May 20, 2025 | Benefits of Successfully Registering a Trademark
1 Two days before writing this article, the author received a letter from the Hong Kong Customs, informing the author’s law firm that during the inspection by the Hong Kong Customs, the Hong Kong Customs discovered items suspected of infringing trademark registration and invited the registered trademark owner to appoint a representative to inspect the allegedly infringing goods. Since the author’s law firm is the agent of the trademark registrant, the Hong Kong Customs contacted the author’s law firm. 2... MORE
Apr 21, 2025 | Requesting the Directors of the Defendant Company to Provide their Company’s Accounting Records
1 When a Defendant limited company (the Defendant company) loses a lawsuit, the Court will usually order it to pay the Plaintiff’s attorney fees. If the Defendant company fails to pay, the Plaintiff can apply to the Court for the Defendant company to be wound up. Usually, liquidation may not be conducive to the Plaintiff, especially when the Defendant company has already deployed to make a cunning getaway. They may have already transferred their business, cash and clients to another... MORE
Mar 21, 2025 | The Different Effects of Issuing “Cease and Desist Letter” and “Writ of Summons”
1 When encountering infringement activities, the intellectual property owner (Owner) tends to send a warning letter (the term is Cease and desist Letter) to the infringers, requiring the infringers to stop the infringing activities, promising not to infringe on the intellectual property(“IP”) rights in the future, delivery of the infringing goods, disclosing the infringing act, and compensating for the losses and legal fees. 2 After receiving the Cease and desist Letter (“C&D letter”), most infringers will immediately stop the infringing... MORE
Feb 21, 2025 | Registering Trademark by Taking the Advantage of the Loopholes of Polices
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
Jan 21, 2025 | Trademark Infringers: The Edge-ball Tactic
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
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
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