Dec 6, 2024 | Are directors of a limited company liable for infringement?
1 According to the Companies Ordinance (Cap. 622) and the common law, the liability for infringement of a company generally does not result in personal tortious liability for the company’s directors. In other words, even if the Court rules that the company is liable for infringement, the directors typically do not bear responsibility. 2 However, there are exceptions to the above fundamental legal principle. Based on the author’s experience, there are two situations in which directors may also be held... MORE
Nov 14, 2024 | Differences between “Deed of Undertaking”, “Agreement of Undertaking” and “Injunction” in Execution
1 When intellectual property owners discover an infringement, they often first send a warning letter (termed a “cease and desist letter”) to the infringer, requesting the infringer to agree to the following conditions: – To immediately cease the infringing activities; To commit to not engaging in similar infringing activities in the future; To deliver the infringing goods to the intellectual property owner; To disclose all infringing activities to the intellectual property owner under oath, including information regarding the suppliers and... MORE
Oct 17, 2024 | The Concrete Impact of Intellectual Property Value
1 It is often heard that Western countries proudly claim that certain well-known brand names are worth tens or even hundreds of billions of dollars. These astronomical figures have little significance in Hong Kong or even most Asian countries. One of the main reasons is that financial institutions (including banks) will not take into account the value of the company’s intellectual property (collectively referred to as “Brand”) when calculating the company’s “total” asset value, and thus will not consider it... MORE
Sep 19, 2024 | Infringement Liability of Online Sales Platforms (OSPs)
1 As we enter the 21st century, online sales platforms (“OSPs”) have been rapidly developing like spring buds after the rain. By the 2020s, shopping through OSPs has become a part of people’s daily lives, and this trend is expected to continue to intensify. If OSPs sell infringing products, should the owner of intellectual property rights hold the OSP or the underlying sales store behind the OSP liable (“Issue”)? The author wishes to analyse this issue from different perspectives of... MORE
Aug 22, 2024 | Eleven Principles to Determine Whether a “Trade Mark Application” is Similar to an “Earlier Trade Mark”
1 According to Section 12(3) of the Trade Marks Ordinance (Cap. 559), the Intellectual Property Department will refuse a trade mark application if there is an “earlier trade mark” under the same class of goods and that the “trade mark application” and the “earlier trade mark” are likely to cause confusion on the part of the public. 2 In the opposition proceedings, the above “elements of similarity” and “elements of public confusion” are most disputed by both parties (i.e., the... MORE
Jul 18, 2024 | Recovering losses from Infringer
1 If the owner of the intellectual property (plaintiff) is successful against an infringer in its lawsuit in Hong Kong, the plaintiff will obtain the following orders from the Court:- Permanent Injunctions; Delivery up orders; Disclosure orders; Damages orders; and Order for legal costs. 2 The above orders for damages and legal costs allow the plaintiff to recover damages and legal costs from the infringer (defendant) after litigation. As the name of the order suggests, the former will enable the... MORE
Jun 20, 2024 | How to deal with a defendant who breaches a Court Injunction
1 Should the Court decide in favour of a lawsuit for infringement of intellectual property, the Judge will issue, including but not limited to, the following injunctions against the defendant: – Injunction Order: an order that permanently prohibits the defendant and any related parties from infringing the plaintiff’s intellectual property rights; and Disclosure Order: an order to compel the defendant (if a company, through a director), to disclose under oath all the information in relation to the infringing activities, including... MORE
May 23, 2024 | 8 Factors to Establish “Bad Faith” by the Applicant in Filing a Trademark Application:
1 It is common to oppose the registration of a trademark application on the grounds of “dishonest use” in the Opposition proceeding. 2 According to section 11(5)(b) of the Trade Marks Ordinance, Cap. 559, the Intellectual Property Department may refuse the applicant’s trademark application based on the following reasons: the applicant made the trademark application in bad faith. 3 In this article, the author intends to analyze, through a recent case (issued on February 9, 2024), factors which the Intellectual... MORE
Apr 18, 2024 | Use of “Provisional Injunction” to prevent trademark squatters from using registered trademarks
1 Trademark squatting are common in Hong Kong. Squatters will exploit the benefits and take advantage if it is left unattended. 2 Typically, the original trademark owner only discovers that someone has successfully registered their trademark in Hong Kong under the following circumstances: 2.1 When the original trademark owner applies to register the trademark in Hong Kong; and 2.2 When the Hong Kong agent notifies the original trademark holder that an infringer has used its trademark in Hong Kong. 3... MORE
Mar 6, 2024 | Criminal Liability for Infringement of Intellectual Property Rights in Hong Kong
1 Engaging in activities that violate the following two intellectual property rights in Hong Kong carries both civil and criminal consequences: Copyright infringement (as stipulated in Section 108 of the Copyright Ordinance, Cap. 528) Infringement of registered trademarks (as stipulated in Section 9 of the Trade Descriptions Ordinance, Cap 362) 2 The department entrusted with the task of conducting criminal investigations and prosecuting infringements of intellectual property rights in Hong Kong is the “Hong Kong Customs and Exercise Department” (HKCED).... MORE
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