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
Feb 6, 2024 | Is It Legal To Sell Parallel Imports In Hong Kong?
1 Like the majority of the common law countries, the sale of parallel imports in Hong Kong is predominantly legal. In other words, a businessman should be able to sell parallel imports in Hong Kong freely without restriction by the law. This is the case, though parallel importers should still pay attention to intellectual property rights and avoid violating the following laws during the sale of parallel imports: – Copyright Ordinance – Chapter 528 Trade Marks Ordinance – Chapter 559... MORE
Jan 6, 2024 | Suing Former Employee for Breach of Confidentiality
In Hong Kong, intellectual property rights can be divided into the following 6 categories: – Trademark; Patent; Design rights; Copyright; Passing off; and Right to Confidential Information. The above 1, 2 and 3 require registration before they can be obtained, on the contrary, articles 4, 5 and 6 do not require registration, but only require the owner to provide the required evidence to own the right and (if necessary) sue the infringer. For example, if the owner can preserve and... MORE
Apr 13, 2023 | Is Trademark Statement Not Dedicated in Taiwan?
Is Trademark Statement Not Dedicated in Taiwan? When applying for a trademark, it is often proposed by the trademark agent that a disclaimer of certain parts of the trademark in order to avoid the possibility of future correction or the Intellectual Property Office’s request to submit a reply to review opinion, or even to disapprove; however, what exactly is the disclaimer? What words need to be declared? According to Article 29(3) of the Trademark Law, ” Where the reproduction of... MORE
Apr 13, 2023 | Michelin Sues Hong Kong Company for Trademark Infringement
Michelin Sues Hong Kong Company for Trademark Infringement Michelin, the French-based Company behind the internationally-renowned restaurant ratings guide, namely “Compagnie Générale des Etablissements Michelin”, recently filed a law suit against a Hong Kong company operating business via an online platform, for trademark infringement and passing-off, seeking damages and injunctive relief. The French-based company is the owner of registered trademarks for various “Michelin” and “米芝蓮”(Chinese transliteration of “Michelin”) and related trademarks in Hong Kong. It has accused the Hong Kong company... MORE
Apr 13, 2023 | The value of a trademark lies in its use. What are the precautions when providing evidence of trademark use?
The value of a trademark lies in its use. What are the precautions when providing evidence of trademark use? 1. Whether a trademark that has been successfully registered can be revoked? The answer is YES. According to Article 49 of the Trademark Law of the People’s Republic of China, Where a registered trademark is becoming a generic name in a category of approved goods, and the mark has not been used for a period greater than three years without any... MORE
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