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1. In Hong Kong, general civil proceedings consist of three main stages: the pleadings stage, the discovery stage, and the trial stage. The entire litigation process typically takes at least two years, and if the Defendant employs delaying tactics, the case may take three years or more before reaching trial. For intellectual property litigation, a two- to three-year wait is not only excessively long but also costly and overwhelming. 2. This delay is disadvantageous to intellectual property owners for the... Read more: Summary Procedures in Intellectual Property Litigation

1. If the (Hong Kong) Intellectual Property Department or the China National Intellectual Property Administration (CNIPA) accepts evidence of “long-term use” provided by a trademark applicant, the applicant can build a reputation and demonstrate that the trademark in the application is distinctive (Distinctiveness). Therefore, citing evidence of long-term use is extremely important. 2. Regrettably, many trademark applicants fail to provide “appropriate” evidence of “long-term use” to the Intellectual Property Department and/or the CNIPA, resulting in “insufficient evidence.” This is the... Read more: The Importance of Evidence of “Long-Term Use”

1. In intellectual property litigation proceedings, the following two more common situations require the support of expert opinion: a) situations which involves technical (e.g. it specialist) needs; b) situation which require expert (e.g. professional accountant) opinion in recovering losses. 2. Usually when one party to the lawsuit (such as the plaintiff) requests an expert report, the other party (i.e. the defendant) will also request an expert report. The reason is that if one party makes this request and the other... Read more: Expert Reports in IP Court Proceedings

1. Can a trademark owner apply for a declaration in a Hong Kong court stating that its registered trademark is a famous trademark (“well-known mark”), thereby eliminating the need to adduce evidence on reputation of the trademark or registered trademark in the future? 2. According to Hong Kong laws, the answer to the above question is no. Nevertheless, the term “well-known trademark” does appear in the Trade Marks Ordinance, Cap. 559 and has a litigious meaning. 3. The use of... Read more: “Well-known Trademarks” in Hong Kong

1. Under Section 18 of the Trade Marks Ordinance, Cap. 559, the definition of “Infringement of registered trade mark” is quite broad. This includes any “use” of an infringing trademark in the course of trade or business. In practice, this includes the following actions: a) Offering for sale of products bearing infringing trademarks; b) Promoting products bearing infringing trademarks; and c) Sale of products bearing infringing trademarks. 2. For example: the infringing company (Company A) possesses products bearing infringing trademarks... Read more: New Trends in Registered Trademark Infringement

1. In Hong Kong, the simplest answer to the above question is “No”. Nevertheless, if the Plaintiff can better prove that the Defendant had “intention to defraud” (i.e. Intention to Deceive), the case will be more likely to be successful. 2. Recently, the author had received several cases where the Defendants were prosecuted by relying on innuendo (i.e. passing off) (also known as counterfeit). Since there is a gap in the similarity between the Plaintiff’s trademark and the Defendant’s trademark,... Read more: Is it necessary to prove the Defendant’s motive to defraud in order to prosecute by Passing Off?

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... Read more: Benefits of Successfully Registering a Trademark

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... Read more: Requesting the Directors of the Defendant Company to Provide their Company’s Accounting Records

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... Read more: The Different Effects of Issuing “Cease and Desist Letter” and “Writ of Summons”

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... Read more: Registering Trademark by Taking the Advantage of the Loopholes of Polices