About Our IP Commerce Department

Contact Person :

Mr. Benny Kong (LL.B., PCLL)

Email :

enquiry@bk.com.hk

Direct Telephone :

(852) 3105 5100

Contact Person :

Mr. Eric Fung (LL.B., LL.M., PCLL)

Email :

enquiry@bk.com.hk

Direct Telephone :

(852) 3105 5100

Intellectual Property Contracts

10 odd years ago, Hong Kong and Chinese enterprises are less aware of the importance of intellectual property contracts. However, recently they are concerned about manufacturer’s agreement and sole distribution contract. Possibly, this is because more China and Hong Kong enterprises have their own brands and ODM products.

Our IP Commerce department has more than 10 years’ experience of acting for enterprises. We advise enterprises that they could gain the following benefits by intellectual property contracts:-

1. the rights and duties of the enterprise and its business partners are clearly stated
   in the contract; and
2. as the parties are contractually bound, the enterprise’s business partners would
   not commit infringing activities readily

Contracts Protect Assets

We suggest that enterprises should prepare the following commercial documents to protect their interests:–

1. Two-party manufacturer agreement
2. Three-party manufacturer agreement
3. Joint venture agreement
4. Employment contract
5. Non-disclosure agreement
6. Sale and purchase agreement
7. Sole-distribution agreement
8. Authorization agreement
9. Copyright assignment
10. Shareholders agreement

According to section 118(3) of Copyright Ordinance, Cap 528, section 26 of Trade Descriptions Ordinance, Cap 362, Copyright (Amendment) Ordinance 2007 and Copyright (Amendment) Ordinance 2009, an enterprise may be fined or have criminal record if it is found guilty of infringing copyright or registered trade marks. For this reason, we recommend that enterprises should take appropriate administrative measures to protect their interests:-

1. issue circulars to its employees requesting them to inspect their computers and
   surrounding for infringing products and software;
2. stipulate in purchase contracts that the enterprise would not commit any infringing
   activities and request the supplier to compensate for any infringement;
3. educate purchasing staffs and salespersons by providing intellectual property
   information and courses.