Nov 20, 2025 | Summary Procedures in Intellectual Property Litigation

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 following reasons:

a) high monetary costs: litigation lasts two to three years, involving expensive legal fees and costs;
b) increased time risk: if the defendant is a limited company, sufficient time allows it to “vanish leaving an empty shell”, transfer assets, or close down; and
c) continued infringement risk: the infringer can continue its infringing activities before a court judgment is rendered.

3. Therefore, intellectual property owners should actively consider filing an Order 14 summary application after the Writ of Summons is issued, before filing a lawsuit. Such applications are generally feasible provided the intellectual property owner and their lawyer plan and prepare properly beforehand.

4. If suitable for a summary application, it can be filed approximately three to four months after the Writ of Summons is issued. By then, both the Plaintiff and the Defendant will have submitted the followings to the court:

a) the plaintiff has submitted a statement of claim; and
b) the defendant has submitted a defence.

5. The Plaintiff can file a summary application provided that the Defence does not contain an “Arguable Defence” and the Plaintiff meets the following conditions:

a) the trademark used by the defendant is identical or similar to the plaintiff’s registered trademark; and
b) the goods involved in the defendant’s case are identical or similar to the goods covered by the registered trademark.

6. Even if the Defendant files a counterclaim seeking to revoke the Plaintiff’s registered trademark, the Court will not consider it an “arguable defence” if there is a lack of substantial evidence supporting the counterclaim. In this case, the Plaintiff may consider applying for summary proceedings.

7. The Plaintiff can also consider applying for summary proceedings in copyright infringement cases, as long as they can show evidence that the Defendant was aware of the Plaintiff’s relevant copyright before committing the copyright infringement. This can be established by issuing cease and desist letters or trap order. Proving the existence of the copyright and the infringement itself is usually not difficult for the Plaintiff.

8. Nevertheless, summary proceedings are not applicable to passing off cases. The core dispute in such cases lies in whether the Plaintiff possesses goodwill, which is usually determined by the judge through witness testimonies in the trial court. Therefore, passing off lawsuits are generally not suitable for summary proceedings.

9. From the filing of the lawsuit to the summary judgment, the entire process usually takes no more than nine months. If the application is successful, the Plaintiff may obtain the following court orders that are nearly equivalent to those in a trial:

a) permanent injunction
b) delivery up order
c) disclosure order
d) order for damages
e) order for costs

10. Even if the Plaintiff’s lawsuit has other causes of action pending trial, a favorable summary judgment often prompts the Defendant to settle with the Plaintiff, thus resolving the entire case earlier.

11. Another advantage of summary proceedings is that the Plaintiff can claim litigation costs earlier. After obtaining a summary judgment, the Plaintiff can request the Court to tax and claim costs “immediately.” The court generally tends to grant this request.

12. Successfully claiming costs not only allows the Plaintiff to recover most of their legal fees early, but can also exert pressure on the Defendant and other lawyers, affecting their subsequent litigation strategies and working relationships. In practice, such financial pressure often leads to the Defendant’s litigation collapsing or choosing to compromise.

13. While the simplified procedure is highly strategic for intellectual property owners, its success largely depends on pre-litigation evidence preparation and legal planning. Hence, Plaintiffs must collaborate closely with their lawyers before litigation to ensure comprehensive and precise evidence collection in order to effectively utilize such procedure and safeguard their intellectual property interests.