February 21, 2025 5:54 pm
Published by bkadmin
1 An infringer with ulterior motives may try to register a company’s trademark. Companies need to pay special attention to such infringers, otherwise they may linger around and intrude into the company’s business after successfully registering the trademark. 2 If the company does not take the potential issues seriously, the infringer may try to register the company’s trademark for the category of goods that the company has not yet registered. If the goods registered by the infringer are vastly different... MORE
January 23, 2025 5:54 pm
Published by bkadmin
1 Dishonest individuals and companies may register an existing company’s trademark for their own gain. If they succeed, they can operate in a market close to the company causing customer confusion and negatively impacting their normal operations. Companies need to stay alert to protect their brand and reputation. 2 Someone might try to register a company’s trademark (or a similar logo) for goods and services the company has not registered yet. If the goods being registered by an infringer are... MORE
December 6, 2024 3:18 pm
Published by bkadmin
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
November 14, 2024 3:17 pm
Published by bkadmin
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
October 17, 2024 3:17 pm
Published by bkadmin
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
September 19, 2024 3:16 pm
Published by bkadmin
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
August 22, 2024 3:16 pm
Published by bkadmin
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
July 18, 2024 3:15 pm
Published by bkadmin
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
June 20, 2024 3:15 pm
Published by bkadmin
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 3:15 pm
Published by bkadmin
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