

Registered designs.  Any person may initiate proceedings in court to revoke the registration of a design on the following grounds:

1. the design was not new or was not registrable for any other reason, or on other grounds;
2. the publication or use of the design would be contrary to public order or morality; or
3. the registered owner is not entitled to be registered as the owner (note that this ground can be raised only by someone who has been found by the court to be entitled to be registered as the owner of the design).

Plant varieties. Any person who considers that a grant has been made in respect of a variety that is not new, distinct, stable, and homogeneous as required by the Plant Varieties Protection Ordinance may at any time, by notice in writing to the Registrar, object to the continuation in force of that grant. Further, any person who considers that a grant was made to a person who was not an owner of that variety may, by notice in writing to the Registrar, object to the continuation in force of that grant.

Trade marks.  An application for the revocation of the registration of a trade mark may be made by any person, and may be made either to the Registrar or to the court. Grounds of revocation include the following:

1. The trade mark has not been genuinely used in Hong Kong by the owner or with his consent, in relation to the goods or services for which it is registered, for a continuous period of at least 3 years, and there are no valid reasons for non-use (such as import restrictions on, or other governmental requirements for, goods or services protected by the trade mark).
2. The trade mark consists of a sign that, in consequence of the acts or the inactivity of the owner has become the common name in the trade for goods or services for which the trade mark is registered, or has become generally accepted within the trade as the sign that describes goods or services for which the trade mark is registered.
3. In consequence of the use made of the trade mark by the owner or with his consent, in relation to the goods or services for which it is registered, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.
4. There has been a contravention of or a failure to observe any condition entered in the register in relation to its registration.

An application for a declaration of invalidity of the registration of a trade mark may also be made by any person, and may be made either to the Registrar or to the court. In the case of bad faith in the registration of a trade mark, the Registrar himself may apply to the court for a declaration of the invalidity of the registration.

Declaration of non-infringement

Patents. A party may apply to the court against the proprietor of a patent for a declaration (a “declaration of non-infringement”) that dealings with the product or process in question do not or will not infringe the patent. Before making the application, that party must have already applied in writing to the proprietor for a written acknowledgment to the effect of the declaration claimed, and has furnished the proprietor with full particulars in writing of the act in question. The application can be made to the court if the proprietor has refused or failed to give any such acknowledgment.

Registered designs. Declaration as to non-infringement is also available in relation to registered designs. A declaration that an act does not, or a proposed act would not, constitute an infringement of a registered design may be made by the court in any proceedings between the person doing or proposing to do the act and the registered owner, notwithstanding that no assertion to the contrary has been made by the registered owner. Before making the application, that party must have already applied in writing to the proprietor for a written acknowledgment to the effect of the declaration claimed, and has furnished the proprietor with full particulars in writing of the act in question. The application can be made to the court if the proprietor has refused or failed to give any such acknowledgment.

Third party’s right to continue use

Registered designs. The Registered Designs Ordinance provides third parties with rights to continue use of registered designs in certain circumstances. A person who in Hong Kong before the filing date of an application for registration of a design does in good faith an act which would have constituted an infringement of the design if it had been registered at the time the act is done, or makes in good faith effective and serious preparations to do such an act, has the right to do the following without constituting infringement:

1. continue to do or, as the case may be, to do the said act;
2. if such act was done, or such preparations had been made, by an individual in the course of a business, (i) assign the right to do the act or to transmit such right on death; and (ii) authorize the doing of the act by any of his partners for the time being in the business in the course of which the act was done or the preparations had been made; and
3. if such act was done, or such preparations had been made, by a body corporate in the course of a business, assign the right to do the act or to transmit such right on the body’s dissolution.

Relief from groundless threats of infringement proceedings

Patents. Where a person (whether or not the proprietor of, or entitled to any right in, a patent) by circulars, advertisements or otherwise threatens another person with proceedings for infringement of a patent, a person aggrieved by the threats (whether or not he is the person to whom the threats are made) may bring proceedings in the court against the person making the threats for a declaration to the effect that the threats are unjustifiable, an injunction against the continuance of the threats, and damages, if any, as have been sustained by the plaintiff by reason of the threats.

In such proceedings, the defendant must prove that the act in respect of which the threat was made constitutes or, if done, would constitute an infringement of the patent, and that the plaintiff fails to prove that the patent is invalid in the relevant respect.

Registered designs. Where a person (whether or not the registered owner of, or entitled to any right in, a registered design) by circulars, advertisements or otherwise threatens any other person with proceedings for infringement of a registered design, any person aggrieved by the threats (whether or not he is the person to whom the threats are made) may, bring proceedings in the court against the person making the threats for  a declaration to the effect that the threats are unjustifiable,  an injunction against the continuance of the threats, and damages.

In such proceedings, the defendant must prove that the acts in respect of which the proceedings were threatened constitute or, if done, would constitute an infringement of a registered design, and that the plaintiff fails to show that the registration of the design concerned is invalid.

Trade marks. Relief from groundless threats of infringement proceedings is available under the Trade Marks Ordinance. Where a person threatens to bring an action against another person (the threatened person) for infringement of a registered trade mark in respect of any use other than the application of the trade mark to goods or their packaging or the supply of services under the trade mark, any person aggrieved by the threat (the plaintiff) may bring proceedings before the court for a declaration to the effect that the threats are unjustifiable, an injunction against the continuance of the threats and such damages, if any, as have been sustained by the plaintiff by reason of the threats. The defendant must show that the acts in respect of which the action was threatened constitute or, if done, would constitute, an infringement of the registered trade mark concerned. Even if the defendant shows that the acts in respect of which the action was threatened constitute or, if done, would constitute, an infringement of a registered trade mark, the plaintiff will nevertheless still be entitled to the relief claimed if he shows that the registration of the trade mark is invalid or liable to be revoked in a relevant respect. If there are proper follow-up actions following a threat, then the relief may not be available. The Trade Marks Ordinance provides that if an action for trade mark infringement against the threatened person is commenced within 28 days after the threat was first made to him and the action is pursued with due diligence, then the threatened person cannot bring or proceed with the proceedings for relief from groundless threats.

Compulsory licences

Patents. The Patents Ordinance provides that a compulsory licence may be granted under the grounds of (i) non-working or insufficient working of the patented invention; (ii) refusal to grant licences on reasonable terms; (iii) public health; (iv) national emergency and/or extreme urgency; and (v) dependent patents.

Honest concurrent use

Trade marks. In respect of trade marks, honest concurrent use and prior use may entitle a third party to continue that use.

Interlocutory orders

During, or even prior to the commencement of proceedings in case of emergency, the plaintiff/ intended plaintiff of an infringement claim may seek one or more of the following:

1. Search and preservation orders (also known as ‘Anton Piller’ orders). This order is obtained on an “ex parte” basis (i.e. unilaterally without prior notice to the defendant) allows the plaintiff’s solicitors to search the defendant’s premises and seize any infringing articles or incriminating documents. In support of the application for such order, the plaintiff must show that: (i) time lapsed between the plaintiff’s knowledge of the matter and the making of the application (the longer the delay the weaker the application); (ii) it has a strong prima facie case; (iii) the actual or potential damage to the plaintiff is very serious and irreparable without the order; and (iv) the defendant possess infringing articles or evidence of liability and there is a real possibility it will dispose of or destroy them without the order.
2. Interlocutory injunction. An interlocutory injunction prohibits the defendant from infringing, or continuing to infringe, the intellectual property right in question pending the final outcome of the case. In an application for an “Anton Piler” order, the plaintiff usually also applies for an interlocutory injunction. In considering whether to grant an interlocutory injunction, the court will consider (i) time lapsed between the plaintiff’s knowledge of the matter and the making of the application (the longer the delay the weaker the application would be); (ii) whether there is a serious question to be tried or already a very strong case on the evidence available at the time of the application; (iii) whether damages would be adequate compensation for either of the parties if the interlocutory injunction application is allowed or rejected (e.g. an injunction is granted but the defendant successfully defends the case at trial); and (iv) whether the balance of convenience lies in favour of granting or not granting the interim relief.
3. Norwich Pharmacal order (i.e. third party disclosure order). A Norwich Pharmacal order is an order compelling a defendant to disclose the identity of the supplier of an infringing article.

As a condition for granting a search and preservation order or an injunction, the plaintiff must give a “cross-undertaking as to damages”, ie an undertaking to pay damages to the defendant in the event that the defendant later on successfully

Final reliefs

If, following the trial, the court determines that the intellectual property right in question is valid and is infringed by the defendant, the plaintiff may be awarded the following reliefs:

1. Permanent Injunctive relief: A permanent injunction that prohibits the defendant’s infringing acts.
2. Declaratory relief: A declaration that the intellectual property right in question has been infringed. where a patent is held to be valid, there will be a declaration of validity may be awarded.
3. Order for disclosure: An order for the disclosure of matters relating to assessment of damages or account of profit, e.g. details of the defendant’s dealings in the infringing articles.
4. Order for an enquiry damages or account of profit: Upon the defendant’s disclosure as ordered, the plaintiff may elect to have either an enquiry as to damages or an account of profit by the defendant. Damages are intended to compensate the plaintiff for losses caused by the infringement. Damages may be based on the profits which the plaintiff would have made but for the infringement or on the basis of a hypothetical reasonable licence fees. An account of profit is based on the profits made by the defendant rather than the damage suffered by the plaintiff. This is a two-step approach adopted by the court in handling intellectual property infringement cases. The rationale is to avoid dealing with the potentially vast amount of factual and expert evidence and legal arguments relating to assessment of damages before liability is established.
5. Delivery up/destruction of infringing articles: An order for the delivery up or destruction of the infringing articles.
6. Costs: The plaintiff will be entitled to have his costs of the proceedings assessed (if not agreed with the defendant) and the assessed costs will be payable by the defendant.

Award and taxation of costs

The general rule in Hong Kong is that the losing party pays the costs of the successful party. The question of costs is a matter for the court’s discretion. The winning party’s costs will typically be assessed on the “party and party” basis in a procedure for the assessment of costs known as “taxation of costs”. Upon taxation, about 50-75% of the actual costs will be allowed.

Security for costs

If a claim is ultimately unsuccessful, the plaintiff may not be able to satisfy the costs order. Upon a defendant’s application, the court may order a plaintiff to provide security for costs. For example, if the plaintiff is ordinarily resident outside Hong Kong and has no presence or assets in Hong Kong, or if the plaintiff is an insolvent company or if there is reason to believe that the plaintiff company will be unable to pay the defendant’s costs if the defendant succeeds, the court may make an order for security for costs against the plaintiff. The order will usually provide that the proceedings be stayed until the provision of security for costs and that the action be dismissed if the plaintiff cannot deposit the security for costs within the prescribed time.